INDIGO RD. | Decision 2752130
Date Published: Sep 25, 2017
OPPOSITION No B 2 752 130
"Unix" Eood, "Kutlovica" № 6, 4003 Plovdiv, Bulgaria (opponent), represented by Nelly Pencheva & Partners, Ibar str. 21, 1st floor, 4003 Plovdiv, Bulgaria (professional representative)
a g a i n s t
Marc Fisher Jr. Brand LLC, 777 West Putnam Avenue, Greenwich Connecticut 06830, United States (of America) (applicant), represented by Advokatfirman Vinge KB, Smålandsgatan 20, 111 87 Stockholm, Sweden (professional representative).
On 31/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 752 130 is upheld for all the contested goods.
2. European Union trade mark application No 15 436 249 is rejected in its entirety.
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 15 436 249. The opposition is based on Bulgarian trade mark registration No 88 379. The opponent invoked Article 8(1)(a) and (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; swimwear; underwear; body (underwear); boots; quilted vests, jackets, coats, ties; outerwear; gymnastic footwear; gymnastic shoes; gymnastic clothing; underwear /clothes/; leather clothes; leatherette clothing; long socks; fishing vests; climbing shoes; vests, jackets, coats; suspender straps, straps, suspenders; caps, kepi, hats; tights /pants/; leather collars; fur /clothing/, sun visors; belts, girdles, straps /clothing/ belts with purses attached; kits for newborns; ready-to-wear clothing; bodices; suits; swimming costumes; suits for water skiing; short socks; waterproof clothing; clothing for cyclists; clothing for motorcyclists; shoes; ski boots; sports shoes; footwear; coats; ribbons, headbands; pants; slippers; capes; pajamas, beach shoes; beachwear; skirts; poncho; sleeveless shirts; sweaters; shirts, blouses; dresses; gloves /clothing/; sandals; briefs; sports shirts; insoles; pinafores; bras; T-shirts; knitwear; knitted and crochet clothing; three quarter length stockings, turbans; headwear, hats; uniforms; football boots, bathrobes; bath slippers; tights; leotards; scarves; headscarves; cravats and neckwear; hats; shower caps; collars /clothing/.
The contested goods are the following:
Class 25: Footwear.
Footwear are identically contained in both lists of 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 are directed at the public at large. The degree of attention is considered to be average.
- The signs
INDIGO RD. | |
Earlier trade mark | Contested sign |
The relevant territory is Bulgaria.
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 element ‘INDIGO’ of the earlier mark and contested sign even if it is in Latin characters rather than Cyrillic, Bulgarian consumers are used to seeing transliterations and therefore will be able to read the term and understand it as ‘a tropical plant’ and ‘the dark blue dye obtained from this plant’ by the relevant public. Although it is a colour, it is not used very often to describe garments or footwear, unlike other more common colours. As there is no connection with the relevant goods, it is therefore distinctive. Moreover, ‘INDIGO’ in the earlier sign is the dominant element as it is the most eye-catching.
The element ‘Street’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive. Nevertheless, the relevant public will understand the foreign word, ‘fashion’ with the same meaning as in English ‘a popular or the latest style of clothing, hair, decoration, or behaviour’, since the relevant public is familiar with this foreign word concerned in connection with the goods in question. Bearing in mind the relevant goods are footwear, this element is weak for these goods.
The element ‘RD.’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive. It is secondary given its positioning at the end of the sign where it will be the last element to be perceived. The Opposition Division points out that ‘INDIGO’ is the prime element in both marks and consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that 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.
The stylisation of the earlier mark has a very limited impact on the consumer’s perception.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning because of the distinctive element ‘INDIGO’, and taking into account the presence of the additional concept of the earlier trade mark ‘fashion’, which is less distinctive, the signs are considered similar to a high degree.
Visually, the signs coincide in the distinctive word ‘INDIGO’. However, they differ in the less dominant words in the earlier trade mark ‘Street fashion’, being ‘fashion’ less distinctive as well, and in the letters ‘RD.’ in the contested sign. The signs also differ in the stylisation of the earlier trade mark, although it has a limited impact on the perception of the marks, as noted above.
Therefore, the signs are visually similar to an above average degree.
Aurally, the pronunciations of the signs coincide in the sound of the phoneme sequence ‛INDIGO’, present identically at the beginning of each sign. The only difference results from the fact that the contested sign ends with the sound of the letters ‘RD.’, while the earlier trade mark ends with the sound of the less dominant phrase ‘Street fashion’, which is also less likely to be pronounced due to its size and position.
Therefore, the signs are aurally highly 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, despite the presence of a weak element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).
In the present case, the goods at issue are identical, and they target the public at large with an average degree of attention.
The conflicting signs are conceptually and aurally similar to a high degree and visually similar to an above average degree. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically-linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image.
In the present case, although the relevant public might detect certain differences between the conflicting signs, they are not sufficient to counteract their similarities, since the differences are confined to two words in the earlier trade mark which are less dominant, and one of them less distinctive, and to the letters ‘RD.’ which are placed at the end of the contested sign; in addition, the stylisation of the earlier mark has a limited impact on the perception of the signs, as explained above. In this way, the likelihood that the public might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand or a word variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking
Considering all the above, 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 Bulgarian trade mark registration No 88 379. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.
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
Vanessa PAGE | Carlos MATEO PÉREZ | Richard BIANCHI |
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.