KEEP HOPE | Decision 2775800
Date Published: Sep 24, 2017
OPPOSITION No B 2 775 800
Hope Stockholm Ab, Gävlegatan 12 A, 11330 Stockholm, Sweden (opponent), represented by Magnusson Advokatbyrå Ab, Stora Nygatan 29, 404 30 Gothenburg, Sweden (professional representative)
a g a i n s t
Christelle Wattier and Séverine Meresz, 69 rue Reine Elizabeth, 1480 Tubize, Belgium (applicants), represented by Novagraaf Belgium S.A./N.V., Chaussée de la Hulpe 187, 1170 Brussel, Belgium (professional representative).
On 25/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 775 800 is upheld for all the contested goods.
2. European Union trade mark application No 15 511 512 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 15 511 512 ‘KEEP HOPE’. The opposition is based on, inter alia, European Union trade mark registration No 3 593 035 ‘HOPE by Ringstrand & Söderberg’. The opponent invoked Article 8(1)(b) and 8(4) 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 3 593 035.
- The goods
The goods on which the opposition is based are the following:
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear and headgear.
The contested goods are the following:
Class 14: Alloys of precious metal; jewellery, precious stones and semi-precious stones; Paste jewellery [costume jewelry (Am.)]; Jewellery cases (caskets); Horological and chronometric instruments.
Class 18: Leather and imitation leather; Bags, luggage and pocket wallets, bags of textile, bags of leather and imitations of leather; Handbags, Holdalls, Sport bags, Beach bags.
Class 25: Clothing, footwear, headgear; Belts of leather, imitations of leather and textile.
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
Alloys of precious metal; jewellery, precious stones; horological and chronometric instruments are identically contained in both lists of goods (including synonyms).
The contested Paste jewellery [costume jewelry (Am.)] is included in the broad category of the opponent’s jewellery. Therefore, they are identical.
The contested semi-precious stones are similar to the opponent’s precious stones. They may coincide in purpose, manufacturers, distribution channels and users.
Jewellery cases (caskets) are similar to jewellery as they can coincide in producer, end user and distribution channels. Furthermore they are complementary
Contested goods in Class 18
Leather and imitation leather are identically contained in both lists of goods.
The contested bags includes, as a broader category the opponent’s travelling bags. 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 luggage overlaps with the opponent’s travelling bags and these goods are therefore identical.
Pocket wallets are similar to clothing in class 25 as they can coincide in producer, end user and distribution channels.
The contested bags of textile, bags of leather and imitations of leather; Handbags, Holdalls, Sport bags, Beach bags are similar to travelling bags as they have the same purpose. They can coincide in end user and distribution channels.
Contested goods in Class 25
Clothing, footwear, headgear are identically contained in both lists of goods.
The contested belts of leather, imitations of leather and textile are included in the broad category of the opponent’s clothing. 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 goods found to be identical or similar are directed at the public at large.
The degree of attention is average.
- The signs
HOPE by Ringstrand & Söderberg | KEEP HOPE |
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 elements are meaningful in certain territories, for example, in those countries where both Swedish and English is understood by the same public at the same time. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Swedish-speaking part of the public (concerning the understanding of the English language in the Scandinavian countries, see 26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23).
The elements ‘by Ringstrand & Söderberg’ in the earlier mark indicate two relatively common Swedish surnames and will be understood, together with the preceding word ‘by’ merely as referring to the manufacturers or providers of the goods by the Swedish-speaking part of the public. The public is used to see and understand such indications and will pay more attention to the other more distinctive elements in the mark.
The element ‘HOPE’ contained in both signs is a basic English word which will be understood as ‘a feeling of desire for something and confidence in the possibility of its fulfilment’ (21/08/2017 https://www.collinsdictionary.com/dictionary/english/hope) by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it maintains an independent distinctive character.
The word ‘KEEP’ in the contested mark is a basic English word which is used with some nouns to indicate that someone does something for a period of time or continues to do it (21/08/2017 www.collinsdictionary.com/dictionary/english/hope ). Together, the contested mark ‘KEEP HOPE’ is perceived as a suggestion or encouragement that the consumer would continue maintaining the feeling for something (such as hope). As the words are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.
Visually and aurally, the signs coincide in the element ‘HOPE’ and differ in the remaining word elements, as explained also above.
Therefore, the signs are visually and aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning in respect of the word HOPE, included in both signs, the signs are conceptually similar to an average degree to that extent.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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 have been found partially identical and partially similar. The visual, aural and conceptual similarities and dissimilarities have been established.
The signs have been found to be similar to the extent that they share the element HOPE, which is an inherently and independently distinctive element in the earlier mark. These similarities are reinforced by the conceptual similarities created by the element HOPE of the respective marks. In this respect, it must also be taken into account that the word KEEP in the contested sign will not substantially affect the conceptual meaning of the word HOPE but rather specify its meaning without changing the basic idea of ‘an expectation of something desired’ while encouraging the consumers to keep that expectation.
Furthermore, the element ‘by Ringstrand & Söderberg’ of the earlier trade mark will be perceived as a business identifier by the relevant public, indicating the company or persons ‘behind’ the trade mark. In the present case, the consumers are likely to focus more on the element that would be seen as identifying the specific product line rather than on the element that would be perceived (because it is preceded by ‘by’) as identifying the company or persons that has control of the products concerned.
In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).
In the case at hand, it is considered that the similarities rendered by the distinctive element ‘HOPE’ in the marks are enough to counteract the differences between the marks, and that the relevant part of the public may believe that the goods come from the same undertaking or, at least, from economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the Swedish-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 3 593 035. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier right EUTM No 3 593 035 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 (4) 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
Birgit FILTENBORG | Erkki MÜNTER | Irina SOTIROVA |
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.