imoshion | Decision 2724501
Date Published: Sep 28, 2017
OPPOSITION No B 2 724 501
Orange Juice HK Limited, Units A & B 15/F Neich Tower, 128 Gloucester Road, Wanchai, Hong Kong Special Administrative Region of the People's Republic of China (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 Weesp, The Netherlands (professional representative)
a g a i n s t
Ramin Mehrara, 1928 S.Santa Fe Ave., Los Angeles Ca. United States of America (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno, Italy (professional representative).
On 17/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 724 501 is upheld for all the contested goods.
Class 18: Animal skins; imitation leather; travelling bags; pocket wallets; rucksacks; suitcases
2. European Union trade mark application No 15 284 375 is rejected for all the above goods. It may proceed for the remaining goods.
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 15 284 375. The opposition is based on European Union trade mark registration No 3 712 346.The opponent invoked Article 8(1)(b) EUTMR.
As a preliminary remark, it is to be noted that in the notice of opposition, the opponent indicated that the opposition was directed against all the goods in Class 18 of European Union trade mark application No 1 5 284 375. However, in its submissions of 19/12/2016, the opponent restricted the scope of the opposition and excluded some of the goods, namely, frames for umbrellas or parasols, straps of leather [saddlery] and gut for making sausages. The opposition is therefore addressed to part of the goods only.
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, inter alia, the following:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; bags and pouches.
The contested goods are the following:
Class 18: Animal skins; imitation leather; travelling bags; pocket wallets; rucksacks; suitcases; shopping bags.
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
Imitation leather; travelling bags; pocket wallets are identically contained in both lists of goods, with some slight differences in the wording and including synonyms.
The contested rucksacks and shopping bags are included in the broad category of the opponent’s bags in Class 18. Therefore, they are identical.
The contested suitcases are highly similar to the opponent’s trunks and travelling bags. These goods coincide in nature and serve the same purpose (storing things when travelling). They are produced by the same companies and distributed through the same channels. All are used for travelling.
The contested animal skins are raw products, as is the opponent’s leather. They are used in the manufacture of other goods, such as footwear or bags, and target the same end users. They further coincide in producers and distribution channels. Therefore, they are similar to a high degree.
- 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 and similar are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise (e.g. animal skins in Class 18 may be sold to industrial manufacturers of leather goods for further processing). The degree of attention is considered to be average.
- The signs
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 is a figurative mark consisting of the verbal element ‘IMOSHION’ written in stylized capital yellow letters. Above the verbal element there is a bigger image of a black rectangle containing three thick grey lines and a black circular device with three grey concentric inner circles that gives some kind of depth to the figures. In the square and circle, a part of the public may recognise the letter ‘i’ others may just perceive it as a geometric arrangement of a rectangle, lines and circles.
The contested sign is a figurative mark consisting of the verbal element ‘Imoshion’ written in stylized lower case letters with the exception of the first capital ‘I’.
It should be noted that both the earlier trade mark and the contested sign have no elements that could be considered clearly more dominant than other elements. Likewise, the marks have no elements more distinctive than others. The coinciding verbal element ‘IMOSHION’ is meaningless and therefore distinctive for the relevant goods and so is the figurative element of the earlier mark, in case it is perceived as the letter ‘i’.
It has to be noted that when signs consists 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, because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal elements than by describing their figurative elements (14/07/2005, Selenium-Ace, EU::2005:289, § 37).
Visually, the signs are similar to the extent that they coincide in the distinctive word ‘IMOSHION’. The signs differ in the stylized typeface and colours in which this element is depicted and in the figurative element of the earlier mark.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the element ‘IMOSHION’, present identically in both signs. The Opposition Division thinks that the part of the public that will associate the figurative element of the earlier sign with the letter ‘i’ will not pronounce this letter, given the stylized way in which it is depicted. 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.
For the part of the public that will associate the figurative element of the earlier sign with the letter ‘i’, since the other sign will be meaningless, 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
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 concluded above, the contested goods are partly identical and partly similar to the opponent’s goods and they target both the public at large and the professional public, whose degree of attention will be average. The distinctiveness of the earlier mark is average.
The signs were found visually similar to an average degree and aurally identical, due to the presence of the identical verbal element ‘IMOSHION’. The differences between the earlier sign and the contested mark lie in the figurative element of the earlier sign and the colours and stylized typeface of each sign. However, as explained above, graphic elements have lesser impact on the consumers than verbal elements.
Considering all the above, the Opposition Division considers that 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 3 712 346. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
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
Rasa BARAKAUSKIENE | Anunciata SEVA MICO | Begoña URIARTE VALIENTE |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.