Sergio Leone | Decision 2692971 - Siemes Schuhcenter GmbH & Co. KG v. F.H. SKIPO Mirosław Kryszkowski
Date Published: Sep 28, 2017
OPPOSITION No B 2 692 971
Siemes Schuhcenter GmbH & Co. KG, Krefelder Str. 310, 41066 Mönchengladbach, Germany (opponent), represented by Leifert & Steffan, Burgplatz 21-22, 40213 Düsseldorf, Germany (professional representative)
a g a i n s t
F.H. Skipo Mirosław Kryszkowski, osoba fizyczna prowadząca działalność gospodarczą, ul. Husarska 29, 02-489 Warszawa, Poland (applicant), represented by Joanna Kluczewska-Strojny, Farysa 29e, 01-971 Warszawa, Poland (professional representative).
On 04/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 692 971 is upheld for all the contested goods, namely:
Class 18: Luggage, bags, wallets and other carriers; umbrellas and parasols; saddlery, whips and animal apparel; leather cloth; straps made of imitation leather; girths of leather.
Class 25: Footwear; clothing; millinery; headgear.
2. European Union trade mark application No 15 024 359 is rejected for all the contested goods. It may proceed for the uncontested services in Class 35.
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 15 024 359, namely against all the goods in Classes 18 and 25. The opposition is based on, inter alia, German trade mark registration No 302 012 030 994. 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 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 German trade mark registration No 302 012 030 994.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 18: Briefcases, document cases, beach bags, pocket wallets, bags for campers, shopping bags, casings of leather for springs, coverings of skins (furs), purses (coin purses), purses not of precious metal, suitcase handles, handbags, hip bags, dog collars, card cases (notecases), sling bags for carrying infants, garment bags for travel, trunks in particular travelling trunks, trunks (luggage), attaché cases, valises, suitcases, vanity cases, not fitted; imitation leather, leather leashes, leatherware, in particular travelling sets, key cases, leather jewellery; umbrellas, toilet bags, travelling bags, rucksacks, bags for climbers, shoe bags, satchels, school bags, bags with wheels, haversacks.
Class 25: Heels, heelpieces for boots and shoes, suits, bath sandals, bath slippers, berets, motorists’ clothing, clothing, frocks, inner soles, pocket squares, mittens, football shoes, belts (clothing), gymnastic shoes, half-boots, cravats, gloves (clothing), slippers, short-sleeved shirts, shirts, slips (undergarments), wooden shoes, trousers, suspenders, hats, jackets (clothing), jerseys (clothing), stuff jackets (clothing), skull caps, hoods (clothing), pockets for clothing, ready-made clothing, headgear for wear, headscarves, neckties, ascots, clothing of leather, coats, pelisses, dressing gowns, muffs (clothing), caps (headwear), outer clothing, ear muffs (clothing), combinations (clothing), parkas, pelerines, furs (clothing), petticoats, pullovers, waterproof clothing, skirts, sandals, saris, scarves, sashes for wear, lace boots, fittings of metal for shoes and boots, shoes, footwear, dress shields, ski boots, underpants, socks, boots for sports, sports shoes, boots, headbands (clothing), esparto shoes or sandals, fur stoles, studs for football boots (shoes), beach clothes, beach shoes, stockings, stockings (sweat-absorbent), tights, sweaters, togas, knitwear (clothing), singlets, tee-shirts, neckerchiefs in particular breast-pocket handkerchiefs; overcoats, pants, underwear, waistcoats, hosiery.
The contested goods are the following:
Class 18: Luggage, bags, wallets and other carriers; umbrellas and parasols; saddlery, whips and animal apparel; leather cloth; straps made of imitation leather; girths of leather.
Class 25: Footwear; clothing; millinery; headgear.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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
The contested umbrellas are also included in the opponent’s list of goods. Therefore, they are identical.
The contested luggage includes, as a broader category, the opponent’s trunks (luggage); the contested bags include, as a broader category, the opponent’s handbags; the contested wallets include, as a broader category, the opponent’s pocket wallets; the contested other carriers include, as a broader category, the opponent’s key cases. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested leather cloth and the opponent’s imitation leather are prepared animal skins (or imitations thereof), used as raw materials. They can have the same nature, purpose, producers, relevant public, distribution channels and methods of use. Furthermore, they can be in competition with each other. Therefore, they are similar to a high degree.
The contested saddlery, whips and animal apparel are different types of equipment intended, inter alia, for horses. The opponent’s leather leashes are long thin pieces of leather or other material tied to an animal, such as a horse, which help to keep it under control. It follows that these goods can have the same nature, producers, relevant public and distribution channels. Therefore, they are similar.
The contested straps made of imitation leather; girths of leather are complementary to the opponent’s goods insofar as the contested goods can form part of, be attached to or be used to secure the closure of or to assist in carrying the opponent’s travelling bags; handbags; rucksacks; trunks. Furthermore, it is likely that the relevant public, producers and distribution channels and sales outlets of these goods will be the same. Therefore, they are similar.
The contested parasols are light umbrellas used as protection from the sun. They have the same nature, purpose and producers and are generally commercialised via the same distribution channels targeting the same relevant public as the opponent’s umbrellas. Therefore, they are similar.
