M^2 MINIMUM SQUARED | Decision 2417858 - MINIMUM A/S v. ADRIAN MARTINEZ LLORDEN

Date Published: Oct 1, 2017

OPPOSITION No B 2 417 858

Minimum A/S, Balticagade 16, 8000  Arhus C, Denmark (opponent), represented by Bech-Bruun Law Firm, Værkmestergade 2, 8000  Århus C, Denmark (professional representative)

a g a i n s t

Adrian Martinez Llorden, Av. Reino de Valencia, 92-5º-18ª, 46006 Valencia, Spain (applicant), represented by Sanz Bermell International, Calle Jativa, 4, 46002 Valencia, Spain (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 417 858 is upheld for all the contested goods and services.

2.        European Union trade mark application No 12 939 039 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 939 039. At the date of the present decision the opposition is directed against all the goods and services. The opposition is based on European Union trade mark registration No 7 385 628. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the Europan Union trade mark No 7 385 628 on which the opposition is based.

In the present case the contested trade mark was published on 24/07/2014.

Earlier trade mark No 7 385 628 was registered on 10/02/2010. Therefore, the request for proof of use is inadmissible.

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:

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, headgear.

Class 35: Retail in leather and imitation leather, including goods made of these materials, skins and hides, suitcases and traveling bags, umbrellas, parasols and walking sticks, whips and saddlery, clothing, footwear, headgear, including through electronic networks; advertising, business management, business administration, office functions.

As the applicant requested limitation of the list of goods and services and the modified list was translated twice, the wording of some of the contested goods and services is different from that in the notice of opposition. This wording does not alter the scope of protection of the trade mark application, nor does it introduce any alteration in the extent of the opposition.

As such, after the limitation of the scope of protection of the contested sign by the applicant, the opposition is directed against all the goods and services, and the contested goods and services are the following:

Class 9: Carriers adapted for mobile phones; Covers (Shaped -) for computers; Cases adapted for photographic and optical apparatus.

Class 18: Portfolio bags; Pocket wallets; Purses; Hands bags; Casual bags; Sport bags; Holdalls; Backpacks; Baggage and luggage; Beauty cases; Travel garment covers.

Class 35: Retail store services and Via global computer networks of carry cases adapted for mobile telephones; Covers adapted for computers; Cases adapted for electronic apparatus, for photographic and optical apparatus; Wallets; Wallets; change purses; Handbags; Bags; Bags for sports; Travelling bags; Back packs; Baggage and other carriers; vanity cases; Suit carriers.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Moreover, it is to be noted that in accordance with Article 28(3) EUTMR, general indications included in the class headings of the Nice Classification or other general terms may be used provided that they comply with the requisite standards of clarity and precision, as set out in Article 28(2) EUTMR.

According to the Guidelines for examination of European Union trade marks, in accordance with Article 28(5) EUTMR, the use of general terms, including general indications of the class headings of the Nice Classification, will be interpreted as including all goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications will not be interpreted as comprising a claim to goods or services that cannot be understood in this way.

In collaboration with the trade mark offices of the European Union, other (inter)national organisations, offices and various user associations, the Office has established a list of general indications of Nice Classification class headings that are deemed not to be sufficiently clear and precise in accordance with Article 28(2) EUTMR.

The term goods made of these materials [leather and imitations of leather] and not included in other classes of the opponent’s earlier right was not found sufficiently clear and precise. It does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and therefore relate to different market sectors.

Similarly, retail services for general indications of the class headings that are considered not sufficiently clear and precise, such as retail services of goods made of these materials [leather and imitations of leather] were not themselves found sufficiently clear and precise.

Contested goods in Class 9

The contested carriers adapted for mobile phones; covers (shaped -) for computers; cases adapted for photographic and optical apparatus are similar to a low degree to the opponent’s trunks and travelling bags in Class 18 of the earlier mark which cover a wide range of different kind of carriers and bags used to carry belongings when travelling. They may target the same relevant consumers who may not only use the explicit produced cases for their computer or photographic and optical apparatus but also other carriers with specially designed space for the electronic equipment. Therefore, these goods may be in competition. Furthermore, the goods at issue can be produced by the same manufacturers.

Contested goods in Class 18

The contested holdalls, baggage and luggage overlap with the opponent’s travelling bags. They are identical.

The contested portfolio bags; hands bags; casual bags; sport bags; backpacks, beauty cases are similar to the opponent’s trunks and travelling bags. These goods have the same purpose of carrying. They coincide in distribution channels and the relevant public.

When comparing the opponent’s goods made of these materials [leather and imitations of leather] and not included in other classes to the contested pocket wallets; purses; travel garment cover, and considering previous assertions, the nature can be considered the same, the purpose may also be the same in the very broadest sense of the word, i.e. that they are used for carrying and to that extent these goods are considered similar to a low degree, but in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that they  coincide in other criteria.

