Mandra | Decision 2760299
Date Published: Sep 28, 2017
OPPOSITION No B 2 760 299
CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (opponent)
a g a i n s t
Sturm Handels GmbH, Graf-Bentzel-Str. 85, 72108 Rottenburg, Germany (applicant), represented by Abacus Patentanwälte, Lise-Meitner-Str. 21, 72202 Nagold, Germany (professional representative).
On 27/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 760 299 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods (in Classes 18 and 25) of European Union trade mark application No 15 364 078 (word mark: “Mandra”). The opposition is based on Benelux trade mark application No 13 199 333 and French trade mark application No 4 253 091 (both word marks: “Sandra”). 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 and services
The goods and services on which the opposition is based are the following:
Benelux trade mark application
Class 20: Divans; sofas; armchairs; beds; ottomans; tables; chairs; chaises longues; furniture; mirrors; picture frames.
Class 25: Clothing; footwear; headgear; swimwear; sportswear; leisurewear.
Class 35: Provision of information and advice to consumers regarding the selection of products and items to be purchased; advertising particularly services for the promotion of goods; retail services connected with the sale of clothing and clothing accessories; online retail store services in relation to clothing.
French trade mark application
Class 20: Furniture; glass (mirrors); (frames); cushions; chairs; seats; bedding with the exception of bed linen; mattresses.
Class 25: Clothing; shoes; headgear; shirts; leather clothing; belts (clothing); furs (clothing); gloves (clothing); scarves; ties; hosiery; socks; slippers; beach shoes; skiing boots; sport shoes; underwear.
Class 35: Advertising; business management; distribution of advertising materials (leaflets, pamphlets, printed matter, samples); presentation of goods on all means of communication for retail sale; business organisation and business management; online advertising on a computer network; company audits (business analysis); commercial intermediation services (concierge).
The contested goods in Classes 18 and 25 are the following:
Class 18: Sausage skins and imitations thereof; Umbrellas and parasols; Walking sticks; Luggage, bags, wallets and other carriers; Leather and imitation leather, Animal skins, hides and goods made of these materials (please use appropriate terms from the database to clarify this generic description); Saddlery, whips and animal apparel; Parts and accessories for all the aforesaid goods, included in this class; Briefbags; Pouch baby carriers; Slings for carrying infants; Beach bags; Clothing for pets; Alpenstocks; Harness fittings; Covers for horse saddles; Wallets; Bags for campers; Skins of chamois, other than for cleaning purposes; Kid; Attache cases; Boxes of leather or leather board; Net bags for shopping; Shopping bags; Casings, of leather, for springs; Casings, of leather, for springs; Umbrella or parasol ribs; Feed bags; Bits for animals [harness]; walking sticks; Purses; Luggage label holders; Animal harnesses; Skin (Goldbeaters' -); Rubber parts for stirrups; Collars for animals; Valises; Suitcases; Suitcase handles; Handbags; Handbag frames; Cattle skins; Horseshoes; Hat boxes of leather; Bags (Game -) [hunting accessories]; Card cases [notecases]; Boxes of leather or leather board; Boxes of vulcanised fibre; Chain mesh purses; Sling bags for carrying infants; Chin straps, of leather; Garment bags for travel; Cat o' nine tails; Knee-pads for horses; Vanity cases, not fitted; Credit card cases [wallets]; Leather (Imitation —); Leather thread; Straps (Leather -); Imitation leather; Leather leashes; Leatherboard; Straps of leather [saddlery]; Leather straps; Laces (Leather -); Valves of leather; Straps for soldiers' equipment; Tool bags, empty; Muzzles; Trimmings of leather for furniture; Furniture coverings of leather; Moleskin [imitation of leather]; Music cases; Whips; Hides; Horse blankets; Head-stalls; Horse collars; Randsels [Japanese school satchels]; Umbrellas; Umbrella handles; Traveling trunks; Trunks [luggage]; Travelling sets [leatherware]; Holdalls; Leather, unworked or semi-worked; Butts [parts of hides]; Backpacks; Bags for climbers; Riding saddles; Saddle trees; Saddlecloths for horses; Fastenings for saddles; Saddlery; Boxes of leather or leather board; Blinkers [harness]; Umbrella covers; Frames for umbrellas or parasols; Umbrella rings; Umbrella sticks; Straps for skates; Keycases; School knapsacks; Satchels; Leather shoulder belts; Walking stick seats; Parasols; Sport bags; Stirrups; Stirrup leathers; Walking sticks; Cane handles; Casual bags; Wheeled shopping bags; Hides; Haversacks; Bridoons; Shoulder harnesses; Pads for horse saddles; Bags [envelopes, pouches] of leather, for packaging; Business card cases; Gut for making sausages; Harness straps; Reins; Horse bridles; Curried skins; Traces [harness]; Duffel bags; Small rucksacks; Purses made of precious metal; Purse frames; Handbags; Purses and pocket wallets; Purses, not of precious metal; Wrist mounted purses.
