IMILOA | Decision 2667593 - THE FACTORY ESTUDIO COMUNICACION RB, S.L. v. Imi Loa GmbH
Date Published: Sep 28, 2017
OPPOSITION No B 2 667 593
The Factory Estudio Comunicacion RB S.L., C/ Jovellanos 3, 33202 Gijon, Spain, (opponent), represented by Arochi & Lindner S.L., C/ Serrano 28, 1°C, 28001 Madrid, Spain (professional representative)
a g a i n s t
Imi Loa GmbH, Kolberger Str. 20, 13357 Berlin, Germany (applicant).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 667 593 is partially upheld, namely for the following contested goods:
Class 18: Hipsacks; Bags; Backpacks; Duffel bags; Small rucksacks; Leather bags and wallets; Credit-card holders; Banknote holders; Bags made of imitation leather; Bags [envelopes, pouches] of leather, for packaging.
Class 25: Clothing; Kerchiefs [clothing]; Layettes [clothing]; Leather belts [clothing]; Knitwear [clothing]; Mufflers [clothing]; Woven clothing; Fabric belts [clothing]; Tops [clothing]; Neck scarfs [mufflers]; Neckerchiefs; Shawls and headscarves; Shawls and stoles; Neck scarves; Head scarves; Bandanas [neckerchiefs]; Hats; Small hats; Fashion hats; Sports caps and hats; Caps [headwear]; Waist belts; Dresses; Skirts; Culotte skirts; Leggings [trousers]; Tights; Footless tights; Tee-shirts; Printed t-shirts; Short-sleeved T-shirts; Yoga shirts; Short-sleeved or long-sleeved t-shirts; Denim jeans; Denim jackets; Denims [clothing]; Trousers; Pantsuits; Braces for clothing [suspenders]; Short trousers; Trousers shorts; Lounge pants; Casual trousers; Trousers for children; Trousers of leather; Ponchos; Capes; Jackets [clothing]; Long jackets; Sleeved jackets; Sleeveless jackets; Coats; Trench coats; Cotton coats; Coats for women; Flat shoes; Footwear; Leisure shoes; Footwear for women; Sandals; Sandals and beach shoes; Sandal-clogs.
2. European Union trade mark application No 15 052 161 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 052 161. The opposition is based on Spanish trade mark registration No 3 553 096. 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 goods
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear.
The contested goods are the following:
Class 14: Ornaments [jewellery, jewelry (Am.)]; Pendants; Necklaces [jewellery, jewelry (Am.)]; Rings [jewellery, jewelry (Am.)]; Bracelets [jewellery, jewelry (Am.)]; Jewellery, including imitation jewellery and plastic jewellery; Paste jewellery [costume jewelry (Am.)]; Earrings; Earrings of precious metal; Gold plated earrings; Bracelets; Jewellery rope chain for bracelets; Wooden bead bracelets; Bracelets of precious metal; Gold plated bracelets; Bracelets and watches combined; Chains [jewelry].
Class 18: Hipsacks; Bags; Backpacks; Duffel bags; Small rucksacks; Leather bags and wallets; Credit-card holders; Banknote holders; Bags made of imitation leather; Bags [envelopes, pouches] of leather, for packaging.
Class 25: Clothing; Kerchiefs [clothing]; Layettes [clothing]; Leather belts [clothing]; Knitwear [clothing]; Mufflers [clothing]; Woven clothing; Fabric belts [clothing]; Tops [clothing]; Neck scarfs [mufflers]; Neckerchiefs; Shawls and headscarves; Shawls and stoles; Neck scarves; Head scarves; Bandanas [neckerchiefs]; Hats; Small hats; Fashion hats; Sports caps and hats; Caps [headwear]; Waist belts; Dresses; Skirts; Culotte skirts; Leggings [trousers]; Tights; Footless tights; Tee-shirts; Printed t-shirts; Short-sleeved T-shirts; Yoga shirts; Short-sleeved or long-sleeved t-shirts; Denim jeans; Denim jackets; Denims [clothing]; Trousers; Pantsuits; Braces for clothing [suspenders]; Short trousers; Trousers shorts; Lounge pants; Casual trousers; Trousers for children; Trousers of leather; Ponchos; Capes; Jackets [clothing]; Long jackets; Sleeved jackets; Sleeveless jackets; Coats; Trench coats; Cotton coats; Coats for women; Flat shoes; Footwear; Leisure shoes; Footwear for women; Sandals; Sandals and beach shoes; Sandal-clogs.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 14
The contested ornaments [jewellery, jewelry (Am.)]; pendants; necklaces [jewellery, jewelry (Am.)]; rings [jewellery, jewelry (Am.)]; bracelets [jewellery, jewelry (Am.)]; jewellery, including imitation jewellery and plastic jewellery; paste jewellery [costume jewelry (Am.)]; earrings; earrings of precious metal; gold plated earrings; bracelets; jewellery rope chain for bracelets; wooden bead bracelets; bracelets of precious metal; gold plated bracelets; bracelets and watches combined; chains [jewelry] are dissimilar to the opponent’s clothing, footwear, headgear. Their nature and main purpose are different. The main purpose of clothing is to dress the human body, whereas jewellery (including luxury watches) is for personal adornment. They do not have the same distribution channels and are neither in competition, nor complementary. Even though some fashion designers nowadays also sell accessories (such as jewellery) under their marks, this is not the rule; it tends to apply only to (commercially) successful designers.
