R | Decision 2599606
Date Published: Oct 1, 2017
OPPOSITION No B 2 599 606
Regatta Ltd Risol House, Mercury Way Dumplington, Urmston, Manchester M41 7RR
United Kingdom (opponent), represented by Wilson Gunn, 5th Floor Blackfriars House The Parsonage, Manchester M3 2JA, United Kingdom (professional representative)
a g a i n s t
Roland SE, Deichmannweg 9, 45359 Essen, Germany (holder), represented by Klaka, Delpstr. 4, 81679 Munich, Germany (professional representative).
On 25/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 599 606 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 of international registration designating the European Union No 1 245 438, namely against some of the goods and services in Classes 18, 26 and 35 and all the goods in Class 25. The opposition is based on European Union trade mark registration No 11 862 042. The opponent invoked Article 8(1)(b) EUTMR. The grounds of 8(5) and 8(4) EUTMR were also invoked initially; however they were subsequently withdrawn by the opponent.
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 and services
The goods and services on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear; articles of clothing, footwear and headgear for use in sporting and outdoor pursuits; gloves [clothing]; mittens; scarves; gaiters, namely, neck gaiters, leg gaiters and ankle gaiters; socks; leggings [leg warmers]; leggings [trousers]; tights; underclothing; sweat-absorbent underclothing [underwear]; underwear; thermal underwear; vests; sleepwear; jackets [clothing]; jacket hoods; jerseys [clothing]; sports jerseys; jumpers; pullovers; body warmers; gilets; fleeces; knitwear; shirts; short-sleeve shirts; sweaters; t-shirts; polo-shirts; tank-tops; leisurewear; tracksuits; skirts; trousers; pants; shorts; skorts; dresses; swimwear; outerwear, namely, shells, rain jackets, rain pants; waterproof clothing; waterproof jackets; overtrousers; coats; overcoats; raincoats; anoraks; parkas; ponchos; windcheaters; ski wear namely, ski suits, ski vests, ski jackets, ski bibs, bib overalls, bib pants, ski pants, ski hats, ski gloves; snowboard wear namely, snowboard jackets, snowboard trousers, snow suits; clothing for cyclists namely, cycle jerseys, cycle t-shirts, cycle jackets, cycle shorts, cycle bibs, cycle trousers, cycle leggings [trousers], waterproof clothing for cyclists, windproof clothing for cyclists, cycle gloves, cycle mitts; belts [clothing]; money belts (not of precious metal); leisure footwear; shoes; sandals; flip flops; athletic shoes; sneakers; trail shoes; boots; snow boots; ski and snowboard boots and shoes and parts thereof; cycle shoes; lace boots; galoshes; hiking shoes and boots; climbing shoes and boots; wellingtons; inner soles; hats; caps [headwear]; headbands [clothing]; earbands; bandanas; ear muffs [clothing]; balaclavas; mufflers; beanies; knitted caps.
Class 35: Retail services connected with the sale of clothing, footwear, headgear.
The contested goods and services are the following:
Class 18: Goods made of leather and leather imitations, namely folding briefcases, briefcases, holdalls, work bags, belt bags and hip bags, bags for campers, document cases, travel luggage, unfitted vanity cases, travelling sets, straps for handbags, saddlebags, beauty cases, shoulder bags, beach bags, bags; hand bags; beach bags; shopping bags; sports and leisure bags not adapted to their content; rucksacks; trunks and suitcases; travelling bags; beauty cases; school bags; satchels; purses; wallets; key cases of leather or leather imitations.
Class 25: Clothing; footwear; headgear; socks; stockings; hosiery; belts for clothing; insoles.
Class 26: Shoe laces; shoe eyelets.
Class 35: Retail services relating to clothing, footwear, headgear, luggage, bags, wallets and other carriers of leather, bags, online retail services and mail order retail services, included in this class, relating to clothing, footwear, headgear, luggage, bags, wallets and other carriers of leather, bags, the bringing together and displaying of clothing, footwear, headgear, luggage, bags, wallets and other carriers of leather, bags, enabling customers to conveniently view and purchase such goods.
Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 presumed to be identical are directed at the public at large. The degree of attention is considered average.
- The signs
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).
Both signs are figurative marks. The earlier mark depicts a device consisting of a curved line ending in a straight line, above another straight line. It cannot be excluded, as the opponent argues, that this device will be seen by part of the relevant public as a letter ‘R’ rotated 90° to the left, although it must be noted that consumers do not routinely think in such abstractions when confronted with simple figurative elements.
The Opposition Division will, nevertheless, first examine the opposition in relation to the part of the public which perceives the letter ‘R’ in the earlier sign.
Visually, the letter ‘R’ in the earlier sign is rotated 90° to the left; even assuming that it is perceived as a letter, its unusual rotated position would still set it visually apart from the contested sign. Moreover, the earlier sign has a different light grey colour compared to the contested sign’s dark grey. The edges of the earlier sign are rounded, its top circular half is narrower than its shaft, and the latter is completely straight. The contested sign, however, has sharp edges, a top and bottom half of rather proportionate width and a curving shaft.
Consequently, it is concluded that the signs are visually similar to a very low degree.
Aurally and conceptually the signs are identical given that both consist of the same single letter.
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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim and later withdrew the ground of 8(5).
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 and services 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
In cases of conflicting signs containing the same single letter, the visual comparison is normally of decisive importance, these signs usually being phonetically and conceptually identical.
Moreover, 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, the considerable visual differences in the letters’ representation are particularly relevant when assessing the likelihood of confusion.
The letter ‘R’ is depicted in a very different manner in the two signs. In the case of the earlier sign, its unusual rotated position will be remembered by the relevant public as an effective distinguishing feature. Moreover, the signs show further differences in their typeface and colour; as a result, the overall designs of the two ‘R’ letters have very little in common.
Even in the case of presumed identity of the goods and services, the fact that the signs consist of the same letter, however in different representations, would not be sufficient to establish a likelihood of confusion.
This finding will increasingly hold true in relation to the part of the relevant public which does not perceive the earlier sign as a rotated ‘R’ letter, as for them neither aural nor conceptual identity exist.
The opponent refers to previous decision No R 53/2016-2 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. 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).
In the present proceedings, moreover, the previous case referred to by the opponent is not relevant since the colour scheme of the signs and their design were much closer.
Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. 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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Cynthia DEN DEKKER | Marianna KONDAS | Julie GOUTARD |
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.