Class 25: Headgear; Clothing; Footwear; Parts and accessories for all the aforesaid goods, included in this class; Heels; Heelpieces for footwear; Albs; Suits; Babies' pants [clothing]; Layettes [clothing]; Swimming costumes; Bathing drawers; Bathrobes; Swimming caps; Bath sandals; Bath slippers; Bandanas (scarves); Berets; Leg warmers; Clothing of imitations of leather; Motorists' clothing; Clothing; Paper clothing; Visors [headwear]; Boas [necklets]; Teddies (undergarments); Boxer shorts; Brassieres; Chasubles; Gowns; Knickers; Knickers; Shower caps; Insoles; Pocket squares; Masquerade costumes; Mittens; Fishing vests; Football boots; Gabardines [clothing]; Goloshes; Gaiters; Belts (Money -) [clothing]; Non-slipping devices for footwear; Belts [clothing]; Clothing for gymnastics; Gymnastic shoes; Ankle boots; Scarves; Gloves [clothing]; Slippers; Shirt yokes; Shirts; Slips [undergarments]; Shirt fronts; Wooden shoes; Trousers; Knee-high stockings; Stocking suspenders; Girdles; Hats; Frames (Hat -) [skeletons]; Jackets [clothing]; Jumpers; Stuff jackets [clothing]; Bodices [lingerie]; Skull caps; Hoods [clothing]; Linings (Ready-made -) [parts of clothing]; Ready-to-wear clothing; Headgear; Camisoles; Corsets; Shoulder wraps; Neckties; Ascots; Short-sleeve shirts; Bibs, not of paper; Leather clothing; Leggings [trousers]; Underwear; Liveries; Detachable collars; Maniples; Cuffs; Coats; Mantillas; Corselets; Miters [hats]; Robes; Muffs [clothing]; Caps [headwear]; Cap peaks; Footmuffs, not electrically heated; Outerclothing; Ear muffs [clothing]; Combinations [clothing]; Slippers; Hats (Paper -) [clothing]; Parkas; Pelerines; Furs [clothing]; Pelisses; Petticoats; Ponchos; Pullovers; Pyjamas; Cyclists' clothing; Welts for footwear; Rainwear; Skirts; Sandals; Saris; Sarongs; Neck scarfs [mufflers]; Sashes for wear; Sleepsuits; Sleep masks; Veils [clothing]; Wimples; Knickers; Lace boots; Fittings of metal for footwear; Footwear; Footwear soles; Footwear uppers; Tips for footwear; Footwear; Overalls; Aprons [clothing]; Sweat-absorbent underwear; Sweat-absorbent socks; Sweat-absorbent stockings; Sweat-absorbent underwear; Dress shields; Ski gloves; Ski boots; Skorts; Briefs; Socks; Sock suspenders; Athletics shoes; Sneakers; Singlets; Athletics vests; Boots; Ankle boots; Boot uppers; Headbands [clothing]; Espadrilles; Stoles; Fur stoles; Studs for football boots; Beachwear; Beach shoes; Stocking suspenders; Stockings; Heelpieces for stockings; Stocking suspenders; Tights; Sweaters; Togas; Pinafore dresses; Knitwear [clothing]; Tee-shirts; Turbans; Topcoats; Uniforms; Underwear; Underwear; Pockets for clothing; Valenki [felted boots]; Underwear; Wetsuits for water-skiing; Waistcoats; Hosiery; Top hats.
Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks.
- 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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is between average and high, because the prices of some of the goods are relatively high.
- The signs
Sandra | Mandra |
Earlier trade mark(s) | Contested sign |
The relevant territories are Benelux and France.
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).
Both signs are word marks, which are protected in all different typefaces.
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 and aurally, the signs differ in their first letters, ‘S’ and ‘M’, and coincide in their remaining elements, ‘andra’. However, their first letters are clearly different, which leads to different visual impressions at the beginnings of the signs. This difference also affects the aural perception of the signs in the territories cited above. Furthermore, the letter ‘S’ is a strong fricative, whereas ‘M’ is a nasal; in other words, its pronunciation is more resonant. Despite this marked difference at their beginnings, the signs are visually and aurally similar to an above average degree.
Conceptually, the contested sign has no meaning in the relevant territories. The earlier trade marks will be clearly understood as a female first name. In support of conceptual similarity on the basis that both signs are names, the opponent has argued but not proved that ‘Mandra’ is a common name. Since one sign has a very clear meaning and the other sign does not, the signs are conceptually not similar.
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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.
- Global assessment, other arguments and conclusion
The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).
The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).
The contested goods have been assumed to be identical.
The signs are visually and aurally similar to an above average degree. Conceptually, they are not similar.
Taking into account the relevant differences in the first letters of the signs under comparison, the fact that they are conceptually not similar, the no more than normal degree of distinctiveness of the earlier trade marks and the average degree of attention of the relevant consumers, there is, even for goods assumed to be identical and signs visually and aurally similar to an above average degree, no likelihood of confusion. The existence of a common component does not necessarily lead to the establishment of a likelihood of confusion, especially taking into account, as in the present case, the fact that the signs are conceptually not similar, which does neutralise the visual and aural similarities. Such an approach has been confirmed in case-law, by the General Court (18/05/2011, T-207/08, Kiowa, EU:T:2011:224), and in the previous case-law of the Court of Justice (12/01/2006, C-361/04 P, Picaro, EU:C:2006:25). Furthermore, in the following cases, it was decided that there is no likelihood of confusion if the first letters are different:
- 20/04/2005, T-211/03, Faber, EU:T:2005:135; and
- 23/05/2007, T-342/05, Cor, EU:T:2007:152.
In respect of the cases before the Opposition Division cited by the opponent in its letter of observations of 05/06/2017, Opposition decision of 26/04/2012, B 1 808 719, XANGO/YANGO, is not case-law and, therefore, does not carry any weight. On the other hand, there are no conceptual differences between the signs. In the quoted case of the General Court of 07/03/2017, T-622/14, IWEAR, ECLI:EU:T:2017:143, the first letters are also identical. Therefore, the initial situation is rather different. This is also true in the Board of Appeal case cited, 11/03/2016, R1417/2015-4, REVOLVO/VOLVO et al. First, the earlier trade mark is completely included in the contested sign, which is not the case here. Second, reputation has been proved for ‘vehicles’. Third, there are no conceptual differences between the signs.
Contrary to the opponent’s arguments, the differences between the signs are sufficient to prevent a likelihood of confusion. The public will not think that the signs come from the same undertaking or economically linked undertakings.
Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR. Since there is no likelihood of confusion, there is no reason to wait for the registration of the earlier marks. Contrary to the applicant’s opinion, the opponent, being in the European Union, is not obliged to appoint and have a representative to submit the opposition.
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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Alexandra APOSTOLAKIS | Peter QUAY | Claudia MARTINI |
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.