MATT CROSSBOW | Decision 2713033 - Springhill Textile AB v. Fashionline

Date Published: Sep 28, 2017

OPPOSITION No B 2 713 033

Springhill Textile AB, Box 22300, 25025 Helsingborg, Sweden (opponent), represented by Bengt Nihlmark AB, Kungsvägen 29, 18279 Stocksund, Sweden (professional representative)

a g a i n s t

Matteo Balestra and Fashionline Via Tiziano 23, 59100 Prato, Italy (applicants).

On 26/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 713 033 is upheld for all the contested goods, namely:

Class 25:         Clothing.

2.        European Union trade mark application No 15 186 646 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicants bear the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 186 646, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 4 432 118. 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.

1. The goods

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

Class 25: Hosiery, underwear and night garments.

The contested goods are the following:

Class 25: Clothing.

The contested clothing includes, as a broader category the opponent’s underwear. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 degree of attention is average.

3. The signs

CROSSBOW
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 common element ‘CROSSBOW’ and the word ‘MATT’ of the contested sign are meaningful in certain territories, for example, in those countries where English is understood, such as the United Kingdom, Ireland and Malta. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark, ‘CROSSBOW’, which will be perceived by the relevant public as a weapon consisting of a small, powerful bow that is fixed across a piece of wood, and aimed like a gun (https://www.collinsdictionary.com/dictionary/english/crossbow). As it is not descriptive, allusive or otherwise weak for the relevant goods (i.e. clothing), the only element of the mark is distinctive.

The contested sign is a figurative mark including the words ‘MATT’ and ‘CROSSBOW’ in slightly stylised black upper-case letters. Said verbal elements will be understood respectively as a first name and as the weapon mentioned above. Not having any connection to the relevant goods, these components of the mark have a normal degree of distinctiveness.

The mark also contains a figurative device representing a crossbow, which has no connection to the relevant goods and is, thus, distinctive. The public will, most likely, perceive it as the representation of the verbal element ‘CROSSBOW’, thus the element does not play an independent role in the overall impression given by the mark.

Moreover, 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 rather than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, the graphic device mentioned above has a lesser impact on the present comparison.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘CROSSBOW’ which constitutes the only element of the earlier mark and the second part of the contested sign. However, they differ in the additional element ‘MATT’ of the contested sign and in the additional figurative element of the contested sign, the latter being likely to play a secondary role for the reasons explained above. In view of the above and especially of the fact that the earlier mark is entirely included in the contested sign, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘CROSSBOW’, present identically in both signs. The pronunciation differs in the sound of the letters ‛MATT’ of the contested sign, which has no counterpart in the earlier mark. Given that the earlier mark is entirely included in the contested sign, the signs are aurally highly similar.

Conceptually, the signs differ in the word ‘MATT’ of the contested sign, which will be perceived as a first name. However, they are conceptually similar to the extent that they have in common the word ‘CROSSBOW’, the concept of which in the contested sign is reinforced by the ancillary graphic device representing a crossbow.

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 mark has been extensively used and enjoys reputation and 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’).

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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital 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).

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).

The goods covered by the trade marks in dispute are identical and they target the public at large, whose degree of attention is considered to be average. The earlier mark enjoys a normal degree of distinctive character in connection with the relevant goods.

The signs are visually similar to an average degree and aurally similar to a high degree, as well as conceptually similar to the extent that the second element of the contested sign fully reproduces the earlier mark and despite the visual difference in an ancillary element (i.e. the depiction of a crossbow), the latter, however, reinforces the common conceptual meaning of  the signs. Admittedly, the contested sign also includes the distinctive word ‘MATT’. Nonetheless, also bearing in mind the principle of imperfect recollection, this differing element of the contested mark is not deemed sufficient to outweigh the commonalities observed and to give a different overall impression to the relevant consumers.

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. Indeed, despite the difference in the element ‘MATT’, the coincidence in the word ‘CROSSBOW’ makes it 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).

The applicants, in their observations of 18/12/2016 put forward the following arguments:

• the contested sign consists of the combination of a name and surname and the Office has already rejected oppositions regarding marks consisting of surnames against marks including a name and the same surname;

• the applicant and the opponent produce different kinds of goods (respectively street wear and underwear), commercialized at different prices and in different countries of the European Union (respectively Italy and Spain, versus Scandinavia).

Regarding the first argument, it has to be noted that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division were to some extent factually similar to the present case, quod non, the outcome may not be the same. In any case, being the relevant decision not specified, it is not possible for the Opposition Division to acknowledge the reasoning of the Office regarding the mentioned cases.

Concerning the argument on the difference of products, territorial extent of the relevant market and targeted consumer, the Opposition Division observes that likelihood of confusion means a probability of confusion on the part of the relevant consumer and does not require actual confusion. As expressly confirmed by Case-law, it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’ (24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 69). As a consequence, the present assessment is based only on the relevant Law (mainly the EUTMR) and the General Court and Court of Justice Case-law, while the (in any case not proven) facts put forward by the applicant cannot be taken into consideration. Hence, this claim must be set aside too.

Under these circumstances, the applicants’ arguments are dismissed.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division may be to some extent factually similar to the present case, quod non, the outcome may not be the same. In any case, the relevant decisions not having been specified, it is not possible for the Opposition Division to acknowledge the reasoning of the Office regarding the mentioned cases.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the English-speaking part of the relevant 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.

It follows that the contested sign must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 applicants are the losing party, they 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

Andrea VALISA

Orsola LAMBERTI

María Clara IBÁÑEZ FIORILLO

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.