PETER ANDRE | Decision 2707084
Date Published: Sep 25, 2017
OPPOSITION No B 2 707 084
CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (opponent).
a g a i n s t
Peter Andre, c/o Clintons 55 Drury Lane, London WC2B 5RZ, United Kingdom (applicant), represented by Clintons, 55 Drury Lane Covent Garden, London WC2B 5RZ, United Kingdom (professional representative).
On 20/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 707 084 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 095 029, namely against all the goods in Classes 16, 18 and 25. The opposition is based on Benelux trade mark registration No 984 021. 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 16: Printed publications; books; music sheets; music scores; periodical magazines; printed matter; photographs; stationery.
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 contested goods are the following:
Class 16: Posters; prints; albums; cards; photographs; printed matter and printed publications; books, song books, magazines, leaflets, brochures, journals and event programmes; flyers; greeting cards; post cards; stationery; pens; stickers; sheet music; photo albums and collectors' albums.
Class 18: Leather and imitations of leather; animal skins; hides; articles of luggage; attache cases; backpacks; baby carriers; briefcases; handbags; sports bags; gym bags; leather bags; beach bags; bags for clothing; casual bags; clutch bags; cosmetic bags; credit card holders; holdalls; hip bags; pouches; rucksacks; satchels; school bags; shoulder bags; shopping bags; shoe bags; sling bags; suitcases; toiletry bags; tote bags; trunks and travelling bags; belts; key cases; billfolds; card cases; purses; wallets; beauty cases; luggage tags; umbrellas; parasols and walking sticks; whips; harness and saddlery; document cases, card holders; parts and fittings for all the aforesaid goods.
Class 25: Clothing; footwear; headgear.
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 16
Photographs; printed matter and printed publications; books, magazines; stationery; sheet music are identically contained in both lists of goods (including synonyms).
The contested posters; prints; cards; leaflets, brochures, journals and event programmes; flyers; greeting cards; post cards; are included in the broad category of the opponent’s printed matter. Therefore, they are identical.
The contested song books are included in the broad category of the opponent’s books. Therefore, they are identical.
The contested pens; stickers are included in the broad category of the opponent’s stationery. Therefore, they are identical.
The contested albums; photo albums and collectors' albums are similar to the opponent’s stationery. The relevant goods serve the same purpose and distribution channels. They also target the same public.
Contested goods in Class 18
Leather; handbags; suitcases; trunks; purses; wallets; umbrellas; parasols and walking sticks; whips; harness and saddlery are identically contained in both lists of goods.
The contested articles of luggage include, as a broader category, the opponent’s suitcases. 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 contested leather bags; casual bags overlap with the opponent’s handbags. Therefore, they are identical.
The contested clutch bags are a special type of handbag and are therefore included in the broad category of the opponent’s handbags. Therefore, they are identical.
The opponent´s wallets and purses are pocket-sized flat folding cases or pouches for holding money and plastic cards. The contested credit card holders; billfolds; card cases; card holders are similar to a high degree to the opponent´s wallets and purses. These goods have the same nature, are addressed at the same end consumers and are distributed through the same channels. Moreover, they could be in competition goods.
The contested imitations of leather; animal skins; hides are different types of skins. They are similar to the opponent’s leather, since they have very similar natures and can be used for the same purposes. Furthermore, to expand their range of products, providers tend to extend their production to different types of materials, which can include imitation materials and other type of skins. Therefore, they are in competition and can have the same providers. Furthermore, the final consumers can also be the same.
The contested attache cases; briefcases; backpacks; sports bags; gym bags; beach bags; holdalls; hip bags; pouches; rucksacks; satchels; school bags; shoulder bags; shopping bags; sling bags; tote bags; belts (this good is a special type of belt to carry bags); key cases; document cases serve the same purpose as the opponent’s handbags namely to carry items. They can coincide in producer, distribution channel and end user. Therefore they are considered to be at least similar.
The contested cosmetic bags; shoe bags; toiletry bags; travelling bags; beauty cases; bags for clothing are smaller bags or cases that are used when travelling. As such they serve the same purpose as the opponent’s travelling cases namely to carry items for travelling. They can coincide in producer, distribution channel and end user. Therefore they are considered to be similar.
The contested baby carriers serve the same purpose as the opponent’s handbags namely to carry something. However, considering the specific purpose of the contested goods they do not share the same producer although they do share the same end user and method of use. Therefore they are considered to be similar to a low degree.
