S SHOECOLOGY | Decision 2785650
Date Published: Sep 24, 2017
OPPOSITION No B 2 785 650
Shoe Zone Retail Limited, Haramead Business Centre, Humberstone Road, Leicester, LE1 2LH Leicestershire, United Kingdom (opponent), represented by Howes Percival LLP, 3 The Osiers Business Centre, Leicester, LE19 1DX Leicestershire, United Kingdom (professional representative)
a g a i n s t
Biologicshoes, S.L., Pg Planarresano, 12, Nave 1, 26580 Arnedo, Spain (applicant), represented by David Saenz Gil De Gomez, c/ Leon Gentico, 11, 2º IZ, 26580 Arnedo, Spain (professional representative).
On 22/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 785 650 is upheld for all the contested goods.
2. European Union trade mark application No 15 613 391 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 613 391 (figurative mark: ), namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 6 270 326 (word mark: SHOEOLOGY). 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 25: Footwear.
The contested goods are the following:
Class 25: Footwear.
Contested goods in Class 25
Footwear is 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 are directed at the public at large.
The degree of attention is average.
- The signs
SHOEOLOGY |
|
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 first coinciding part of the verbal elements ‘SHOECOLOGY’ and ‘SHOEOLOGY’, namely ‘SHOE’ is not meaningful in certain territories, for example, in those countries where English is not understood (such as Spain). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking public, such as the public in Spain.
The element ‘SHOECOLOGY’ of the contested sign has no meaning for the relevant public and is, therefore, normally distinctive.
The figurative element of the contested sign consists of the letter ‘S’ in a hexagonal frame. The frame is a simple shape and as a relatively common addition to trade marks it is weak. The letter ‘S’ might be perceived as a reference to the first letter of the verbal element ‘SHOECOLOGY’. As a whole, however, it has no meaning for the relevant public in relation to the relevant goods and is, therefore, normally distinctive.
The figurative element on top of the letter ‘S’ depicting two leaves is of a purely decorative character, in addition, compared to the other elements it is almost negligible. Therefore, it only has a very limited distinctiveness, if any.
The contested mark has no element that could be considered clearly more dominant than other elements.
As regards the earlier word mark, its only element ‘SHOEOLOGY’ has no meaning for the relevant public and is, therefore, normally distinctive.
The Opposition Division takes note of the opponent’s arguments as to the meaning of the signs. However, since the first part, namely ‘SHOE’ is not meaningful for the relevant public, it will not associate either signs as a whole with any meaning.
Visually, the signs coincide in the letter sequences ‘SHOE’ and ‘OLOGY’. However, they differ in stylization, in the additional figurative element depicting the letter ‘S’ and the additional consonant ‘C’ of the contested mark. These visual differences are however minor compared to the existing similarities. This is because, firstly, the nine letters forming the only element of the earlier mark are contained in a near-identical order in the contested mark’s verbal element and the additional letter ’C’ does not have a substantial impact on the overall visual impression. Secondly, the stylisation of the contested mark’s verbal element does not substantially differ from standard font; and the decorative element on top of its first letter is of small visual significance due to its size. Lastly, the figurative element ‘S’, as a possible reference to the contested sign’s verbal element, puts the emphasis on said verbal element.
Therefore, the signs are similar to a higher than average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SHOE-OLOGY’, present identically in both signs. The pronunciation differs in the sound of the first ‘S’ letter and the letter ‛C’ of the contested mark, which have no counterparts in the earlier sign.
Therefore, the signs are highly similar.
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.
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
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.
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).
In the present case, the goods are identical, and the signs are visually similar to a higher than average degree and aurally highly similar.
The opponent made a reference to the case law of the General Court stating that ‘where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark’. (14/07/2005, T-312/03 Wassen International Ltd v OHIM, EU:T:2005:289, § 37).
On the other hand it is also true that the goods in the present case, namely footwear are bought normally on sight and the visual similarity is not as high as the aural. However, although the signs differ in the additional figurative element depicting a letter ‘S’, this element does not result in a considerable visual difference. This is because said element directs consumers’ attention to the verbal element, so that most likely it will be perceived by consumers as only a reference thereto. Moreover, despite the further small differences in stylisation and figurative elements, the signs are visually similar to a higher than average degree.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). As the difference between the verbal elements, namely the letter ‘C’, might not be recalled by the relevant public, this difference and the presence of other additional but mostly decorative elements directing the attention to the verbal element are not sufficient to avoid likelihood of confusion. This is even more so, considering that the relevant goods are identical.
Indeed, it is highly conceivable that the relevant consumer 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).
On 09/06/2017, the Office informed the parties that the applicant’s observations of 05/05/2017 could not be taken into account because they had been filed in Spanish and no translations into the language of the proceedings, namely, English, had been filed within one month from the date of the submission of the original document (Rule 96(1) EUTMIR).
For the above reasons, the applicant’s abovementioned observations cannot be taken into account in the proceedings.
Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 270 326. It follows that the contested trade mark must be rejected for all the contested goods.
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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Denitza SOYANOVA-VALCHANOVA | Martin EBERL | Sigrid DICKMANNS |
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.