LOXY | Decision 2576620

Date Published: Sep 28, 2017

OPPOSITION No B 2 576 620

Sovenca, S.L., Poligono Raposal, 47, 26580 Arnedo (La Rioja), Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative)

a g a i n s t

Loxy AS, Postboks 101, 1787 Berg i Østfold, Norway (holder), represented by Heinonen & Co, Fabianinkatu 29 B, 00100 Helsinki, Finland (professional representative).

On 09/12/2016, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 576 620 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of international registration No 1 226 595 designating the European Union, namely against all the goods in Classes 9 and 25. The opposition is based on Spanish trade mark registrations No 1 243 099 and No 2 987 557 and international trade mark registration No 609 304 designating France and Italy. The opponent invoked Article 8(1)(b) and Article 8(5) 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 and services

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

Spanish trade mark registration No 1 243 099

Class 25: Clothing, footwear (except orthopaedic), excluding insteps and fake soles for footwear, headgear; all of these of the included in this class.

Spanish trade mark registration No 2 987 557

Class 10: Orthopedic footwear, boots for medical use, supports for flat feet, orthopaedic insoles, springs for footwear curvatures.

Class 35: Procurement services for others (purchasing goods for other business), business management assistance in relation to franchising, retailing in shops, retailing via electronic media or global computer networks of footwear and clothing accessories of all kinds.

International trade mark registration No 609 304

Class 25: Clothing, footwear (except orthopaedic), excluding insteps and fake soles for footwear; headgear.

The contested goods are the following:

Class 9: Reflecting strips and tapes for wear; security waistcoats, sew-on reflective film for clothes; transfer reflecting film.

Class 25: Clothing, footwear, headgear; light-reflecting jackets.

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 9

The contested security waistcoats belong to the category of protective or security clothing. They are worn over standard clothing or uniforms to improve the visibility of those who wear them and/or to clearly identify the wearer as someone who is performing security-related functions. They are similar in nature to the opponent’s clothing in Class 25 protected by earlier Spanish trade mark registration No 1 243 099 and international trade mark registration No 609 304. Furthermore, these goods have the same method of use and target the same end users. Therefore, these goods are similar to a low degree.

The contested reflecting strips and tapes for wear, sew-on reflective film for clothes and transfer reflecting film are reflective accessories for clothing, used to improve the visibility of those who wear them. These goods are similar to a low degree to retailing via electronic media or global computer networks of clothing accessories of all kinds of Spanish trade mark registration No 2 987 557, because clothing accessories of all kinds may encompass the contested goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the retail services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Contested goods in Class 25

The contested clothing, footwear and headgear are identically contained in the lists of earlier Spanish trade mark registration No 1 243 099 and international trade mark registration No 609 304.

The exclusion of orthopaedic footwear, insteps and fake soles for footwear in the opponent’s list of goods does not change this finding, because those exclusions do not limit the scope of protection of footwear in Class 25. Orthopaedic footwear does not belong to Class 25, and insteps and fake soles are parts and accessories for footwear, which according to Office practice, although included in Class 25, do not fall within the natural meaning of footwear.

The contested light-reflecting jackets are included in the broad category of the opponent’s clothing protected by earlier Spanish trade mark registration No 1 243 099 and international trade mark registration No 609 304. Therefore, these goods are identical.

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 are directed at the public at large. The goods and services found to be similar to a low degree are directed at the public at large and at business customers with specific professional knowledge. The degree of attention may vary from average to high for professionals.

3. The signs

FLOSSY
Earlier trade marks	Contested sign

The relevant territory is France, Italy and Spain.

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 marks are word marks composed of a single verbal element, ‘FLOSSY’, while the contested mark is a figurative mark containing a white verbal element, ‘LOXY’, placed on a red rectangular background with two corners snipped off.

The verbal elements ‘FLOSSY’ and ‘LOXY’ do not exist as such in the relevant languages, namely French, Italian and Spanish, and do not have any identifiable components. They are fanciful and enjoy an average degree of inherent distinctiveness in the context of the relevant goods and services.

The contested sign is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the final letter ‘Y’. Moreover, both the earlier trade marks and the contested sign contain the letters ‘LO’ although they occupy different positions within the signs. They differ in the letters ‘F*SS’ of the earlier trade marks, as well as in the letter ‘X’ and the figurative element of the contested sign. Furthermore, the length of the verbal elements is different, the earlier trade marks being composed of six letters and the contested sign of four letters.

Taking into account that the letters in common are visually not clearly perceptible as a separate element but are rather hidden in the signs, it is concluded that the signs coincide only in irrelevant aspects and therefore they are not visually similar.

Aurally, the signs are pronounced in two syllables. Irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation coincides in the sound of the letters ‘LO*Y’ and differs in the sound of the letters ‛F*SS’ of the earlier trade marks and the sound of the letter ‘X’ of the contested sign. However, the sound of the letter ‘X’ (pronounced as /ks/), especially when pronounced softly, such as in Spanish, is similar to the sound of the double ‘SS’ (pronounced as /ss/ or /s/ depending on the relevant language).

Therefore, the aural similarity varies from low to average depending on the way the letter ‘X’ is pronounced by different parts of the relevant public.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of 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.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy 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’). The examination will proceed on the assumption that the earlier marks have enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

The Opposition Division has assumed in part d) of this decision that the earlier marks have been extensively used and enjoy an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier marks have an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

In the present case, the contested goods are identical and similar to a low degree to the goods or services of the earlier trade marks. The similarity of the signs is remote, as it is limited to the aural aspect.

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). However, in the present case, even identity between some of the goods, together with the assumed enhanced degree of distinctiveness of the earlier marks, is not sufficient to offset the limited similarity of the signs.

As regards those identical goods in Class 25, generally in clothes (or shoes) shops customers can themselves either choose the goods they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing or footwear is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the absence of visual similarity between the signs is particularly relevant when assessing the likelihood of confusion between them.

In addition, since the public reads from left to right, the part placed at the left of the sign (the initial part) is the one that first catches the attention of the reader. Consequently, the different beginnings of the signs at issue are another important factor to be taken into account when assessing the likelihood of confusion between the marks.

Finally, the fact that the earlier marks could be used with the same figurative element as the contested mark, as the opponent claims in its observations, is not relevant given that the examination of the opposition is limited to the signs as registered.

Considering all the above, there is no likelihood of confusion on the part of the public. The differences between the signs are sufficient to counteract the aural similarity between them and to enable the consumers, even when encountering them on identical goods, to safely distinguish between the marks. Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.

Likewise, even assuming that the earlier marks enjoy an enhanced distinctiveness due to reputation, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of reputation.

REPUTATION – ARTICLE 8(5) EUTMR

The Opposition Division will examine the opposition in relation to earlier Spanish marks No 1 243 099 and No 2 987 557, for which the opponent claimed repute in Spain.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the holder establishes due cause for the use of the contested trade mark.

In the present case, the holder did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier marks;

∙        it is detrimental to the repute of the earlier marks;

∙        it is detrimental to the distinctive character of the earlier marks.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier marks is not required to demonstrate actual and present harm to its marks, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the signs are similar, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

As mentioned above, the opponent should have filed submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely indicated in the notice of opposition that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade marks, the opposition is considered not well founded under Article 8(5) 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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anna POLITI

Zuzanna STOJKOWICZ

Julie GOUTARD

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.