DN.67 | Decision 2744764

Date Published: Sep 25, 2017

OPPOSITION No B 2 744 764

Aymerich Inver, S.L., Calle Severo Ochoa, N° 36, Elche Parque Empresarial, 03203 Elche (Alicante), Spain (opponent), represented by Abogados Daudén, S.L.P, Avenida Maisonnave, 11, 2º, 03003 Alicante, Spain (professional representative)

a g a i n s t

Gregory Sebaoun, 12 Chemin de la Garenne, 78550 Bazainville, France (applicant).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 744 764 is upheld for all the contested goods.

2.        European Union trade mark application No 15 509 169 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 509 169. The opposition is based, inter alia, on European Union trade mark registration No 2 799 013. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 2 799 013.

1. The goods

The goods on which the opposition is based are the following:

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery and in particular bags.

Class 25:         Ready-made clothing for women, men or children, footwear and headgear.      

The contested goods are the following:

Class 25:        Denim jeans; Footwear; Clothing; Headgear; Snowboard jackets; Neckwear; Lingerie; Articles of clothing for theatrical use; Bandanas [neckerchiefs]; Bandeaux [clothing]; Tennis sweatbands; Pajama bottoms; Tracksuit bottoms; Bottoms [clothing]; Bomber jackets; Motorcycle jackets; Shell jackets; Boleros; Braces for clothing [suspenders]; Suspender belts for men; Boxer shorts; Bathing trunks; Long johns; Corselets; Hoods [clothing]; Cardigans; Sports caps and hats; Waist belts; Handwarmers [clothing]; Socks; Anti-perspirant socks; Bed socks; Sports socks; Shawls; Shawls and stoles; Shirts; Camouflage shirts; Dress shirts; Fishing shirts; Open-necked shirts; Long-sleeved shirts; Roll necks [clothing]; Turtlenecks; Vest tops; Duffel coats; Down vests; Sports singlets; Blazers; Blousons; Pea coats; Belts [clothing]; Leather belts [clothing]; Belts made out of cloth; Tennis socks; Casual shirts; Ramie shirts; Polo shirts; Woven shirts; Short-sleeve shirts; Blouses; Oilskins [clothing]; Cagoules; Scarfs; Kerchiefs [clothing]; Mufflers [clothing]; Sashes for wear; Silk scarves; Stoles; Athletics vests; Leather waistcoats; Tops [clothing]; Rainproof clothing; Jerseys [clothing]; Skirts; Bathing suits for men; Bathing suits; Undershirts; Swimming trunks; Swim wear for gentlemen and ladies; Coats for women; Miniskirts; Trousers; Pedal pushers; Walking breeches; Wind pants; Short trousers; Warm-up pants; Lounge pants; Camouflage pants; Snowboard trousers; Sweatpants; Dress pants; Slacks; Trews; Golf pants, shirts and skirts; Tennis shirts; Beach robes; Bathrobes; Waterproof trousers; Sports pants; Corduroy trousers; Trousers shorts; Trousers of leather; Ponchos; Pullovers; Slipovers; Hooded pullovers; Long sleeve pullovers; Sweaters; Polo sweaters; Crew neck sweaters; Tank tops; Mock turtleneck sweaters; V-neck sweaters; Turtleneck sweaters; Dresses; Sundresses; Shortalls; Shorts; Boy shorts [underwear]; Sweat shorts; Underwear; Gym shorts; Underpants; Ladies' underwear; Men's underwear; Brassieres; Over-trousers; Gym suits; Sweat shirts; Hooded sweatshirts; Hooded tops; Short-sleeved T-shirts; Tee-shirts; Short-sleeved or long-sleeved t-shirts; Printed t-shirts; Crop tops; Jackets [clothing]; Shirt-jacs; Warm-up jackets; Windshirts; Lumberjackets; Jogging tops; Sports jackets; Tracksuit tops; Denim jackets; Coats for men; Rainproof jackets; Polar fleece jackets; Sleeveless jackets; Ready-made clothing; Womens' outerclothing; Outerclothing for girls; Outerclothing for men; Sportswear; Rainwear; Leisurewear; Boys' clothing; Girls' clothing; Ladies' clothing; Menswear.

Contested goods

Headgear; footwear are identically contained in both lists of goods, albeit with slightly different wording.

The contested clothing includes, as a broader category, the opponent´s ready-made clothing for women, men or children. Since the opposition division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent´s goods.

