MACSAC | Decision 2654153

Date Published: Oct 1, 2017

OPPOSITION No B 2 654 153

Target Dry Ltd., 7 Alanbrooke Park, Castlereagh, Belfast BT6 9HB, United Kingdom (opponent), represented by Forde Campbell LLC, 1-3 Lombard Street, Belfast Northern Ireland BT1 1RB, United Kingdom (professional representative)

a g a i n s t

Armon Limited Itm-Investment & Trust Management S.A., 17 rue du Cendrier, 1211 Geneva, Switzerland (applicant), represented by Neil John Muttock, 6 Kings Avenue, Muswell Hill, London N10 1PB, United Kingdom (professional representative).

On 04/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 654 153 is partially upheld, namely for the following contested goods:

Class 18: Baby carriers and harnesses and slings for carrying babies; Bags; Hand bags.

2.        European Union trade mark application No 14 702 741 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 14 702 741. The opposition is based on European Union trade mark registration No 5 694 757. The opponent invoked Article 8(1) (b) and 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

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 12: Baby carriages; perambulators incorporating carry cots; pushchairs; perambulators; hoods and covers for pushchairs and perambulators.; Children's car seats; Children's safety seats for cars; Safety seats for use in cars; Cushions adapted for use with car seats; Child carrying seats for use in vehicles.

Class 18: Baby carriers and harnesses and slings for carrying babies; carrying bags and holders or harnesses for push chairs; changing bags; Bags; School bags; Luggage bags; Hand bags; Travel bags.

Class 25: Toys; Infant toys; Bouncing toys; Cloth toys; Fabric toys; Push toys; toy bags; toy luggage; toy satchels; toy changing bags; toy handbags.

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 12

The contested goods in Class 12 are baby carriages, safety seats, cushions for car seats, covers and hoods for such devices. The opponent’s goods are clothing, footwear and headgear in Class 25. They are directed at a different public, have a different purpose, either carrying or securing a baby against covering the body, feet or head. They are produced by different companies and made available through different distribution channels. For the reasons set out above, these goods are considered to be dissimilar.

Contested goods in Class 18

Baby carriers and harnesses and slings for carrying babies are lowly similar to the opponent’s clothing as they can coincide in producer, end user and distribution channels.

However, the contested carrying bags and holders or harnesses for push chairs do not have anything in common with the opponent’s goods in Class 25. These contested goods do not relate to the world of fashion but serve a specific purpose as they are used for baby carriages (to carry them and as accessories). They are neither directed at the same public and are produced by different entities. For the reasons set out above, these goods are considered to be dissimilar.

The contested Hand bags are similar to clothing as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested Bags are similar to the opponent’s headgear as they can coincide in producer, end user, distribution channels and, as Office practice dictates, also in their methods of use.

However, the contested Luggage bags; Travel bags changing bags and school bags  are very different from that of clothing, headgear and footwear in Class 25. These bags are for carrying things when travelling and do not satisfy the same needs as clothing, headgear and footwear. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary. They serve very different purposes (storage, transportversus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.

Contested goods in Class 28

The contested goods in Class 28 are all toys. Toys have a different purpose than the opponent’s clothing, headgear or footwear in Class 25. These goods are directed at different consumers and do not coincide in distribution channels nor producers. These goods are considered to be dissimilar.

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 similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

MAC IN A SAC	MACSAC
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 Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.

The marks have no elements that could be considered clearly more distinctive or dominant than other elements than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the identical beginning and final letters of each sign (“mac” and “sac”). They differ in the further verbal elements “in a” in the earlier mark and that the earlier mark is composed of four verbal elements while the contested is a single word mark.

Due to the identical first and last three letters, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛MACK-SACK’, present identically in both signs. The pronunciation differs in the syllables ‛IN-A’ in the middle of the earlier sign, which have no counterparts in the contested mark.

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

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 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 trade mark has a reputation in the European Union in connection with all of the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. 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).

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• The opponent has used the brand since 1987. The opponent’s goods are sold in a number of stores in the European Union and also online.
• A website printout of the site www.macinasac.com showing the opponent’s goods from 28/06/2016.
• A Google Search of the term Mac Sac shows that the opponent’s goods are displayed prominently in such a search.
• Copies of registration certificates of the earlier EUTM and a UK mark which was not raised during the notice of opposition.
• Brochures from 2001 showing the opponent’s goods (in English).
• A Wikipedia article about the opponent’s goods.
• Test reviews from 2012 of the opponent’s goods from the websites abqjournal.com, spokesman.com and gearguide.com (in English) stating that a test person tested the opponent’s jackets.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Both enhanced distinctiveness and reputation require recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

In the present case, the evidence consists of auxiliary evidence that the mark has been used and that some test reviews have been written. It also consists of a very short Wikipedia article. Case-law has consistently held that information from collective encyclopaedias such as Wikipedia lacks certainty, because their content may be amended at any time and, in certain cases, by any visitor, even anonymously (18/06/2013, T-338/12, K9 products, EU:T:2013:327, § 32; 10/02/2010, T-344/07, Homezone, EU:T:2010:35, § 46; 16/11/2011, T-500/10, DORMA, EU:T:2011:679, § 55).

This article and neither the other articles which are test reviews of the opponent’s goods do not support a conclusion that the earlier mark was known by a significant part of the relevant consumers for all or some of the goods concerned by the filing date of the contested EUTM application. It also has to be mentioned that the evidence filed by the opponent on 05/12/2016 cannot be taken into account to prove reputation as it was filed after the end of the substantiation period.

Under these circumstances and in the absence of any independent and objective evidence that would enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public at the relevant date, the market share held by the mark, the position it occupies in the market in relation to competitors’ services, the duration, extent and geographical area of its use or the extent to which it has been promoted, it is concluded that the evidence does not show the degree of recognition of the trade mark by the relevant public.

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 signs are aurally and visually similar to an average degree while they do not convey any concept in German to distinguish these signs safely. The goods are similar (to various degrees) and dissimilar.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well-founded 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 similar to those of the earlier trade mark. This also applies to the goods which were found to be only lowly similar as the signs are visually and aurally similar due to their initial and final letters which coincide and it has to be noted that level of attention is only average.

The rest of the contested goods are dissimilar. As similarity of goods 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.

The Opposition Division will therefore continue the examination of the opposition in relation to the remaining contested goods and in relation to the only other remaining ground of opposition, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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 will 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 above-mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant 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. Reputation of the earlier trade mark

According to the opponent the earlier trade mark has a reputation in the European Union in connection with all the goods for which it is registered, namely clothing, footwear and headgear.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

It is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar it is based on 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. 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

Renata COTTRELL

Lars HELBERT

Julia SCHRADER

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.