NITAGUT | Decision 2670027 - BONNETERIE CEVENOLE v. Wei Zhang
Date Published: Sep 28, 2017
OPPOSITION No B 2 670 027
Bonneterie Cevenole, 1001, avenue de la République, 07503 Guilherand Granges, France (opponent), represented by Cabinet Sabatier, 83, avenue Foch, 75116 Paris, France (professional representative)
a g a i n s t
Wei Zhang, 1403, Duty Free Business Building, No. 6 Fuhua First Road, Futian District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 670 027 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 of European Union trade mark application No 14 864 706. The opposition is based on French trade mark registration No 1 659 163. 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 18: Leather and imitation leather, articles made thereof, suitcases, umbrellas.
Class 25: Clothing.
The contested goods are the following:
Class 14: Alloys of precious metal; Bracelets [jewellery, jewelry (Am.)]; Brooches [jewellery, jewelry (Am.)]; Clocks; Cuff links; Earrings; Jewelry; Ornaments [jewellery, jewelry (Am.)]; Key rings [trinkets or fobs]; Wristwatches; Necklaces [jewellery, jewelry (Am.)]; Clothing ornaments of precious metals; Rings [jewellery, jewelry (Am.)]; Tie clips; Tie pins; Watch cases; Watches.
Class 18: School bags; Travelling trunks; Rucksacks; Attaché cases; Handbags; Travelling bags; Valises; Trunks [luggage]; Haversacks; Suitcases; Bags for sports; bags; Canvas bags; Mountaineering sticks; Garment bags for travel; Cases, of leather or leatherboard; Briefcases; Vanity cases, not fitted.
Class 25: Sweaters; Shirts; Short-sleeve shirts; Outerclothing; Knitwear [clothing]; Skirts; Dresses; Overcoats; Parkas; Clothing of leather; Clothing of imitations of leather; Corselets; Beach clothes; Dust coats; Bathing suits; Masquerade costumes; Caps [headwear]; Gloves [clothing]; Scarfs; Girdles.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 opponent refers to previous decisions of the Office to support its arguments as regards the comparison of goods. However, 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).
Contested goods in Class 14
The contested watch cases are protective or decorative containers to transport or present watches of various types. They can be made of various materials, such as wood, metal or leather and imitations of leather. These contested goods can be of similar nature and purpose to the opponent’s articles made thereof [leather and imitation leather] in Class 18. Consequently, they are similar to the opponent’s goods.
The contested alloys of precious metal; bracelets [jewellery, jewelry (am.)]; brooches [jewellery, jewelry (am.)]; clocks; cuff links; earrings; jewelry; ornaments [jewellery, jewelry (am.)]; key rings [trinkets or fobs]; wristwatches; necklaces [jewellery, jewelry (am.)]; clothing ornaments of precious metals; rings [jewellery, jewelry (am.)]; tie clips; tie pins; watches are items of precious metal, objects worn for personal adornment and timepieces. These goods are considered dissimilar to the opponent’s goods, which are leather and imitation of leather (raw materials) and goods made thereof, items used for the transport of personal belongings and devices used for protection from the weather (Class 18), and articles used for covering and protecting parts of the human body and for fashion (Class 25). Their nature and main purpose are different. They do not have the same distribution channels and are neither in competition, nor complementary. Even though some fashion designers nowadays also sell fashion accessories (such as jewellery) and travel accessories under their marks, as has also been pointed out by the opponent, this is not the rule; it tends to apply only to (commercially) successful designers.
The opponent argues that the contested goods in Class 14 are similar to the opponent’s leather and imitation leather, articles made thereof in Class 18 to the extent that these contested goods can be made of leather and imitation leather. However, the mere fact that leather and imitation leather are used for the manufacture of, for instance, key rings is not sufficient in itself to conclude that the goods are similar, as their natures, purposes and relevant publics are quite distinct: raw materials are intended for use in industry rather than for direct purchase by the final consumer. Therefore, the opponent’s argument must be set aside.
Contested goods in Class 18
Suitcases are identically contained in both lists of goods.
The contested attaché cases; cases, of leather or leatherboard; briefcases are included in the broad category of, or overlap with, the opponent’s articles made thereof [leather and imitation leather]. Therefore, they are identical.
The contested travelling trunks; travelling bags; valises; trunks [luggage]; garment bags for travel; vanity cases, not fitted are all used for travelling. They can target the same public, be offered in the same stores and have the same distribution channels as the opponent’s suitcases. Therefore, they are similar to a high degree.
The contested school bags; rucksacks; handbags; haversacks; bags for sports; bags; canvas bags are similar to the opponent’s suitcases, as they have the same purpose of carrying things. They can also target the same end users and have the same distribution channels.
The contested mountaineering sticks are dissimilar to the opponent’s goods, which are leather and imitation of leather (raw materials) and goods made thereof, items used for the transport of personal belongings and devices used for protection from the weather (Class 18), and articles used for covering and protecting parts of the human body and for fashion (Class 25). Contrary to the opponent’s argument, their natures and main purposes are different. They do not have the same distribution channels and are neither in competition, nor complementary.
