LOTO | Decision 2788084

Date Published: Sep 24, 2017

OPPOSITION No B 2 788 084

Lotos Goldbrillen GmbH, Mulde 15, 75239 Eisingen, Germany (opponent), represented by Rechtsanwälte Schindhelm & Pfisterer, Weiherstr. 2 – 4, 75173 Pforzheim,  Germany (professional representative)

a g a i n s t

Loto Preziosi S.p.A., Via del Gavardello 57, 52100 Arezzo,  Italia (applicant), represented by Simone Fabbriciani, Piazza Guido Monaco, 11, 52100 Arezzo, Italia  (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 788 084 is partially upheld, namely for the following contested goods:

Class 18: Suitcases; Keycases; Trunks [luggage]; Vanity cases, not fitted; Casual bags; Gym bags; Beach bags; Sport bags; Travel baggage; Travelling sets (leatherware); Satchels; Straps (Leather -); Card cases (notecases); Wallets; Haversacks; Saddlery; Valises; Attache cases; Backpacks; Umbrellas; Umbrellas.

Class 25: Bandanas [neckerchiefs]; bermuda shorts; caps [headwear]; footwear;  socks; chemisettes; shirts; hats; coats; belts for clothing; neckties; sweat shirts; jackets [clothing]; heavy jackets; blousons; skirts; gloves [clothing]; mackintoshes; denim jeans; sweaters; trousers; beach wraps; parkas; furs (clothing); polo shirts; tee-shirts; clothing, suits; gowns; scarves; sashes for wear; scarves.

2.        European Union trade mark application No 15 630 965 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 630 965 . The opposition is based on European Union trade mark registration No  610 642 LOTOS. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 9: Optical apparatus and instruments; spectacles; spectacle frames, in particular of metal; parts and components for the aforesaid goods, included in class 9.

Class 14: Precious metals and their alloys and goods of precious metals or coated therewith (included in class 14); jewellery, precious stones; parts and fittings for the aforesaid goods, included in class 14.

Class 18: Leather and imitations of leather, and goods made of these materials (included in class 18); trunks and travelling bags; umbrellas, parasols and walking sticks; saddlery; parts and fittings for the aforesaid goods, included in class 18.

The contested goods are the following:

Class 18: Suitcases; Keycases; Trunks [luggage]; Vanity cases, not fitted; Casual bags; Gym bags; Beach bags; Sport bags; Travel baggage; Travelling sets (leatherware); Satchels; Straps (Leather -); Card cases (notecases); Wallets; Haversacks; Saddlery; Valises; Attache cases; Backpacks; Umbrellas; Umbrellas.

Class 25: Bandanas [neckerchiefs]; Bermuda shorts; Underwear; Caps [headwear]; Stocking suspenders; Footwear; Stockings; Socks; Chemisettes; Shirts; Hats; Coats; Belts for clothing; Swimming costumes; Neckties; Sweat shirts; Jackets [clothing]; Heavy jackets; Blousons; Skirts; Gloves [clothing]; Mackintoshes; Denim jeans; Sweaters; Trousers; Beach wraps; Parkas; Furs (clothing); Polo shirts; Tee-shirts; Clothing, suits; Gowns; Scarves; Sashes for wear; Scarves; Pocket squares.

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

The contested Trunks [luggage]; Saddlery; Umbrellas (listed twice) are identically contained in both lists of goods (including synonyms).

The contested suitcases; travel baggage; travelling sets (leatherware); valises overlap with the opponent’s travelling bags. Therefore, they are identical.

The opponent’s goods made of leather and imitations of leather and the contested  keycases; vanity cases, not fitted; casual bags; gym bags; beach bags; sport bags;  satchels; straps (leather -); card cases (notecases); wallets; haversacks; attache cases; backpacks coincide in their nature. Their purpose, in the broadest sense, may also be the same in that they are for containing and carrying things. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

Contested goods in Class 25

The opponent’s goods made of leather and imitations of leather in Class 18 include goods such as bags, handbags, sports bags, briefcases, wallets, purses, key cases, etc.. These goods are related to the contested goods bandanas [neckerchiefs]; bermuda shorts; caps [headwear]; footwear;  socks; chemisettes; shirts; hats; coats; belts for clothing; neckties; sweat shirts; jackets [clothing]; heavy jackets; blousons; skirts; gloves [clothing]; mackintoshes; denim jeans; sweaters; trousers; beach wraps; parkas; furs (clothing); polo shirts; tee-shirts; clothing, suits; gowns; scarves; sashes for wear; scarves. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of them as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers.  Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

The remaining contested goods underwear; stocking suspenders; stockings; swimming costumes; pocket squares are dissimilar to the opponent’s goods. They have a different nature and purpose. Furthermore, they are normally produced by different undertakings and neither they are complementary nor in competition.

2. 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 to various degrees are directed at the public at large. The degree of attention is average.

3. The signs

LOTOS
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 element ‘LOTO’ of the contested sign and the earlier mark will be associated to a meaning in certain territories. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The element ‘LOTO’ of the contested sign will be understood as the name of a flower. This concept is reinforced by the figurative element depicting the flower.  As they are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive. The earlier mark will also be associated to the same concept and is distinctive.

The contested sign no elements that could be considered clearly more dominant than other elements.

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 ‘LOTO’. However, they differ in the last letter ‘S’ of the earlier mark and in the figurative element and the slight stylisation of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LOTO’, present  in both signs. The pronunciation differs in the sound of the letter ‛S’ of the earlier sign.

Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated to the same meaning, they are conceptually identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

The goods are partly identical,  partly similar to various degrees and partly dissimilar.

The marks are visually similar to an average degree, aurally similar to a high degree and conceptually identical.

There is a likelihood of confusion because the differences between the signs are confined to secondary elements and aspects.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly wellfounded on the basis of the opponent’s European Union  trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (including those found to be similar to a low degree as it is considered that the significant similarity between the marks is sufficient to compensate the low degree of similarity of part of the goods)  to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Pedro JURADO MONTEJANO

Francesca CANGERI SERRANO

Erkki MÜNTER

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.