Contested goods in Class 25
First of all, it is to be noted that in its submission of 10/11/2016, the applicant compared its goods in Class 25 with textile towels on which, however, the present opposition is not based. Therefore, the applicant’s findings in this regard have to be considered irrelevant.
The contested footwear; clothing are also included in the opponent’s list of goods. Therefore, they are identical.
The contested headgear and the opponent’s headgear for wear are synonymous. Therefore, they are identical.
The contested millinery is included in the broad category of the opponent’s headgear for wear. Therefore, they are identical.
- 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, except for the contested leather cloth and the opponent’s imitation leather in Class 18, which are principally aimed at professionals.
The degree of attention may vary from average to high, since some of the goods in question, as mentioned in the previous paragraph, are likely to be subject of a more careful purchasing decision, due to the fact that they are raw materials used in the manufacturing of other goods.
- The signs
LEONE | |
Earlier trade mark | Contested sign |
The relevant territory is Germany.
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 earlier mark is a word mark consisting of the word ‘LEONE’. In this regard, it should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof.
The contested sign is a figurative sign composed of the verbal elements ‘Sergio Leone’ in a stylised typeface above which is a figurative element that may, at least for part of the public, resemble a high-heeled shoe. To the top right corner of the verbal element there is a registered trade mark symbol ® which is an informative indication that the sign is purportedly registered and is not part of the sign as such. Consequently, this symbol will not be taken into consideration for the purposes of comparison.
The verbal element of the earlier mark, ‘LEONE’, has no meaning in the relevant territory. Although it refers to the currency in Sierra Leone, as correctly outlined by the applicant, it is unlikely that the relevant public will perceive this concept, as it is not expected that the relevant public in the European Union, including the relevant territory, would be familiar with a currency from outside the European Union.
The verbal elements of the contested sign, ‘Sergio Leone’, are likely to be perceived by the relevant public, due to their combination, as a masculine first name and a surname of foreign, most probably of Italian or Spanish origin (regardless of whether their combination will refer, from the point of view of some part of the public, to an Italian film director, as pointed out by the applicant).
Nevertheless, as none of the verbal elements of the signs is descriptive, allusive or otherwise weak for the relevant goods, they are all distinctive to an average degree.
The figurative element of the contested sign has an average degree of distinctiveness for the part of the public which does not see any particular concept included therein. However, for a part of the public, which will perceive it as a representation of a high-heeled shoe, this element is descriptive for some of the contested goods, namely footwear in Class 25, as it only indicates their type. For the remaining contested goods it is distinctive to an average degree.
In any event, the figurative element and stylisation of the contested sign, described above, have a very limited impact on the consumer’s perception given that, when signs consist of both verbal and figurative components (as does the contested sign in the present case), in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the figurative element and graphic stylisation of the contested sign have only a limited impact on the consumer’s perception.
In terms of dominance, neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the verbal element ‘Leone’/’LEONE’ which, in fact, means that the earlier mark is completely included in the contested sign where it plays an independent and distinctive role.
The signs differ in the word ‘Sergio’ of the contested sign. Though the contested sign is also differentiated by its stylisation and the figurative element this difference loses much of its weight, as explained in detail above.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‛LE-O-NE’ and it differs in the syllables ‘SER-GI-O’ of the contested sign, which have no counterparts in the earlier mark.
The fact that the number of syllables is different, as pointed out by the applicant, is not sufficient to conclude that there is no phonetic similarity (17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 48).
Consequently, the signs are aurally similar to an average degree.
Conceptually, reference is made to the meanings of the signs and their particular elements given above.
The relevant public is likely to only perceive the concept(s) in the contested sign, as explained above (i.e. the concept of a full male name of foreign origin who can be an Italian film director, and the concept of a high-heeled shoe, at least for a part of the public), while the earlier mark has no meaning in the relevant territory. Since one of the signs, the earlier mark, 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.
- 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 relevant goods 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 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).
As concluded above, the goods are identical or similar to different degrees and they target the public at large and professionals with a degree of attention which varies from average to high. The earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.
The signs in dispute are visually and aurally similar to an average degree and conceptually not similar, as explained in detail above in section c) of this decision. The differences between the signs are not sufficient to counteract their similarities, since some of them have a limited impact on the perception of the signs, namely the graphic stylisation and the figurative element of the contested sign that is, furthermore, descriptive for some of the contested goods, as outlined above. The additional elements in the contested sign are not sufficient to safely exclude likelihood of confusion in the present case, for the reasons stated below.
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 covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable image.
In the present case, although the public in the relevant territory might detect certain visual and aural differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark configured in a different way depending on the type of goods that it designates. It is, therefore, conceivable that the relevant public, even with a high degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.
Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including likelihood of association) on the part of the relevant public, and therefore the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 012 030 994.
It follows from the above that the contested sign must be rejected for all the contested goods.
As earlier German trade mark registration No 302 012 030 994 leads to the success of the opposition and to the rejection of the contested sign for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Alexandra APOSTOLAKIS | Martin MITURA | Vít MAHELKA |
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.