The contested parts and fittings for all the aforesaid goods (leather and imitations of leather; animal skins; hides; articles of luggage; attache cases; backpacks; baby carriers; briefcases; handbags; sports bags; gym bags; leather bags; beach bags; bags for clothing; casual bags; clutch bags; cosmetic bags; credit card holders; holdalls; hip bags; pouches; rucksacks; satchels; school bags; shoulder bags; shopping bags; shoe bags; sling bags; suitcases; toiletry bags; tote bags; trunks and travelling bags; belts; key cases; billfolds; card cases; purses; wallets; beauty cases; luggage tags; umbrellas; parasols and walking sticks; whips; harness and saddlery; document cases, card holders) are similar at least to a low degree to the opponent’s goods compared above. The Opposition Division cannot dissect the parts and fittings in question; therefore, they necessarily include some parts and fittings that are produced and sold by the same undertaking that manufactures the final product and are available to the same general purchasing public. Furthermore, they may be complementary.
The contested luggage tags are parts of, for example, the opponent’s trunks and travelling cases. These types of goods are similar to a low degree to the opponent’s trunks and travelling cases. They coincide in producer and end user. They can also have the same distribution channels.
Contested goods in Class 25
Clothing; footwear; headgear are identically contained in both lists of goods.
- 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 various degrees are directed at the public at large and business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high depending on the product and the relevant public. Goods like leather are mostly directed to business customers whose attention is higher than the general public. Whereas goods like printed matters, handbags, clothing are considered to be goods that are frequently purchased and directed to the general public and therefore the degree of attention is considered to be average.
- The signs
Peter | PETER ANDRE |
Earlier trade mark | Contested sign |
The relevant territory is the Benelux countries.
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 signs are both word marks, consisting of the word ‘PETER’, which is the whole earlier mark and the words ‘PETER ANDRE’ in the contested sign. As it was stated in the opponents’ observations, in word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are written in upper or lower case letters or in a combination thereof.
The word element ‘PETER’ present in both marks is a well-known male given name throughout the relevant territory; therefore it will be perceived as such by the relevant public. Consequently, the contested sign ‘PETER ANDRE’ will be perceived as a first name and a last name.
Regarding the distinctive elements of the marks, it should be noted that, unlike the view of the opponent, family names have in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who do not have anything in common, whereas the presence of the same surname could imply the existence of some link between them (identity of the persons or a family link). Therefore, consumers tend to pay more attention to family names than to first names.
Visually and aurally, the signs are similar to the extent that they coincide in their first word ‘PETER’, which is a common name widely used in the relevant territory. Irrespective of the different pronunciation rules in different parts of the relevant territory, the signs also coincide in the corresponding sounds of the above letters. On the other hand, they differ in the second verbal element ‘ANDRE’ of the contested sign, which as stated above is more distinctive.
Therefore, the signs are visually and aurally similar to a low degree.
Conceptually, reference is made by the previous assertions regarding the word ‘PETER’, which is the common element of the signs and the less distinctive in the contested sign. Consequently, the public is not likely to make a conceptual link between the two signs, because whereas the earlier right refers to any person named Peter, which because of its popularity can be many, the element ‘ANDRE’ in the contested sign provides a narrower determination of a person, therefore, there is no reason to assume a link between both signs.
Therefore, the signs are conceptually similar to a low degree.
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 of art. 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, 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 signs were found similar to a low degree from a visual, aural and conceptual aspect. Contrary to the arguments of the opponent, the fact that the signs have in common the first name ‘PETER’, and that this term is located at the beginning of the contested sign, is not sufficient for the relevant public to be confused with regard to the origin of the goods. Admittedly, the beginning of a sign may be more likely to catch the consumer’s attention than the elements that follow. However, that is only a general rule and does not apply in this case (14/10/2003, T-292/01, ‘Bass’, § 50; 06/07/2004, T-117/02, ‘Chufafit’, § 48). This is because, as previously stated, not only is the coinciding element the less distinctive element in the contested sign, but the additional element ‘ANDRE’, recognised as a surname, has a higher intrinsic distinctive character and provides a sufficient differentiation from the earlier right, as correctly stated by the applicant. As a direct consequence, consumers will not focus their attention on the first name, but rather on the surname, designating a specific ‘PETER’ from the family ‘ANDRE’, as opposed to any other man named ‘PETER’. This difference is of a particular importance since it puts conceptual distance between the signs and will therefore help consumers to differentiate between the signs.
The opponent refers to previous decisions of the Office to support its arguments. 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).
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.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.
Considering all the above, there is no likelihood of confusion on the part of the public even considering that the goods are partly identical and that the degree of attention is not higher than average. Therefore, the opposition must be rejected.
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
Boyana NAYDENOVA | Benjamin Erik WINSNER | Frédérique SULPICE |
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.