With regard to the above, the opponent refers to a previous decision of the Board of Appeal to support its arguments (03/09/2003, R 414/2002-4, LOST). According to the opponent, ‘the contested goods in class 14 are closely associated with clothing in class 25 since they are both expressions of fashion’.
However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.
The current practice of the Office concerning similarity between clothing, footwear, headgear in Class 25 and jewellery and watches in Class 14 is that the Office tends to establish no similarity between these goods. In this regard, the arguments of the Office have been presented above.
Contested goods in Class 18
The contested hipsacks; bags; backpacks; duffel bags; small rucksacks; leather bags and wallets; credit-card holders; banknote holders; bags made of imitation leather; bags [envelopes, pouches] of leather, for packaging are similar to the opponent’s clothing, footwear, headgear in Class 25. Goods in Class 18 include goods such as bags, handbags, sports bags, briefcases, wallets, purses, key cases, etc. These goods are related to articles of clothing, headgear and footwear in Class 25. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of outer clothing, headgear and even footwear as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing, headgear and footwear to directly produce and market related goods made of leather and imitations of leather. Moreover, these goods can be found in the same retail outlets.
Contested goods in Class 25
Clothing; footwear are identically contained in both lists of goods.
The contested hats; small hats; fashion hats; sports caps and hats; caps [headwear] are included in the broad category of the opponent’s headgear. Therefore, they are identical.
The contested flat shoes; leisure shoes; footwear for women; sandals; sandals and beach shoes; sandal-clogs are included in the broad category of the opponent’s footwear. Therefore, they are identical.
The contested kerchiefs [clothing]; layettes [clothing]; leather belts [clothing]; knitwear [clothing]; mufflers [clothing]; woven clothing; fabric belts [clothing]; tops [clothing]; neck scarfs [mufflers]; neckerchiefs; shawls and headscarves; shawls and stoles; neck scarves; head scarves; bandanas [neckerchiefs]; waist belts; dresses; skirts; culotte skirts; leggings [trousers]; tights; footless tights; tee-shirts; printed t-shirts; short-sleeved t-shirts; yoga shirts; denim jeans; denim jackets; short-sleeved or long-sleeved t-shirts; denims [clothing]; trousers; pantsuits; short trousers; trousers shorts; lounge pants; casual trousers; trousers for children; trousers of leather; ponchos; capes; jackets [clothing]; long jackets; sleeved jackets; sleeveless jackets; coats; trench coats; cotton coats; coats for women are included in, or overlap with, the broad category of the opponent’s clothing. Therefore, they are identical.
The contested braces for clothing [suspenders] are highly similar to the opponent’s clothing. The goods at issue are articles of fashion and the factor of aesthetic complementarity contributes to the finding of similarity. The goods target the same consumer circles and are distributed through the same commercial channels. Furthermore, consumers expect the goods to have the same trade origin.
- 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 or similar (to various degrees) are directed at the public at large.
The degree of attention is considered to be average.
- The signs
IMILOA | |
Earlier trade mark | Contested sign |
The relevant territory is Spain.
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 is a figurative sign consisting of the word ‘IMILOA’, written in slightly stylised characters, and figurative elements of a depiction of two palm trees placed above the word ‘IMILOA’, and below the word two symmetrical stars and a thick black/white/black line (both depicted below the word ‘IMILOA’).
The contested sign is a word mark, ‘IMILOA’.
The verbal element that the marks have in common, ‘IMILOA’, has no meaning for the relevant public and is therefore distinctive. Although the applicant argues that the word at issue has a meaning in Hawaiian, it is unknown in Spain and will not be understood by the Spanish public. Therefore, this claim of the applicant has to be set aside as unfounded.
Of the figurative elements of the earlier mark, only the depiction of two palm trees could be perceived as distinctive, as these are not descriptive, allusive or otherwise weak for the relevant goods. The other two figurative elements (i.e. the two stars and black/white/black line) are more decorative and therefore non-distinctive.
The verbal element ‘IMILOA’ is more dominant than the figurative elements, including the two palm trees, due to how it is depicted as well as its central position and size.
Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
The contested sign, as a word mark, has no elements that could be considered clearly more distinctive or dominant than other elements.
Visually, the signs coincide in ‘IMILOA’, which is their distinctive verbal element. However, they differ in the figurative elements of the earlier mark, which are not present in the contested sign.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛I-MI-LOA’, present identically in both signs. The figurative elements will not be pronounced. The pronunciation of the verbal element of the earlier sign and of the contested sign is identical.
Therefore, the signs are aurally identical.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
- 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 claimed that the earlier trade mark enjoys enhanced distinctiveness, stating that ‘the distinctiveness of the earlier trademark regarding clothing, footwear, headgear is strong because, in relation to them, the representation of the word IMILOA has a fanciful content to the relevant public’. However, the opponent did not file any evidence to prove such a 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.
- Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the goods are identical, similar (to various degrees) and dissimilar, whereas the conflicting marks have a high degree of visual similarity and are aurally identical. The conceptual comparison is not possible. The relevant public, as explained above, will have an average degree of attention. In addition, the distinctiveness of the earlier mark is average.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
There is a likelihood of confusion because the differences between the signs are confined to non-distinctive or secondary elements and aspects. The whole verbal element of the earlier mark, which is its most dominant and distinctive element, is the only verbal element of the contested sign.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 3 553 096.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Jessica LEWIS | Michal KRUK | Judit NÉMETH |
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.