MAHALO | Decision 2798158
Date Published: Sep 22, 2017
OPPOSITION No B 2 798 158
Pereira Fábrica de Confecções, Rua Morada da Lagoa, n 452, Galpão 6 - Fazenda Coutos, Salvador, Bahia, 41.306-745 Brasil (opponent), represented by J.Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)
a g a i n s t
Sas Aupa Hoff, 8 place André Emlinger, 64100 Bayonne, France (applicant).
On 08/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 798 158 is upheld for all the contested goods.
2. European Union trade mark application No 15 617 335 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 617 335 ‘MAHALO’. The opposition is based on European Union trade mark registration No 10 282 382 . 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 goods
The goods on which the opposition is based are the following:
Class 25: Sandals; Bath sandals; Briefs; Stockings; Men and women’s fashion bathing clothing; Belts [clothing]; Trousers; Jackets (clothing); Bathrobes; Hats; Caps; Bermuda shorts; Shirts; Football boots; Maillots; Long pants; T-shirt; Beenies (wooly hats); Beach clothes; Clothing for gymnastics (skin-tight); Bikinis; Bathing caps; Wearing apparel; Footwear; Pareo.
The contested goods are the following:
Class 28: Skateboards, wheels for skateboards, accessories for skateboards.
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.
The contested skateboards, wheels for skateboards, accessories for skateboards are articles used for sports. Their nature and purpose are different from the nature and purpose of the opponent’s goods in Class 25, which are types of clothing, footwear and headgear. The opponent’s goods serve to cover the human body and are usually made of textiles or similar raw materials. However, the opponent’s wearing apparel, footwear and caps include sports clothing, sports footwear and sports caps. Both sets of goods are used in sporting activities and they coincide in their distribution channels, as they can be found together in sports shops or in specialised sections of department stores. It is not uncommon for manufacturers of the contested goods to offer under the same brand goods falling within Class 25. Consequently, it can be concluded that these goods are similar to a low degree.
- 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 will be average, since they are not highly specialised or expensive goods.
- The signs
MAHALO | |
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public for which the coinciding element ‘MAHALO’ has no meaning, such as the English- and Spanish-speaking publics.
The earlier mark is a figurative mark composed of two elements arranged over two lines. On the first line there is a figurative element depicting a stylised white letter ‘m’ inside a two-colour circle (top half in orange and bottom half in dark blue) with a white frame. Below the figurative element appears the verbal element ‘mahalo’, written in dark blue letters with white outlines. The verbal element ‘mahalo’ has no meaning for the relevant public and is therefore distinctive. Although the letter ‘m’, on the other hand, is commonly used on the market to describe the size of clothing, it is not typical to include the size of clothing in such a stylised way. Furthermore, taking into account the verbal element that appears just below this letter, the Opposition Division considers that the letter ‘m’ will be perceived by the public as a decorative duplication of the initial letter of the word ‘mahalo’. Therefore, the degree of distinctiveness of the device incorporating the letter ‘m’ is average.
The earlier mark has no elements that could be considered clearly more dominant than other elements.
The contested sign is a word sign composed of the single word ‘MAHALO’, which, as stated above, has no meaning for the relevant public and is distinctive.
Visually, the signs coincide in the verbal element ‘MAHALO’, constituting the entire contested mark. They differ in the additional figurative element incorporating the letter ‘m’ in the earlier mark. Account must be taken of the fact 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).
Therefore, the signs are visually similar to an average degree.
Aurally, the letter ‘m’ of the earlier mark will most likely not be pronounced, because it will be perceived as a decorative duplication of the initial letter of the word ‘mahalo’. Consequently, the pronunciation of the earlier mark is limited to the element ‘mahalo’, which constitutes the entire contested mark.
Therefore, irrespective of the different pronunciation rules for the English- and Spanish-speaking publics, the signs are aurally identical.
Conceptually, neither of the signs has a meaning. Therefore, a conceptual comparison is not possible and 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.
- 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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal. This applies to the goods in question in Class 25, as the stylisation of the letter ‘m’, the placement of this letter within a circle and the overall composition of the mark including the element ‘mahalo’ give the mark an average degree of distinctiveness, despite the lack of distinctiveness of the letter ‘m’ as such for these products.
- Global assessment, other arguments and conclusion
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.
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).
In the present case, the goods are similar to a low degree, but the signs are visually similar to an average degree and aurally identical, although a conceptual comparison is not possible. The degree of distinctiveness of the earlier mark is normal.
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). This is particularly important in cases such as this, where the degree of attention of the relevant public is average, the marks contain the same verbal element and the differences between the signs are exclusively confined to a figurative device and to the stylisation of one of the signs.
Considering all the above, there is a likelihood of confusion on the part of the English- and Spanish-speaking parts 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 10 282 382. It follows that the contested trade mark must be rejected for all the contested goods.
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
Zuzanna STOJKOWICZ | Birgit HOLST FILTENBORG | Ioana MOISESCU |
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.