OXXO | Decision 2417932 - OXXO Design AB v. A VE A TEKSTIL SANAYI VE PAZARLAMA LIMITED SIRKETI

Date Published: Oct 10, 2017

OPPOSITION No B 2 417 932

OXXO Design AB, c/o Sweden Fashion House, Göteborgsvägen 89, 43230 Mölndal, Sweden (opponent), represented by Magnusson Advokatbyrå AB, Stora Nygatan 29, 404 30 Gothenburg, Sweden (professional representative)

a g a i n s t

A Ve A Tekstil Sanayi Ve Pazarlama Limited Sirketi, Yenibosna Merkez Mahallesi, 29 Ekim Caddesi Nº 33, Bahçelievler-Istanbul, Turkey (applicant), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 417 932 is partially upheld, namely for the following contested goods and services:

Class 18:        Leather and imitation leather, animal skins; animal hides, artificial leathers, stout leathers; goods made of leather, imitation leather or synthetic materials, namely, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel; make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty, tool bags sold empty; book bags; carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes; umbrellas, sun umbrellas, namely, parasols and canes; whips, harnesses and saddlery, stirrups, horse bridles.

Class 35:        The bringing together, for the benefit of others, of leather and imitations of leather, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel, make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty, tool bags sold empty, book bags, carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

2.        European Union trade mark application No 12 866 364 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 866 364, namely against all the goods and services in Classes 18 and 35. The opposition is based on, inter alia, European Union trade mark registration No 11 721 909. 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 11 721 909.

1. The goods and services

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

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments; Precious stones; Agates; Amulets [jewellery, jewelry (Am.)]; Anchors [clock and watch making]; Bracelets [jewellery, jewelry (Am.)]; Wristwatches; Boxes of precious metal; Atomic clocks; Paste jewellery; Watch cases; Brooches [jewellery, jewelry (Am.)]; Busts of precious metal; Cloisonné jewellery [jewelry (Am.)]; Diamonds; Clocks and watches, electric; Ivory [jewellery, jewelry (Am.)]; Barrels [clock and watch making]; Cases for clock- and watchmaking; Gold thread [jewellery, jewelry (Am.)]; Necklaces [jewellery, jewelry (Am.)]; Semi-precious stones; Hat ornaments of precious metal; Master clocks; Iridium; Jewelry; Chains [jewellery, jewelry (Am.)]; Clock cases; Watch chains; Clocks; Works of art of precious metal; Copper tokens; Chronographs [watches]; Chronometers; Chronometrical instruments; Chronoscopes; Olivine [gems]; Alloys of precious metal; Cuff links; Badges of precious metal; Medals; Lockets [jewellery, jewelry (Am.)]; Coins; Pins [jewellery, jewelry (Am.)]; Charms [jewellery, jewelry (Am.)]; Key rings [trinkets or fobs]; Jet, unwrought or semi-wrought; Precious metals, unwrought or semi-wrought; Gold, unwrought or beaten; Silver, unwrought or beaten; Earrings; Osmium; Palladium; Pearls made of ambroid [pressed amber]; Beads for making jewelry; Pearls [jewellery, jewelry (Am.)]; Pendulums [clock and watch making]; Platinum [metal]; Cases for watches [presentation]; Ornaments of jet; Ornaments [jewellery, jewelry (Am.)]; Ornamental pins; Rings [jewellery, jewelry (Am.)]; Rhodium; Ruthenium; Silver thread; Shoe ornaments of precious metal; Tie clips; Tie pins; Jewelry of yellow amber; Jewelry cases [caskets]; Sundials; Spinel [precious stones]; Spun silver [silver wire]; Statues of precious metal; Statuettes of precious metal; Ingots of precious metals; Stopwatches; Watches; Watch bands; Watch springs; Watch glasses; Dials [clock and watch making]; Clockworks; Clock hands [clock and watch making]; Alarm clocks; Movements for clocks and watches; Wire of precious metal [jewellery, jewelry (Am.)].

