Giraffe | Decision 2741505
Date Published: Sep 24, 2017
OPPOSITION No B 2 741 505
Quadra Beheer B.V.., Sluisvaart 34, 1191 HD Ouderkerk Aan De Amstel, The Netherlands (opponent), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, The Netherlands (professional representative)
a g a i n s t
Ricardo Joyanes Monedero, Calle María Luisa de Dios Nº 4, 3º Izq, 18014 Granada, Spain (applicant).
On 31/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 741 505 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 354 806 namely against all the goods in Class 25. The opposition is based on European Union trade mark registrations No 9 625 451
and No 11 295 094 GIRAV. The opponent invoked Article 8(1)(b) EUTMR.
On 02/12/2016 the opponent withdrew the Benelux trademark No 879 975 as a basis of the opposition. The opponent also limited the scope of opposition, which is now directed only against Class 25 goods.
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 11 295 094.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear, belts.
Class 35: Advertising; Publication of publicity texts; Direct mail services; Promotional activities; Publicity; Business management; Business administration; Office functions; Marketing; Market canvassing, market research and market analysis; Business mediation in the purchase and sale, import and export and wholesaling and retailing of clothing, footwear, headgear, belts and other goods, including bags, jewellery and other fashion accessories; Bringing together, for others, of clothing, footwear, headgear and other goods, including bags, belts, jewellery and other fashion accessories (excluding the transport thereof), enabling customers to conveniently view, compare and purchase those goods; Arranging events for publicity and/or commercial purposes; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet.
Class 42: Services of industrial and graphic designers and stylists; Industrial and graphic design; Product development services; Design of models, including prototypes; Development of product ideas; Design of clothing, footwear, headgear, belts and other goods, including bags, jewellery and other fashion accessories; Consultancy and information regarding the aforesaid services, including via electronic networks, such as the Internet.
The contested goods are the following:
Class 25: Clothing; Trunks; Fitted swimming costumes with bra cups; Beach robes; Bermuda shorts; Bikinis; Blouses; Halter tops; Chemise tops; Panties; Gauchos; Bathing trunks; Tennis shirts; Casual shirts; Aloha shirts; Button-front aloha shirts; Tee-shirts; Sports jerseys; Sports singlets; Short-sleeved or long-sleeved t-shirts; Tank tops; Sports caps and hats; Athletic tights; Ponchos; Sailing wet weather clothing; Sportswear; Clothing for gymnastics; Beach clothes; Sunsuits; Surfwear; Leisurewear; Triathlon clothing; Casualwear; Boardshorts; Sweat shirts; Hooded sweatshirts; Wetsuits for surface watersports; Bathing suits; Swim wear for gentlemen and ladies; Bathing suits for men; Bathing costumes for women; Wet suits for water-skiing; Wet suits; Wet suits for water-skiing and sub-aqua; Wet suits for windsurfing; Wet suits for surfing; Monokinis; Visors [headwear], and not including any clothing items incorporating neck pillows and clothing items incorporating inflatable neck pillows.
Clothing, and not including any clothing items incorporating neck pillows and clothing items incorporating inflatable neck pillows is included in the broad category of the opponent’s clothing. The goods are identical.
The contested Trunks; Fitted swimming costumes with bra cups; Beach robes; Bermuda shorts; Bikinis; Blouses; Halter tops; Chemise tops; Panties; Gauchos; Bathing trunks; Tennis shirts; Casual shirts; Aloha shirts; Button-front aloha shirts; Tee-shirts; Sports jerseys; Sports singlets; Short-sleeved or long-sleeved t-shirts; Tank tops; Athletic tights; Ponchos; Sailing wet weather clothing; Sportswear; Clothing for gymnastics; Beach clothes; Sunsuits; Surfwear; Leisurewear; Triathlon clothing; Casualwear; Boardshorts; Sweat shirts; Hooded sweatshirts; Wetsuits for surface watersports; Bathing suits; Swim wear for gentlemen and ladies; Bathing suits for men; Bathing costumes for women; Wet suits for water-skiing; Wet suits; Wet suits for water-skiing and sub-aqua; Wet suits for windsurfing; Wet suits for surfing; Monokinis; and not including any clothing items incorporating neck pillows and clothing items incorporating inflatable neck pillows are included in, or overlap with, the broad category of the opponent’s Clothing. Therefore, they are identical.
The contested Sports caps and hats; Visors [headwear] are included in the broad category of the opponent’s headgear. Therefore, they are identical.
- 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 average.
- The signs
GIRAV | |
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 mark ‘GIRAV’ has no meaning for the relevant public and is, therefore, distinctive.
The element ‘GIRAFFE’ of the contested sign will be understood by the English and German speaking part of the public as ‘a large African animal with a very long neck, long legs, and dark patches on its body’ (information extracted 24/08/2017 from https://www.collinsdictionary.com/dictionary/english/giraffe). Similar word is also present in other languages, such as girafe (French), jirafa (Spanish), giraffa (Italian) or girafa (Portuguese). The device element depicts a head of the same animal and is perceived as referring to the same, even by part of the public that would not understanding the verbal element. As these elements are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.
The contested sign has no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in their first letters GIRA. However, they differ in the remaining letters V/ FFE, and in the device element and stylisation of the contested mark, which are not present in the earlier mark.
Therefore, the signs are visually 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 only in the sound of the letters GIRA when pronounced, present identically in both signs. The pronunciation differs in the sound of the letters V/ FFE of the marks, which have no counterparts.
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the public in the relevant territory will perceive the meaning(s) of the elements (or at least the meaning of the figurative element) of the contested sign, as explained above, the earlier sign has no meaning in these territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
.As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 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.
- Global assessment, other arguments and conclusion
The goods have been found to be identical. The similarities and dissimilarities between the signs have been established.
The signs are visually and aurally similar only to the extent that they both contain the letter sequence GIRA. However, the abovementioned coincidences alone are not sufficient for finding a likelihood of confusion. The contested mark contains an elaborated device element (not present in the earlier mark), which the public would understand as depicting a giraffe. Additionally, part of the public also understands the word GIRAFFE referring to the same animal. The marks also differ in their remaining letters V/FFE.
The differences between the marks are sufficiently marked to allow the relevant public to distinguish between them. Furthermore, the contested sign contains device element with a clear meaning, which will not remain unnoticed.
It is also considered, that 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) contrary to the opponent’s arguments. Therefore, the considerable visual differences between the signs caused by differences in the verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them.
The clear differences described above are easily perceived. Therefore, taking into account all the relevant circumstances of the case, as well as the principle of interdependence between the various relevant factors, the Opposition Division concludes that the dissimilarities between the marks at issue are sufficient to allow the target public to avoid the likelihood of confusion, including the likelihood of association.
Therefore, the opposition must be rejected.
The opponent has also based its opposition on the earlier European Union trade mark registration No 9 625 451 covering the same goods and services.
This other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains further figurative elements limited to the use of colours and elaborate typeface which are not present in the contested trade mark. Moreover, it covers the same scope of the goods and services. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Zuzanna STOJKOWICZ | Erkki MÜNTER | Irina SOTIROVA |
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.