scarper | Decision 2742156 - Jose Tora Pujalte v. Nigel Chapman
Date Published: Sep 28, 2017
OPPOSITION No B 2 742 156
Jose Tora Pujalte, Elche Parque Industrial C/ Germán Bernacer, nº 79, 1, 03203 Elche (Alicante), Spain (opponent), represented by Clara Eugenia Martin Alvarez, Vicente Blasco Ibañez, 43, entlo. drcha., 03201 Elche (Alicante), Spain (professional representative)
a g a i n s t
Nigel Chapman, Half Acre, Barrack Lane, Truro, Cornwall TR1 2DW, United Kingdom (applicant).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 742 156 is upheld for all the contested goods, namely:
Class 25: Clothing.
2. European Union trade mark application No 15 409 337 is rejected for all the contested goods. It may proceed for the remaining services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 409 337, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 5 218 888. 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: Clothing, footwear, headgear.
The contested goods are the following:
Class 25: Clothing.
Contested goods in Class 25
Clothing 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 considered average.
- The signs
SCARPE CORP. | scarper |
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 earlier mark contains the words ‘SCARPE’ and ‘CORP.’. The element ‘CORP.’ will be understood as an abbreviation of ‘corporation’ in English-speaking territories. Since this kind of reference to the type of company is commonly used in trade and cannot indicate the commercial origin of the relevant goods, it is not distinctive. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the European Union, to take into consideration the impact of the meaning of the element ‘CORP.’ on this part of the public.
The earlier mark’s element ‘SCARPE’ has no meaning for the relevant public and is distinctive. The contested sign, ‘scarper’, means ‘to run away’ in informal English. As this concept is fanciful for the goods at issue, the contested sign’s sole element is distinctive.
Conceptually, the element of the earlier mark that conveys the meaning, ‘CORP.’, is non-distinctive and does not have any weight in the comparison of the signs. Since the contested sign will be associated with a semantic content that is distinctive for the goods, whereas the earlier mark’s only distinctive element lacks any meaning, the signs are not conceptually similar.
Visually, the signs coincide in their first six letters, ‘s-c-a-r-p-e’. They differ in that the contested sign ends with the letter ‘r’ whereas the earlier mark also contains the second verbal element, ‘CORP.’, which, however, is not distinctive. 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. Therefore, the signs are visually highly similar.
Aurally, as the letter ‘E’ in the word ‘SCARPE’ of the earlier mark is silent, the pronunciation of the signs coincides in the sound of the first five letters, ‘s-c-a-r-p’, present identically in both signs. The pronunciation differs in the last letters, ‘e-r’, of the contested sign, and in the additional word, ‘C-O-R-P’, of the earlier sign, which, however, is not distinctive. Taking everything into account, the signs are aurally highly similar.
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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.
- 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 signs are visually and aurally highly similar and conceptually not similar. The distinctiveness of the earlier mark is normal.
Since the visual and aural differences between the signs are only confined to the non-distinctive element ‘CORP.’ and the additional letter ‘r’ at the end of the contested sign, they are clearly not sufficient to rule out the likelihood of confusion. The lack of conceptual similarity between the signs is incapable of altering this finding, taking into consideration the interdependence principle and the fact that the goods at issue are identical.
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. Moreover, 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).
Considering all the above, there is a likelihood of confusion on the part of the English-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 5 218 888. 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
Solveiga BIEZA | Milda CERNIAUSKAITE | Vita VORONECKAITE |
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.