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery; Alpenstocks; Boxes of leather or leather board; Boxes of vulcanised fibre; Attaché cases; Bandoliers; Backpacks; Pouch baby carriers; Sling bags for carrying infants; Vanity cases, not fitted; Curried skins; Bits for animals [harness]; Horse collars; Cattle skins; Bridoons; Pelts; Pads for horse saddles; Pocket wallets; Casings, of leather, for springs; Nose bags [feed bags]; Kid; Halters; Goldbeaters’ skin; Parts of rubber for stirrups; Chin straps, of leather; Collars for animals; Handbags; Handbag frames; Horse blankets; Horseshoes; Hat boxes of leather; Wheeled shopping bags; Game bags [hunting accessories]; Valises; Knee-pads for horses; Trunks [luggage]; Leatherboard; Walking cane handles; Leather, unworked or semi-worked; Imitation leather; Leather leads; Leather leads; Pouches, of leather, for packaging; Leather straps; Leather twist; Cases, of leather or leatherboard; Furniture coverings of leather; Moleskin [imitation of leather]; Muzzles; Music cases; Net bags for shopping; Chain mesh purses; Key cases; Covers for horse-saddles; Coverings of skins [furs]; Fur; Umbrella or parasol ribs; Umbrellas; Umbrella covers; Umbrella handles; Umbrella sticks; Umbrella rings; Parasols; Whips; Briefcases; Purses; Haversacks; Slings for carrying infants; Straps for skates; Straps of leather [saddlery]; Straps for soldiers’ equipment; Cat o’ nine tails; Garment bags for travel; Travelling sets [leatherware]; Travelling trunks; Suitcase handles; Travelling bags; Travelling bags; Riding saddles; Girths of leather; Saddlery; Fastenings for saddles; Saddle trees; Chamois leather, other than for cleaning purposes; Traces [harness]; Harness for animals; Harness fittings; Harness straps; Shopping bags; Walking stick seats; Gut for making sausages; School bags; Leather trimmings for furniture; Blinders [harness]; Canes; Bags for sports; Stirrups; Stirrup leathers; Frames for umbrellas or parasols; Beach bags; Clothing for pets; Butts [parts of hides]; Reins; Bridles [harness]; Bags; Bags for climbers; Bags for campers; Valves of leather; Tool bags of leather, empty; Card cases [notecases].

The contested goods and services are the following:

Class 18:        Leather and imitation leather, animal skins; animal hides, artificial leathers, stout leathers; goods made of leather, imitation leather or synthetic materials, namely, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel; make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty, tool bags sold empty; book bags; carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes; umbrellas, sun umbrellas, namely, parasols and canes; whips, harnesses and saddlery, stirrups, horse bridles.

Class 35:        The bringing together, for the benefit of others, of leather and imitations of leather, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel, make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty, tool bags sold empty, book bags, carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, clothing, footwear, headgear (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.

Contested goods in Class 18

Leather and imitation leather, animal skins, animal hides, valises, briefcases, backpacks, whips, harnesses, saddlery, stirrups are identically contained in both lists of goods.

The contested horse bridles are included in the broad category of the opponent’s bridles [harness]. Therefore, they are identical.

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

The specification of applicant’s umbrellas, sun umbrellas, namely, parasols and canes would require interpretation to determine the exact scope of protection as, in the Opposition Division’s view, it is not clear whether the clarification following ‘namely’ refers both to umbrellas and sun umbrellas and whether both terms following ‘namely’ are intended to restrict the list of the applicant’s goods. However, irrespective of the possible interpretations, since the earlier mark covers umbrellas (covering, as a broad category, sun umbrellas), parasols and canes, these contested goods are identically covered by the earlier mark.

The contested artificial leathers overlap with the opponent’s imitation leather. Therefore, they are identical.

The contested carrying cases for documents overlap with the opponent’s attaché cases. Therefore, they are identical.