Contested services in Class 35

An interpretation of the wording of the list of services of the earlier mark is required to determine the scope of protection of these services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services 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 retail store services and via global computer networks of bags; travelling bags; baggage and other carriers overlap with the opponent’s retail in traveling bags, including through electronic networks. They are identical.

The contested retail store services and via global computer networks of carry cases adapted for mobile telephones; covers adapted for computers; cases adapted for electronic apparatus, for photographic and optical apparatus; wallets; wallets; change purses; handbags; bags for sports; back packs; vanity cases; suit carriers are considered similar to the opponent’s retail in suitcases and traveling bags, including through electronic networks. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public.

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 and services found to be identical or similar to various degrees are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

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.

When assessing the similarity of the signs, an analysis of whether their components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these components have a lesser or greater capacity to indicate commercial origin.

As, for example, Polish-speaking consumers will associate the common element ‘MINIMUM’ with some meaning, which is however not descriptive, allusive or otherwise weak for the goods and services in question, and are therefore more prone to confusion, the Opposition Division finds it appropriate to focus the comparison of the signs in relation to the part of the public such as Polish-speaking consumers.

The earlier mark is a figurative mark containing a figurative element at the beginning of a sign, which can be however perceived by part of the relevant public as a letter ‘M’, and a stylised word ‘MINIMUM’. The figurative element or the letter ‘M’ for those who perceive it is distinctive for the goods and services in question. As regards the word ‘MINIMUM’, it will be understood by Polish-speaking consumers as meaning an amount which is the smallest that is possible or allowed, etc. (noun) or the smallest amount it should be or could possibly be, although the larger amount is acceptable or possible (adverb). As such, it cannot be considered descriptive or otherwise weak allied with any of the goods and services in question. It will not be understood by Polish-speaking consumers as an adjective that could possibly indicate some characteristics of the goods or services in question and is therefore considered distinctive.

The earlier mark does not have elements that could be considered more distinctive or dominant.

The contested mark is a figurative mark containing ‘m^2’ written in a slightly bigger font above the elements ‘minimum’ and ‘squared’. The elements ‘m^2’ and ‘squared’ do not have any meaning in Polish-language. The word ‘MINIMUM’ has the meaning described above. As such, the contested sign does not have any elements that could be considered more distinctive. The contested mark does not have elements that could be considered more dominant.

Visually, the signs coincide in ‘MINIMUM’. For part of the relevant public that perceives the letter ‘M’ in the earlier sign they additionally coincide in that letter and differ in the remaining elements: ‘^2’ and ‘squared’ of the contested sign. For part of the relevant public that does not perceive a letter ’M’ at the beginning of the earlier sign, but rather a figurative element, the signs differ in that figurative element of the earlier sign and ‘m^2’ and ‘squared’ of the contested sign. Whether or not the letter ‘M’ is perceived in the earlier sign, the signs differ in their stylisation.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in ‘MINIMUM’. For part of the relevant public that perceives the letter ‘M’ in the earlier sign they additionally coincide in that letter and differ in the remaining elements: ‘2’ (the element ‘^’ will not be pronounced) and ‘squared’ of the contested sign. For part of the relevant public that does not perceive a letter ’M’ at the beginning of the earlier sign, but rather a figurative element, the signs differ in the pronunciation of ‘m’, ‘2’  and ‘squared’ of the contested sign.

 

Therefore, the signs are 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 the same meaning of the word ‘MINIMUM’ they are conceptually similar. Moreover, as the Office follows the approach that single letters can have independent conceptual meaning, the conceptual similarity lies also in the presence of a letter ‘M’ in both signs for part of the relevant public as explained above.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘MINIMUM’. In support of its argument the applicant refers to some trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘MINIMUM’. Under these circumstances, the applicant’s claims must be set aside.

5. Global assessment, other arguments and conclusion

In the present case, it has been established that the contested goods and services are identical and similar to various degrees to the opponent’s goods and services. The marks are visually, aurally and conceptually similar to an average degree to the extent that they coincide in ‘MINIMUM’ (and ‘M’ for part of the relevant public).

The common element ‘MINIMUM’ is fully distinctive for the goods and services in question as explained above. It also constitutes the larger part of the earlier sign. Consequently, while it is true that the trade marks have certain differences between them, the presence of the element ‘MINIMUM’ in each of the marks will make it likely for the public to believe erroneously that the goods and services (even those that are similar to a low degree) have the same commercial origin or that there is a commercial or industrial link between the two signs.

Moreover, the goods and services in question are addressed to the general public, which pays an average degree of attention when purchasing them. Although, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account should 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 trust in the imperfect picture of them that he or she has kept in mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the Polish-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 7 385 628. It follows that the contested trade mark must be rejected for all the contested goods and 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

Steve HAUSER

Anna BAKALARZ

Boyana NAYDENOVA

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.