LEO | Decision 2715640 - Siemes Schuhcenter GmbH & Co. KG v. AK-TEL Arkadiusz Klimczak
Date Published: Oct 1, 2017
OPPOSITION No B 2 715 640
Siemes Schuhcenter GmbH & Co. KG, Krefelder Str. 310, 41066 Mönchengladbach, Germany (opponent), represented by Leifert & Steffan, Burgplatz 21-22, 40213 Düsseldorf, Germany (professional representative)
a g a i n s t
AK-TEL Arkadiusz Klimczak, Bohaterów Warszawy 2A, 75-211 Koszalin, Poland (applicant).
On 19/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 715 640 is upheld for all the contested goods, namely:
Class 18: Folio cases; Bags; Bags for campers; Bags for sports; Leather wallets; Ladies’ handbags; Clutch bags; Wallets; Card wallets [leatherware]; Credit-card holders; Leather bags and wallets; Card cases [notecases]; Handbags, purses and wallets; Business card cases; Wallets for attachment to belts; Credit card cases [wallets]; Wallets including card holders.
2. European Union trade mark application No 15 170 442 is rejected for all the contested 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 some of the goods of European Union trade mark application No 15 170 442, namely against all the goods in Class 18. The opposition is based on, inter alia, German trade mark registration No 30 2012 030 994. 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 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 German trade mark registration No 30 2012 030 994.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 18: Briefcases, document cases, beach bags, pocket wallets, bags for campers, shopping bags, casings of leather for springs, coverings of skins (furs), purses (coin purses), purses not of precious metal, suitcase handles, handbags, hip bags, dog collars, card cases (notecases), sling bags for carrying infants, garment bags for travel, trunks in particular travelling trunks, trunks (luggage), attaché cases, valises, suitcases, vanity cases, not fitted; imitation leather, leather leashes, leatherware, in particular travelling sets, key cases, leather jewellery; umbrellas, toilet bags, travelling bags, rucksacks, bags for climbers, shoe bags, satchels, school bags, bags with wheels, haversacks.
The contested goods are the following:
Class 18: Folio cases; Bags; Bags for campers; Bags for sports; Leather wallets; Ladies’ handbags; Clutch bags; Wallets; Card wallets [leatherware]; Credit-card holders; Leather bags and wallets; Card cases [notecases]; Handbags, purses and wallets; Business card cases; Wallets for attachment to belts; Credit card cases [wallets]; Wallets including card holders.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The contested bags include as a broader category the opponent’s beach 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.
Bags for campers; handbags are listed in both specifications in exactly the same terms. The goods are identical.
The contested bags for sports include as a broader category the opponent’s bags for climbers. 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 ladies’ handbags; clutch bags are included in the broad category of the opponent’s handbags. The goods are identical.
The contested folio cases; leather wallets; wallets; card wallets [leatherware]; credit-card holders; leather bags and wallets; card cases [notecases]; purses and wallets; business card cases; wallets for attachment to belts; credit card cases [wallets]; wallets including card holders as far as classified in Class 18 are (small) articles made of leather. They are included in the opponent’s broad category of leatherware. The goods 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 are directed at the public at large. The degree of attention is considered average.
- The signs
LEONE | |
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. The verbal element ‘LEONE’ is not a German word. Nevertheless, it is likely to be associated with a given or a family name, possibly of Italian origin. In any case, its distinctiveness is average. Because it is composed of a single indivisible element, the earlier mark has no components that could be considered more distinctive or dominant than other elements.
The contested sign is a figurative mark comprising a stylised depiction of a lion’s head and the verbal element ‘LEO’ in a standard font; the letter ‘L’ is noticeable and larger than the other two letters. According to the German dictionary Duden, ‘Leo’ and ‘Leon’ are male given names. ‘Leo’ is also often used as short for or as a diminutive of ‘Leopold’ or ‘Leonardo’. The depiction of the lion’s head may lead the part of the public that is familiar with Latin or that is particularly interested in astrology to associate the verbal element ‘Leo’ with the German word ‘Löwe’, which means ‘lion’. The contested mark has no elements that can be defined as more or less distinctive than other elements. The larger size of the letter ‘L’ does not justify a finding that this is a dominant (visually more eye-catching) element in the contested sign, since it is usual (in German this is a rule) for names and substantives to start with an upper case letter. Therefore, the larger ‘L’ will not be perceived as a separate dominant element in the contested sign, but as part of the verbal element ‘Leo’, which is as dominant as the figurative element.
Even though there are no more distinctive or dominant elements in the contested sign, it should be recalled 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. This is because 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).
Visually, the signs coincide in ‘LEO’, which constitutes the entire verbal element of the contested sign and the first three letters of the earlier mark. However, they differ in the last letters, ‘NE’, of the earlier mark, which have no counterparts in the contested sign, as well as in the figurative element and the red colour of the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the initial syllables /LE/O/, present identically in both signs. The pronunciation differs in the syllable /NE/ of the earlier mark, which has no counterpart in the contested mark.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the various elements of the marks will be associated with the meanings described above. If the verbal elements of both signs are associated with a name, it is possible that the relevant consumer will link the signs on a conceptual level, because of their common root and because of the possible perception that ‘Leo’ is short for or is a diminutive of ‘Leone’. Such a connection will be enhanced by the existence and recognition by the relevant public of the name ‘Leon’, as indicated in the article from the dictionary Duden; this would enable the relevant consumer to more easily make this connection without any additional mental effort. The presence of the figurative element, although adding a different concept to the contested sign, will not prevent consumers from associating the two signs on a conceptual level.
Even if the verbal element of the contested sign is associated with the concept of a ‘lion’, as suggested by the depiction of the lion’s head and subject to some knowledge of Latin or interest in astrology on the part of the relevant consumers, it is likely that the part of the public that associates the word ‘lion’ with the verbal element ‘leo’ will also perceive it as the root of the name ‘Leone’. Indeed, the etymology of all names containing ‘Leo’, such as ‘Leon(e)’, Leopold or Leonardo, can be traced back to the Latin word ‘Leo’.
Bearing in mind the above considerations, it is likely that the majority of the public will associate the signs on conceptual level and, therefore, for this part of the public, the signs are conceptually similar to an average degree. Another part of the public will not make such a mental connection between the signs.
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 are identical and the signs are visually similar to an average degree, aurally similar and, for part of the public, also conceptually similar. The distinctiveness of the earlier mark is average and, the degree of attention of the relevant public in relation to the relevant goods is also average.
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).
Even though the degree of similarity between the signs as a whole is not particularly high, taking into account all the relevant facts of the case, in particular the identity between the goods, the Opposition Division finds 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 German trade mark registration No 30 2012 030 994. It follows that the contested trade mark must be rejected for all the contested goods. It may proceed to registration for the remaining, non-contested, goods.
As the earlier right German trade mark registration No 30 2012 030 994 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).
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
Liliya YORDANOVA | Plamen IVANOV | Judit NÉMETH |
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.