The contested denim jeans; snowboard jackets; neckwear; lingerie; articles of clothing for theatrical use; bandanas [neckerchiefs]; bandeaux [clothing]; tennis sweatbands; pajama bottoms; tracksuit bottoms; bottoms [clothing]; bomber jackets; motorcycle jackets; shell jackets; boleros; braces for clothing [suspenders]; suspender belts for men; boxer shorts; bathing trunks; long johns; corselets; cardigans; waist belts; handwarmers [clothing]; socks; anti-perspirant socks; bed socks; sports socks; shawls; shawls and stoles; shirts; camouflage shirts; dress shirts; fishing shirts; open-necked shirts; long-sleeved shirts; roll necks [clothing]; turtlenecks; vest tops; duffel coats; down vests; sports singlets; blazers; blousons; pea coats; belts [clothing]; leather belts [clothing]; belts made out of cloth; tennis socks; casual shirts; ramie shirts; polo shirts; woven shirts; short-sleeve shirts; blouses; oilskins [clothing]; cagoules; scarfs; kerchiefs [clothing]; mufflers [clothing]; sashes for wear; silk scarves; stoles; athletics vests; leather waistcoats; tops [clothing]; rainproof clothing; jerseys [clothing]; skirts; bathing suits for men; bathing suits; undershirts; swimming trunks; swim wear for gentlemen and ladies; coats for women; miniskirts; trousers; pedal pushers; walking breeches; wind pants; short trousers; warm-up pants; lounge pants; camouflage pants; snowboard trousers; sweatpants; dress pants; slacks; trews; golf pants, shirts and skirts; tennis shirts; beach robes; bathrobes; waterproof trousers; sports pants; corduroy trousers; trousers shorts; trousers of leather; ponchos; pullovers; slipovers; hooded pullovers; long sleeve pullovers; sweaters; polo sweaters; crew neck sweaters; tank tops; mock turtleneck sweaters; V-neck sweaters; turtleneck sweaters; dresses; sundresses; shortalls; shorts; boy shorts [underwear]; sweat shorts; underwear; gym shorts; underpants; ladies' underwear; men's underwear; brassieres; over-trousers; gym suits; sweat shirts; hooded sweatshirts; hooded tops; short-sleeved T-shirts; tee-shirts; short-sleeved or long-sleeved t-shirts; printed t-shirts; crop tops; jackets [clothing]; shirt-jacs; warm-up jackets; windshirts; lumberjackets; jogging tops; sports jackets; tracksuit tops; denim jackets; coats for men; rainproof jackets; polar fleece jackets; sleeveless jackets; ready-made clothing; womens' outerclothing; outerclothing for girls; outerclothing for men; sportswear; rainwear; leisurewear; boys' clothing; girls' clothing; ladies' clothing; menswear are included in the broad category of the opponent’s ready-made clothing for women, men or children. Therefore, they are identical.

The contested hoods [clothing]; Sports caps and hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

	DN.67
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The number “67” is common to both signs and will be understood throughout the relevant territory.

The earlier mark is a figurative mark, made up of a forward-slanting number “67” in a bold, black font which is outlined in white and then black again, varsity-style. While numerical figures may be descriptive in respect of the relevant goods, given that they may represent size in relation to clothing, this is not the case when that number does not represent a size which is usual or likely in the relevant territory. Therefore, this element is not descriptive in respect of the relevant goods, it is distinctive.

The number “67”, as stylised in the earlier mark, is capable of being perceived as a uniform number in (North) American football, where it is representative of a particular role or position (offensive linesman, for example). In the European Union however, the stylisation of the number will be perceived as being of a decorative nature in respect of footwear, headwear and clothing which are not classified as sporting articles. The stylisation is sporty and appealing, but it is not distinctive.

The analysis of the numeral “67” equally applies in the contested word mark “DN.67”, which is preceded by the letter combination “DN”, itself punctuated by a full stop. As this additional element is meaningless in relation to the goods, it too is distinctive.

Both signs are composed of distinctive, semiotic elements as described above. Neither sign has a dominant element.

Visually, the signs coincide in the numeral “67”, which is distinctive. The signs differ in the letter combination “DN.” of the contested mark, itself distinctive, and the striking stylisation of the earlier mark´s “67” in a double-outlined, bolder font.

Therefore, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the number ‛67’, present identically in both signs, which is distinctive. The pronunciation differs in the sound of the letter combination “DN.”, itself distinctive, which has no counterpart in the earlier sign, and the punctuation point if pronounced. As the semiotic element of the earlier mark is entirely contained in the contested mark, and is phonetically identical to that extent, the signs are similar to an average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The marks are identical to the extent that they coincide in the numerical element “67”. The conceptual coincidence is not altered by the stylisation of the earlier mark. The “DN.” component of the contested sign will be perceived separately by the relevant public as it is punctuated by a full stop, and because it precedes the numeral “67”. It will be perceived as a distinctive two-letter combination having no clear meaning. Therefore, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

In the present case, the earlier mark as a whole has no clear meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

As has been concluded above, the contested goods are identical to goods covered by the earlier trade mark, which enjoys a normal degree of distinctiveness, and they target the public at large with an average degree of attention. As the goods are identical and the signs are visually, aurally and conceptually similar from a low to average degree, a likelihood of confusion cannot be ruled out.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 799 013.  It follows that the contested trade mark must be rejected for all the contested goods.

As this same earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Solveiga BIEZA	Keeva DOHERTY	Natascha GALPERIN

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.