eKunSTreet | Decision 2778069

Date Published: Sep 24, 2017

OPPOSITION No B 2 778 069

Street One GmbH, Hunäusstr. 5, 29227 Celle, Germany (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative)

a g a i n s t

Shenzhen Limai Electronic Business Company, Room 505, Building A, Jinweiyuan, No. 118, Donghu Road, Donghu Sub-district, Luohu District, Shenzhen 518114, People’s Republic of China (applicant), represented by Würth & Kollegen, Sögestr. 48, 28195 Bremen, Germany (professional representative).

On 17/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 778 069 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 303 779 . The opposition is based on:

• European Union trade mark registration No 34 439 ;
• European Union trade mark registration No 3 126 612 ;
• European Union trade mark registration No 9 534 041 ‘Street Love’;
• European Union trade mark registration No 9 842 592 ‘Street One’;
• European Union trade mark registration No 13 477 311 ‘STREET’;
• German trade mark registration No 1 051 859 ‘STREET-ONE’;
• German trade mark registration No 1 190 147 ‘STREET-ONE’;
• German trade mark registration No 2 062 538 ;
• German trade mark registration No 2 902 446 ‘STREET TWO’;
• German trade mark registration No 2 902 447 ‘STREET THREE’;
• German trade mark registration No 2 906 093 ‘STREET-LIFE’;
• German trade mark registration No 39 720 417 ‘STREET’.

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION – EARLIER GERMAN TRADE MARK REGISTRATIONS No 1 051 859, No 1 190 147, No 2 062 538, No 2 902 446, No 2 902 447, No 2 906 093 AND No 39 720 417

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In the present case, the evidence filed by the opponent, namely excerpts from the online register of the German Patent and Trade Mark Office, is not in the language of the proceedings.

On 07/10/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 19/02/2017.

For earlier German trade mark registration No 39 720 417, the opponent submitted the necessary translation on 16/05/2017, that is, only after the expiry of the abovementioned time limit.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

For earlier German trade mark registrations No 1 051 859, No 1 190 147, No 2 062 538, No 2 902 446, No 2 902 44 7 and No 2 906 093, the opponent did not submit the necessary translations of the excerpts from the database.

Even though the extracts from the online register contain Internationally agreed Numbers for the Identification of (bibliographic) Data (INID) codes, as a result of which information can be deduced regarding some of the entries, which are self-explanatory (e.g. name of the owner), no translation was submitted of the text specifying the type of marks and the legal and procedural status of the marks (e.g. opposition proceedings against the registration of the marks).

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

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 13 477 311.

1. The goods and services

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

Class 25:        Bath robes; bridesmaids wear; christening robes; clothing for fishermen; ski-wear; corsets; bed wear and night wear.

Class 35:        Retailing of clothing and clothing accessories.

Class 40:        Clothing alteration; tailoring or dressmaking.

Class 42:        Clothing design; clothing design services.

The contested goods are the following:

Class 16:        Paper; papier mâché; cardboard; cards; charts; shields [paper seals]; labels, not of textile; bags [envelopes, pouches] of paper or plastics, for packaging; boxes of cardboard or paper; rubber erasers; modelling materials.

Class 25:        Clothing; aprons [clothing]; underwear; underclothing; underpants; gloves [clothing]; heels; sock suspenders; headbands [clothing]; masquerade costumes; bathing suits; swimsuits.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large. The degree of attention is considered average.

3. The signs

STREET
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 earlier sign is a word mark, consisting of the sole element ‘STREET’, which will be understood by the English-speaking public in the meaning of the word ‘street’, namely ‘a public road that is usually lined with buildings, esp. in a town’ (information extracted from http://dictionary.reverso.net/english-definition/street). Furthermore, the word ‘street’ is a fairly common English word and it is likely to be understood by the majority of the relevant public throughout the relevant territory. As the element ‘STREET’ is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign is a figurative mark, consisting of the sole element ‘eKunSTreet’, written in slightly stylised letters; the second letter, ‘K’, and the fifth and sixth letters, ‘ST’, are upper case, while the rest are lower case.

The contested sign as a whole has no meaning for the public in the relevant territory. Furthermore, because of the particular combination of upper and lower case letters, it is unlikely that the majority of the public would dissect the sign and perceive the word ‘street’ in it; the opponent did not submit any evidence to support the opposite conclusion.

In addition, even if part of the public (e.g. part of the English-speaking public) were to dissect the sign and perceive the word ‘street’ in it, the part of the sign preceding it, namely ‘eKuns’ or just ‘Kuns’, would probably be understood as a reference to the name of the street, and thus the sign would be perceived as a whole in the meaning of a street named ‘Kuns’ or ‘eKuns’ (depending on the perception of the letter ‘e’, as discussed below). Part of the public, such as part of the German- or Estonian-speaking public, could perceive the word ‘Kunst’, meaning ‘art’, in the contested sign. Furthermore, part of the German-speaking public will perceive the component ‘KunSTreet’ in the contested sign as the word ‘Kunstreet’, referring to ‘artificial thatch’.

Part of the public would perceive the word ‘Kunst’ in the contested sign in the meaning specified above. Bearing in mind that the relevant goods include paper, papier mâché, cardboard and goods made thereof, stationery and modelling materials in Class 16, as well as clothing in Class 25, this component is considered weaker than average for some of these goods, namely the goods in Class 16, as it refers to their purpose (e.g. materials to be used when creating art). For the rest of the relevant goods and for the rest of the relevant public, the element is distinctive.