The contested make-up cases sold empty, vanity cases sold empty overlap with the opponent’s vanity cases, not fitted. Therefore, they are identical.

The contested stout leathers fall within the broader category of the opponent’s leather. Therefore, they are identical.

The contested travel bags, handbags, toiletry bags sold empty, tool bags sold empty, book bags, school bags, leather shopping bags fall within the broader category of the opponent’s bags. Therefore, they are identical.

The contested leather and stout leather boxes for storing greeting cards, leather hat boxes for travel fall within the broader category of the opponent’s boxes of leather or leather board. Therefore, they are identical.

The contested backpacks for carrying babies fall within the broader category of the opponent’s backpacks. Therefore, they are identical.

The contested leather cases for banknotes fall within the broader category of the opponent’s cases, of leather or leatherboard. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

As seen above in the comparison of the goods in Class 18, the majority of goods that are the subject of the contested services in Class 35 are identical to the opponent’s goods in Class 18, with the exception of trunks and travelling bags, walking sticks (these were not compared above but are identically contained in the opponent’s list of goods in Class 18) and clothing, footwear and headgear.

Therefore, there is a low degree of similarity between the contested bringing together, for the benefit of others, of leather and imitations of leather, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel, make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty, tool bags sold empty, book bags, carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes and the respective opponent’s goods in Class 18.

However, the bringing together, for the benefit of others, of clothing, footwear, headgear (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are dissimilar to all the opponent’s goods in Classes 14 and 18. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case.

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 and services found to be identical or similar are directed at both the public at large and professionals, since some of the goods in Class 18 (e.g. raw materials of leather, imitation leather, animal skins) are for professional use and require specific professional knowledge or expertise.

The degree of attention varies between average and higher than average, since consumers tend to be more attentive when selecting specialised goods that are important for safety, such as harnesses and saddlery.

3. The signs

OXXO design
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 element ‘design’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the public of the United Kingdom.

The earlier mark is a word mark consisting of the verbal elements ‘oxxo’ and ‘design’. The contested sign is a figurative mark containing the verbal element ‘OXXO’ represented in red.

The element ‘oxxo’, present in both signs, has no meaning for the relevant public and is, therefore, distinctive. The element ‘design’ will be associated with ‘a decorative pattern’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/design). Therefore, this element may be seen as indicating that the relevant goods are of a specific design and is, therefore, weak.

Consequently, the earlier sign is composed of the distinctive verbal element ‘oxxo’ and the less distinctive verbal element ‘design’.

Visually, the signs coincide in the distinctive element ‘oxxo’. However, they differ in that the earlier mark also contains the word ‘design’ and the contested sign is depicted in red. The public reads from left to right, which means that the initial part of the earlier sign is the part that first catches the attention of the reader. As a result, and because the element ‘design’ is weak, the signs are visually similar to a higher than average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛oxxo’, present identically in both signs. The pronunciation differs in that, in the earlier sign, the word ‘design’ would also be pronounced; however, this differing component is weak. As a result, the signs are aurally similar to a higher than average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of a part 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.

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.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

The contested goods are identical to the opponent’s goods. The contested services are partly similar to a low degree and partly dissimilar to the opponent’s goods. The goods and services target the public at large and professionals. The degree of attention will vary between average and higher than average.

The signs are visually and aurally similar to a higher than average degree, as they share the distinctive element ‘oxxo’. The differences resulting from the weak element ‘design’ in the earlier mark and the colouring of the contested sign are not sufficient to safely rule out likelihood of confusion. Indeed, it is highly conceivable that the relevant consumer (even professionals, displaying a heightened attention) 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking 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 11 721 909. 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 from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark: European Union trade mark registration No 11 724 978 for the figurative mark. Since this mark covers the same goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

For the sake of completeness, it must be mentioned that the opposition fails insofar as it is 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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Keeva DOHERTY

Milda CERNIAUSKAITE

Denitza STOYANOVA-VALCHANOVA

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.