MUGAMERA | Decision 2741844
Date Published: Sep 24, 2017
OPPOSITION No B 2 741 844
Gianluca Franzoni, Via Abruzzo, 6/1, 40050 Monte San Pietro (BO), Italy (opponent), represented by Gianpaolo Todisco, Via Savona 19/A, 2144 Milano, Italy (professional representative)
a g a i n s t
CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (applicant).
On 29/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 741 844 is partially upheld, namely for the following contested goods:
Class 18: Trunks and suitcases; travelling cases; handbags; purses; wallets.
Class 25: Clothing; footwear; headgear; swimwear; sportswear; leisurewear.
2. European Union trade mark application No 15 351 349 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 some of the goods of European Union trade mark application No 15 351 349 for the word mark ‘MUGAMERA’, namely against all the goods in Classes 18 and 25. The opposition is based on, inter alia, European Union trade mark registration No 14 357 883 for the figurative mark . The opponent invoked Article 8(1)(a) and (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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 14 357 883.
- The goods
The goods on which the opposition is based are the following:
Class 18: Luggage, bags, wallets and other carriers.
Class 25: Clothing; footwear; headgear; hats.
The contested goods are the following:
Class 18: Leather; trunks and suitcases; travelling cases; handbags; purses; wallets; umbrellas; parasols; walking sticks; whips; harness; saddlery.
Class 25: Clothing; footwear; headgear; swimwear; sportswear; leisurewear.
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 18
Wallets are identically contained in both lists of goods.
The contested trunks and suitcases; travelling cases; handbags; purses are included in the broad category of the opponent’s other carriers. Therefore, they are identical.
The contested leather refers to the skin of various kinds of animals. These are raw materials. The fact that one product is used for manufacturing another (for example, leather for the opponent’s wallet in Class 18 or for the opponent’s footwear in Class 25) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. These goods are dissimilar to the opponent’s goods in Classes 18 and 25. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature, serve a different purpose and do not coincide in their methods of use.
The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; the contested parasols are light umbrellas carried for protection from the sun; the contested walking sticks are canes or other staffs used as aids for walking; the contested whips are instruments used for driving animals; the contested harness is the gear or tackle with which a draft animal pulls a vehicle or implement; and the contested saddlery is equipment for horses, such as saddles and harnesses. The nature of these goods is very different from that of the opponent’s goods in Classes 18 and 25. They serve very different purposes. 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 25
Clothing; footwear; headgear are identically contained in both lists of goods.
The contested swimwear; sportswear; leisurewear are included in the broad category of the opponent’s clothing. Therefore, they are identical.
- 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 considered to be average.
- The signs
MUGAMERA | |
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 word ‘MUGAMERA’ of both signs has no meaning for the relevant public and is, therefore, distinctive.
The figurative elements of the earlier mark will be associated with a stylised print of floral and vegetal ornamentation and/or other ornamental element without any clear meaning. Although they have a nature clearly decorative, their graphic composition is original and must be considered distinctive to a normal degree.
These elements occupy an important part of the sign, are eye-catching and therefore dominate the sign. However, the word ‘MUGAMERA’ of the earlier mark is also clearly visible.
Visually, the signs coincide in the word ‘MUGAMERA’. They differ in the distinctive and dominant figurative elements of the earlier mark. Nevertheless, 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 above average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables /MU−GA−ME−RA/, present identically in both signs.
Therefore, the signs are aurally identical.
Conceptually, although the public in the relevant territory will perceive the meanings of some figurative elements of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- 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 (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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
The goods are partly identical and partly dissimilar. The relevant goods are directed at the public at large whose degree of attention is average. The signs are visually similar to an above average degree and aurally identical. Conceptually, the signs are not similar. The distinctiveness of the earlier mark must be seen as normal.
Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50).
Therefore, although the earlier mark contains some elements not present in the contested sign, the above average degree of visual similarity together with the aural identity are particularly relevant when assessing the likelihood of confusion between them.
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). Therefore, the identity between some of the goods increases the risk of confusion.
Finally, 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, it is highly conceivable that the relevant consumer will perceive the contested mark as 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 public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 357 883.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services 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 opponent has also based its opposition on the earlier European Union trade mark registration No 14 334 891 for the word mark ‘MUGAMERA’. Since this mark covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.
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
Steve HAUSER | Benoit VLEMINCQ | Begoña URIARTE VALIENTE |
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.