Contested goods in Class 25
The contested sweaters; shirts; short-sleeve shirts; outerclothing; knitwear [clothing]; skirts; dresses; overcoats; parkas; clothing of leather; clothing of imitations of leather; corselets; beach clothes; dust coats; bathing suits; masquerade costumes; gloves [clothing]; scarfs; girdles are included in the broad category of the opponent’s clothing. Therefore, they are identical.
Headgear and clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, the contested caps [headwear] are similar to the opponent’s clothing.
- 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 or similar to varying degrees are directed at the public at large. The degree of attention is considered average.
- The signs
MONTAGUT | |
Earlier trade mark | Contested sign |
The relevant territory is 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).
The earlier mark, ‘MONTAGUT’, has no meaning for the relevant public and is, therefore, distinctive.
The verbal element ‘NITAGUT’ of the contested sign is meaningless for the relevant public and is, therefore, also distinctive. As regards the figurative elements of the sign, while the black rectangular background has a purely decorative nature, the three parallel horizontal lines placed on each side of the verbal element are considered distinctive.
The opponent claims that the black rectangular background and the parallel horizontal lines should be considered negligible, since they are not distinctive elements. The Office considers that a negligible element refers to an element that, due to its size and/or position, is not noticeable at first sight or is part of a complex sign with numerous other elements (e.g. beverage labels, packaging, etc.) and, therefore, very likely to be disregarded by the relevant public. In the present case, the figurative elements, as described above, are clearly noticeable and the contested sign cannot be considered a complex mark with numerous elements. Therefore, the opponent’s claim must be set aside.
Contrary to the opponent’s opinion, the contested sign has no elements that could be considered clearly more dominant 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 string of letters ‘*TAGUT’, in the final part of each of the signs. However, they differ in their beginnings, namely the three letters ‘MON’ of the earlier mark and the two letters ‘NI’ of the contested sign. The signs further differ in the figurative elements, as described above, and the slight stylisation of the verbal element in the contested sign.
The opponent argues that the signs also coincide in the letter ‘N’, although placed in different positions, and that the first letters of the conflicting signs, ‘M’ and ‘N’, are very similar in shape. Although these assertions are factually true, the Opposition Division considers that the beginnings of the signs are clearly different from a visual perspective, taking into account all the letters involved. In this regard, any visual similarity that could be found between the letters ‘M’ and ‘N’ is weakened by the additional letters in the signs, especially the dissimilar vowels ‘O’ in the earlier mark and ‘I’ in the contested sign.
The opponent also argues that the signs are almost the same length (eight letters in the earlier mark and seven letters in the contested sign). The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121). In the present case, although the conflicting signs are almost the same length, as explained above, the visual impressions created by the letters at their beginnings, namely ‘MON’ versus ‘NI’, are clearly different.
Therefore, bearing in mind all the abovementioned aspects, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in their last two syllables ‛TA-GUT’, present identically in both signs. The pronunciation differs in their first syllables, ‘MON’ in the earlier mark and ‘NI’ in the contested sign.
The opponent refers to a previous decision of the Office dated 05/07/2016, in opposition proceedings No B 2 544 420, involving the earlier mark ‘VALDOURO’ and the trade mark application ‘AZDOURO’, in which the signs were found to be visually and aurally similar to an average degree. However, 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).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
The previous case referred to by the opponent is not relevant to the present proceedings, since the comparison of signs in that case included an important aspect, which is that their differing first syllables, ‘VAL’ and ‘AZ’, have the same vowel, thus leading to the signs having the same rhythm and intonation. Consequently, the previous decision is not comparable to the present case.
Therefore, the signs are aurally similar to a low 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.
- 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 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’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.
- Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
The goods are partly identical, partly similar to varying degrees and partly dissimilar. The relevant public has an average degree of attention.
The signs are visually and aurally similar to a low degree, since they coincide in their final string of letters, ‘*TAGUT’, whereas they clearly differ in their beginnings, ‘MON’ versus ‘NI’, which will not go unnoticed by the relevant public, and in the figurative elements of the contested sign. Furthermore, a conceptual comparison between the signs is not possible.
The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. 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).
In the present case, notwithstanding the identity and similarity found in respect of some of the contested goods, the Opposition Division finds that the differences between the signs, as pointed out above, prevail over the enhanced degree of distinctiveness of the earlier mark and are sufficient to exclude any likelihood of confusion on the part of the public, including the risk that consumers might believe that the goods came from the same undertaking or from economically linked undertakings.
Generally in clothes and leather shops customers can themselves either choose the items 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 or leather 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, the visual differences between the signs caused by their different beginnings and also by the additional figurative elements of the contested sign are particularly relevant when assessing the likelihood of confusion between them.
Considering all the above, even considering that part of the goods are identical or similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.
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 | Marta GARCÍA COLLADO | Richard BIANCHI |
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.