IMILOA | Decision 2743931
Date Published: Sep 24, 2017
OPPOSITION No B 2 743 931
Imi Loa GmbH, Kolberger Str. 20, 13357 Berlin, Germany (opponent), represented by Ampersand Rechtsanwälte Llp, Haydnstraße 10, 80336 Münich (professional representative)
a g a i n s t
The Factory Estudio Comunicacion Rb S.L., C/ Jovellanos 3, 33202 Gijón, Spain (applicant), represented by Arochi & Lindner S.L., C/ Serrano 28, 1°C, 28001 Madrid, Spain (professional representative)
On 16/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 743 931 is partially upheld, namely for the following contested goods:
Class 18: Trunks and travelling bags.
Class 25: Clothing, footwear, headgear
2. European Union trade mark application No 15 228 448 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 15 228 448 . The opposition is based on German trade mark registration No 302 015 228 059 ‘Imiloa’ (word mark). 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 18: Luggage, bags, wallets and other carriers; leather bags and wallets; banknote holders; wheeled bags; bags; bags [for men]; bags of leather; bags of imitation leather; bags for clothing; garment carriers.
Class 25: Layette [clothing]; baby bunting [clothing]; baby clothes; children’s wear; infant wear; girls’ clothing; clothing; boys’ clothing; maternity clothing; capes; flat shoes; woven clothing; waist belts; belts [clothing]; belts of imitation leather; trousers; jackets; dresses; leggings [trousers]; caps; caps [headwear]; ponchos; pullovers; neck scarfs; scarf [clothing]; shoes [low shoes]; footwear for women; leisure shoes; shoes with hook and pile fastening tapes; high-heeled shoes; esparto shoes or sandals; sports clothing; tights; footless socks; tee-shirts; kerchiefs [clothing]; neckerchiefs; head scarves; neck scarves; swaddling clothes.
The contested goods are the following:
Class 18: Animal skins, hides; trunks and travelling bags; umbrellas, parasols, canes and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
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 18
The contested trunks and travelling bags are included in the opponent´s broader category of luggage. Therefore, they are identical.
The contested animal skins; hides are raw materials generally used for manufacturing, for example articles made of leather or leather clothing, etc. However, the fact that one product is used for manufacturing another (for example, leather for footwear or for clothing) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 (animal skins and hides) are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s goods in Class 18, which are all different types of bags and wallets, and the opponent’s clothing, headgear and footwear of Class 25. Therefore, these goods are dissimilar.
On the other hand, the contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; parasols are light umbrellas carried as protection from the sun; canes and walking sticks are staffs used as an aid in walking. Saddlery, whips and harness include, inter alia, equipment for horses, instruments used for driving animals and all kind of garments used to dress and/or decorate animals. The nature of these goods is very different from that of the opponent´s goods in Class18 and Class 25. They serve very different purposes (e.g. storage, protection from rain/sun, help in walking, aid in the control and/or riding of animals versus covering/protecting the human body or goods destined to storage). They do not usually have the same retail outlets and they are usually not made by the same manufacturers. Consequently, the contested animal skins, hides, umbrellas, parasols, canes and walking sticks; whips, harness and saddlery are considered dissimilar to the opponent’s goods in Class 18 and 25.
Contested goods in Class 25
The contested clothing is identically contained in both lists of goods.
The contested footwear includes as a broader category the opponent’s footwear for women. 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 headgear includes, as a broader category, the opponent´s caps. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
- 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 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 Germany.
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 word mark, and therefore the word as such is protected and not its written form. It is irrelevant whether word marks are represented in small or capital letters. Thus, the earlier mark could be represented as “Imiloa” or as “IMILOA”. The common element ‘IMILOA’ (i.e. the only verbal element in both signs), is meaningless for consumers in the relevant territory and is, therefore, distinctive for the relevant goods.
The figurative elements in the contested mark representing two palm trees are not descriptive or allusive in relation to the characteristics of the relevant goods. They are therefore distinctive. The rest of the figurative elements, namely the two stars and the black and white line, have a decorative nature and are, therefore, non-distinctive.
In the contested sign, the most dominant (visually-eye catching) element is the verbal element ‘IMILOA’, due to its much bigger size and central position.
Visually, the signs coincide in the presence of the distinctive verbal element ‘Imiloa’/‘IMILOA’. It is important to note that this coinciding word is the only element forming the earlier mark and the dominant element of the contested mark. Therefore, the earlier mark is perceived as entirely contained in the contested sign.
The marks differ in the figurative elements present in the contested sign, which have no counterpart in the earlier sign. These differing elements are of less visual impact than the coinciding word referred to and, in the case of the stars and line, also void of distinctive character.
Taking into consideration that, 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 as 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). According to this, in the present case, the relevance of the coinciding term ‘IMILOA’ over the differing figurative elements is also reinforced for this reason.
Due to the reduced weight of the differing elements and to the increased weight of the coinciding elements, for the reasons explained above, it is considered that the signs are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters
‘/i-m-i-l- o-a/’, present identically in both signs, and forming the only verbal element in them. As the figurative elements will not be pronounced, the signs are aurally identical.
Conceptually, while the earlier mark lacks any meaning, the contested sign has the concepts of the figurative elements referred to above (i.e. palm trees, stars and line) 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 involved are partly identical and partly dissimilar, and the signs compared are visually highly similar, aurally identical and not conceptually similar.
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).
As explained, the differences between the marks have a reduced impact in the comparison, since they rely on elements that are non-distinctive and/or of less visual impact than the coinciding element, constituting this later one the only element in the earlier mark, and the most distinctive and the dominant element of the contested mark.
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. Based on this, consumers might believe that the conflicting goods found to be identical come from the same or economically-linked undertakings.
Also having regard to the principle of interdependence, it is considered that the coincidences between the signs, together with the identity of part of the goods involved, are enough to outweigh their dissimilarities, and may induce at least part of the public to believe that the conflicting goods found to be identical to come from the same or economically-liked undertakings.
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 German trade mark registration No 302 015 228 059 ‘Imiloa’. It follows from the above that the contested trade mark must be rejected for the goods found to be identical 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
María del Carmen SUCH SÁNCHEZ | Alexandra APOSTOLAKIS | Vít MAHELKA |
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.