Jan | Decision 2652314
Date Published: Oct 1, 2017
OPPOSITION No B 2 652 314
Jafer Enterprises R&D, S.L.U., Av. Sant Julia 260-266, Polígono Industrial Congost 08403, Granollers (Barcelona), Spain (opponent), represented by Lerroux & Fernández-Pacheco, Claudio Coello, 124 4º, 28006, Madrid, Spain (professional representative)
a g a i n s t
Ahlers AG, Elverdisser Str. 313, D-32052 Herford, Germany, (applicant), represented by Dompatent von Keisler Selting Werner - Partnerschaft von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative).
On 09/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 652 314 is upheld for all the contested services.
2. European Union trade mark application No 14 771 901 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 14 771 901. The opposition is based on European Union trade mark registration No 14 445 101. 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 and services
The goods and services on which the opposition is based are the following:
Class 25: Clothing, including trousers, shirts, sweat shirts, cassocks, bags, shorts, tee-shirts, gowns, suits, blouses, jumpers, sweaters (jackets), coats; casual and sports footwear; headgear.
Class 35: Advertising; business management; business administration; office functions; business appraisal; efficiency experts; business information; administrative processing of purchase orders; services involving the recording, transcription, composition, compilation or systemisation of written communications and recordings; compilation of mathematical or statistical data; support, assistance, advice, management and consultancy for the organisation, administration, operation, management and transfer of business and/or companies dedicated exclusively to the marketing - via a system of direct sales - of cosmetics, make-up, perfumery, personal hygienic and beauty care preparations and jewellery; wholesaling, retailing, sale via catalogues, direct sale and the bringing together, for the benefit of others (excluding the transport thereof), of cosmetics, make-up, perfumery, toiletries, sanitary preparations, goods of leather (bags, handbags, travelling bags, notecases), sunglasses, footwear, clothing, playthings, jewellery and horological instruments, enabling customers to conveniently view and purchase those goods via physical or electronic means; sales promotion by means of loyalty cards and memberships that award bonuses, discounts and prizes; marketing and advertising consultancy and services; market research and surveys; commercial and business information; auditing and accounting; organisation of trade fairs and exhibitions for commercial or advertising purposes.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; providing electronic publications (non-downloadable); games services provided online; publication of electronic catalogues online, not downloadable; digital image processing; institutes for education and entertainment; organisation and conducting of exhibitions, events, concerts and shows for cultural and entertainment purposes; television and radio programmes; television entertainment; production or editing of programmes on the radio and on global computer networks covering a wide range of fields, including fashion, lifestyle, beauty, and topics of general interest, the aforesaid programmes being produced and disseminated via various communications media including satellite, wireless networks, web pages, fibre-optics, cable, radio, global computer communications networks, global communications networks and other technological media; all the aforesaid services relating to personal care, hygiene and beauty and to businesses and/or undertakings dedicated to the marketing (via a system of direct sale) of preparations for personal care, hygiene and beauty.
The contested services are the following:
Class 35: Advertising; marketing services; commercial promotions; trading and consumer information, namely retailing and wholesaling in relation to clothing, footwear and headgear.
Class 41: Sporting activities; cultural activities; display of works of art for cultural purposes.
The term ‘namely’, used in the applicant’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
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 services in Class 35
The contested advertising; marketing services; commercial promotions are identically listed in the opponent’s list of services, or are included in or overlap with the opponent’s broader categories of advertising; marketing and advertising consultancy and services. Therefore, they are identical.
The contested trading and consumer information, namely retailing and wholesaling in relation to clothing, footwear is, despite the different wording, included in the opponent’s list of services in Class 35; therefore, they are identical.
The contested trading and consumer information, namely retailing and wholesaling in relation to headgear are similar to the opponent’s wholesaling, retailing, sale via catalogues, direct sale and the bringing together, for the benefit of others (excluding the transport thereof), of footwear, clothing enabling customers to conveniently view and purchase those goods via physical or electronic means. The services at issue have the same nature since both are retail and wholesaling services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs. Moreover, they can coincide in provider and share the same channels of distribution.
Contested services in Class 41
The contested sporting activities; cultural activities are identically included in the opponent’s list of services.
Moreover, the contested display of works of art for cultural purposes are included in the opponent’s broader category cultural activities. 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 services found to be identical and similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention varies from average to higher, depending on the degree of specialisation and price of the services.
- The signs
YAN | Jan |
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public because of the degree of aural similarity between the signs, as explained below.
The earlier sign has no meaning for the relevant public. It contains no elements that could be considered more distinctive than others.
The contested sign will be understood as a frequently used name or as an abbreviation for ‘January’. Since neither of these meanings has a connection with the relevant services, the sign has no elements that could be considered more distinctive than others.
In case of word marks, it is the word per se that is protected and not its graphic stylisation in upper or lower case letters. Therefore, it is irrelevant whether it is in upper or lower case characters.
Visually, the signs are similar to the extent they coincide in their second and third letters, which are in the same positions in the signs; however, they differ in their first letter (‘Y’ vs ‘J’).
Therefore, the signs are similar to an average degree.
Aurally, the signs are similar to the extent they coincide in the phonemes ‘an’. Moreover, the pronunciation of the first phonemes, ‘Y’ and ‘J’, is very similar for the relevant English-speaking public.
Therefore, the signs are aurally similar to a high degree.
Conceptually, the contested sign will be associated with either a name or an abbreviation for ‘January’; however, the earlier mark has no meaning in the relevant territory. 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 more than 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 trade 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 contested services are partly identical and partly similar.
The services target the public at large and business customers with specific professional knowledge or expertise whose level of attention varies from average to high. The distinctiveness of the earlier trade mark is average.
The signs are visually similar to an average degree and aurally similar to a high degree, as they differ only in the first letters of the signs; two out of three letters are identical and are in the same sequence. Aurally, for the relevant English-speaking public, the pronunciation will be almost the same.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 445 101. It follows from the foregoing considerations that the contested trade mark must be rejected for all the contested services.
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
Birgit FILTENBORG | Ana MUÑIZ RODRIGUEZ | Loreto URRACA LUQUE |
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.