As far as the first letter ‘e’ of the contested sign is concerned, this letter (especially when depicted in lower case when the following letter is upper case) is likely to be perceived by at least part of the public as a reference to ‘electronic’ (i.e. of or concerned with electronics; involving or concerned with the representation, storage, or transmission of information by electronic systems). Even though the relevant goods (paper, cardboard and goods made thereof, stationery and modelling materials; clothing) are not electronic goods per se, it is likely that at least part of the public would consider the letter ‘e’ a reference to the means of provision of the relevant goods (e.g. online). Therefore, the letter is considered weaker than average for the relevant goods and for part of the relevant public. For the part of the relevant public that will not associate the letter ‘e’ with the meaning specified above, it is distinctive.

Visually and aurally, the signs coincide in the element (and its sounds) ‘STREET’ of the earlier mark and the last six letters (and sounds) ‘STreet’ of the contested sign. The signs differ in the sequence of letters (and sounds) ‘eKun’ of the contested sign, which have no counterparts in the earlier mark. The signs furthermore differ visually in the typeface of the contested sign and its combination of upper and lower case letters throughout the length of the sign. The signs also differ in their lengths, namely 6 letters in the earlier mark versus 10 letters in the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In the present case, the beginnings of the signs are completely different, as in the contested sign the coinciding sequence of letters ‘STreet’ is preceded by the sequence of letters ‘eKun’. Therefore, the differences in the beginnings of the signs are of material importance when assessing the likelihood of confusion between the signs.

Following from the above and taking into account what has been said about the distinctiveness of the elements and components of the signs, the signs are visually and aurally similar only to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The part of the public that would dissect the component ‘STreet’ of the contested sign is also likely to perceive the whole sign as referring to a street that is named ‘eKun’, or just ‘Kun’ (depending on whether the letter ‘e’ is perceived as a reference to electronics or not). Therefore, for this part of the public, the contested sign will be perceived as referring to a specific street, a physical address or a place, while the earlier mark will be perceived as referring to the broad concept of a public road, as explained above. It is therefore concluded that, for this part of the public, the signs are conceptually similar only to a low degree.

For the part of the public that would perceive the concept of the earlier mark and would not perceive the word ‘street’ in the contested sign, but perceive only the concept of the letter ‘e’ and/or the component ‘Kunst’ and/or the component ‘KunSTreet’ (as explained above), the signs will be associated with dissimilar meanings. It follows that, for this part of the public, the signs are not conceptually similar.

The signs are also not conceptually similar for the part of the public that would perceive a meaning only in the earlier mark, since the contested sign will not be associated with any meaning.

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.

In its observations, dated 15/02/2017, the opponent claims that ‘[i]n the earlier trademarks, the element “Street” … is highly distinctive for the opponent’. The Opposition Division will, therefore, accept this statement to constitute a claim of enhanced distinctiveness for the earlier sign (which consists of the sole element ‘STREET’) in relation to all the relevant goods, which is the best case scenario for the opponent and not in any way prejudicial to the applicant’s rights, as will be seen below.

The claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Previous decisions of the Office concerning some of the opponent’s earlier rights. In one of the decisions (B 2 078 585, 28/08/2013), it was concluded that the opponent’s EUTM No 34 439 enjoys enhanced distinctiveness.
• Decision of 07/09/2006, R 1347/2005-1, DalPonte (fig.) / paolo da ponte (fig.).

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

The decisions submitted, even though one of them concludes that one of the opponent’s earlier marks has enhanced distinctiveness, do not per se present evidence of the enhanced distinctiveness of the mark at issue, as no evidence relating to the mark has been submitted for evaluation in the present case, and nor has the opponent made a request for evidence submitted in previous cases to be used in the present proceedings. Therefore, in the absence of concrete evidence to be examined regarding the claim of enhanced distinctiveness, the Opposition Division concludes that the opponent has failed to prove its claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no 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.

5. Global assessment, other arguments and conclusion

The contested goods were assumed to be identical to the opponent’s goods and the signs under comparison are visually, aurally and (for part of the relevant public) conceptually similar to a low degree, due to the coinciding sequence ‘STREET’/‘STreet’. However, the differing sequence ‘eKun’, placed at the beginning of the contested mark, the specific and unusual use of upper and lower case in the same sign and the differing lengths of the signs in question will be clearly noticeable to the relevant public. Even when, on a conceptual level, the word ‘street’ is perceived in the contested sign, it will be understood as referring to a specific place (a physical address) due to the additional sequence ‘(e)Kun’, while in the earlier mark the sequence ‘STREET’ will be perceived as a general indication (referring to the broad concept of a public road), as stated above.

It is noted that the relevant goods include articles of clothing, as well as various paper and paper-based materials, stationery and modelling materials. Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). The same applies to the relevant goods in Class 16, which are normally arranged on shelves in self-service areas where consumers are guided more by the visual impact of the mark. Therefore, the considerable visual differences between the signs, caused by their different beginnings, the additional letters in the contested sign and the use of upper and lower case in the contested sign, are particularly relevant when assessing the likelihood of confusion between them.

The abovementioned differences are enough to outweigh the similarities between the signs originating from the coinciding sequence of letters. Following from the above, the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered to be reasonably well informed and reasonably observant and circumspect, might believe that the goods, assumed to be identical, come from the same undertaking or economically linked undertakings.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 34 439 ;
• European Union trade mark registration No 3 126 612 ;
• European Union trade mark registration No 9 534 041 ’Street Love’;
• European Union trade mark registration No 9 842 592 ‘Street One’.

The other earlier European Union trade mark registrations are less similar to the contested mark than the EUTM compared above. This is because they contain further verbal elements (‘One’ and ‘Love’) and in some cases a figurative element (a rectangular shape). Therefore, even if the contested goods were identical to the goods covered by the earlier marks, the outcome could not be different from that reached above. Therefore, no likelihood of confusion exists with respect to these other earlier rights.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

André Gerd Günther BOSSE

Irina SOTIROVA

Erkki MÜNTER

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.