SONILOVE | Decision 2787425

Date Published: Sep 22, 2017

OPPOSITION No B 2 787 425

Sony Corporation, 1-7-1 Konan, Minato-ku, Tokyo 108-0075, Japan (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Shenzhen asos E-Commerce Ltd., 807,8/F New World Business Center, Yi Tian Road West Fu Zhong North, Futian District, Shenzhen, People’s Republic of China (applicant), represented by Isabelle Bertaux, 2 rue Saint Florentin, 75001 Paris, France (professional representative).

On 06/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 787 425 is upheld for all the contested goods.

2.        European Union trade mark application No 15 492 598 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 15 492 598, for the figurative mark . The opposition is based on international trade mark registration No 1 194 843, for the figurative mark . The opponent invoked Articles 8(1)(b) and 8(5) 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.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 8: Hand-operated hand tools and implements (hand-operated); side arms, other than firearms; razors; abrading instruments (hand instruments); adzes (tools); hand-operated agricultural tools; annular screw plates; skinning apparatus and instruments for butchers’ animals; apparatus and instruments for slaughtering butchers’ animals; apparatus for tattooing; earth augers (hand tools); awls; axes; bayonets; beard clippers; bill-hooks; bits (hand tools); bits (parts of hand tools); blade sharpening instruments; bladed or pointed hand tools, other than swords; blades (hand tools); blades (weapons); blades for planes; truncheons; border shears; borers; saw bows; braiders (hand tools); branding irons; breast drills; budding knives; pickhammers; can openers, non-electric; carpenters’ inkwells and their accessories; cattle shearers; cattle stunning appliances; caulking irons; center punches (hand tools); non-electric cheese slicers; chisels; choppers (knives); clamps for carpenters or coopers; cleavers; crimping irons; crow bars; curling tongs; cuticle tweezers; cutlery; cutter bars; cutting devices; cutting bars; cutting tools (hand tools); daggers; electric or non-electric depilation apparatus; plant parasite killing apparatus; dies (hand tools); diggers (hand tools); digging forks (spading forks); ditchers (hand tools); diving knife holders; diving knives; drawing knives; tailors’ chalk sharpeners; drill holders (hand tools); gimlets; ear-piercing apparatus; earth rammers (hand tools); edge tools (hand tools); non-electric egg slicers; electric clippers for cutting human hair; embossers (hand tools); emery cuticle pushers; emery grinding wheels; engraving needles; expanders (hand tools); extension pieces for braces for screw taps; eyelash curlers; farriers’ knives; files (tools); cuticle pushers, electric or non-electric; fire irons; shovels for transporting coal from living wood; fire tongs; fireplace bellows (hand instruments); fish tapes (hand tools); flat irons; mincing knives (hand tools); forks; instruments for transporting cast iron (hand tools); frames for handsaws; fruit pickers (hand tools); fullers (hand tools); fulling tools (hand tools); hand-operated garden tools; gimlets (hand tools); glazier’s diamonds (parts of hand tools); polishing irons; goffering irons; gouges (hand tools); grafting tools (hand tools); chisels (hand tools); grindstones (hand tools); guns (tools); guns, hand-operated, for the extrusion of mastics; hackles (hand tools); hainault scythes; clippers for cutting animal hair (hand instruments); electric and non-electric clippers for cutting human hair, for personal use; hair-removing tweezers; hammers (tools); hand drills; hand implements for hair curling; hand pumps; hand tools, hand-operated; harpoons for fishing; harpoons; hatchets; hoes (hand tools); holing axes; hollowing bits (parts of tools); hoop cutters (tools); hunting knives; ice picks; implements for decanting liquids (hand tools); insecticide atomizers (tools); instruments and tools for skinning animals; instruments for punching tickets; irons (non-electric hand tools); jig-saws; knives; punch rings [knuckle dusters]; ladles (tools); ladles for wine; lasts for shoes (shoemakers’ tools); lawn clippers (hand instruments); lawn rakes (hand-held rakes only); leather strops; levers; lifting jacks, hand-operated; livestock marking tools; machetes; mallets (hand instruments); manicure sets, electric; manicure sets; marline spikes; masons hammers; mattocks; stretchers for wire and metal bands (hand tools); milling cutters (tools); miter boxes (tools); molding irons; money scoops; mortars for pounding; mortise chisels; nail clippers, electric or non-electric; crowbars (tools); nail extractors; nail files, electric nail files; nail nippers; nail punches; needle files; needle-threaders; tongs; non-electric planes for crumbling dried bonitos; numbering punches; nutcrackers; oyster openers; palette knives; paring irons (hand tools); paring knives; pedicure sets; penknives; perforating tools; pestles; pickaxes; picks (tools); pin punches; pizza cutters, non-electric; plane irons; planes; clamps; priming irons (hand tools); pruning knives; secateurs; pruning shears (tools); punch pliers (tools); punches (tools); rabbeting planes; rakes (tools); rams (hand tools); rasps (tools); ratchets (hand tools); razor blades; razor cases; razor strops; razors, electric or non-electric; reamer sockets; reamers; riveting hammers (tools); riveting hammers (tools); sabers; sand trap rakes; saw blades (parts of tools); saw holders; saws (tools); pruning knives, namely knives for cutting branches and bushes; scissors; scrapers (tools), scraping tools (hand instruments); screwdrivers; scythe rings; scythes; sharpening instruments; sharpening steels; sharpening stones; shaving cases; scissor blades; shearers (hand instruments); shears; shovels (tools); sickles; handguns, other than firearms; silver plate (knives, forks and spoons); sledgehammers; spades (hand tools); wrenches (tools); spatulas (tools); spoons; squares (tools); stamps (hand tools); stone hammers; stropping instruments; sugar tongs; sword scabbards; swords; syringes for spraying insecticides; tableware (knives, forks and spoons); table forks; tap wrenches; carriage keys; thistle extirpators (tools); tool belts [holders]; tree pruners; trowels (gardening); trowels; pipe cutters (tools); tube cutting instruments; tweezers; whetstone holders; scythe stone; wick trimmers (scissors); stripping pliers (hand tools); electric flat irons for household use; electric hair crimpers for household use.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, supplying water, ventilation, and for sanitary use; accumulators; air conditioning apparatus; air filtering installations; lights for automobiles; bath fittings; bath tubs; electric blankets, not for medical use; brackets for gas burners; burners; electrically heated carpets; ceiling lights; electronic coffeemakers; cooking apparatus and installations; cycle lights; deodorizing apparatus not for personal use; desiccating apparatus; disinfectant apparatus; distillation apparatus; hair driers; air driers; electric lamps; fans; filaments for electric lamps; filters for air conditioning; filters for drinking water; chimneys; flares; flashlights (torches); foot muffs, electrically heated; gas boilers; gas burners; gas lamps; heat accumulators; heaters for baths; hot plates; electric kettles; kitchen ranges (ovens); lamps; lighting apparatus for vehicles; lighting apparatus for air vehicles; microwave ovens; flashlights for lighting; electric pressure cookers (autoclaves); electric radiators; refrigerators; roasters; sanitary apparatus and installations; sockets for electric lamps; cookers; stoves; washbasins; machines and apparatus for water purification, water supply installations; automatic control plumbing fittings of metal, excluding machine elements; aviaries of metal (structures); ball valves of metal, excluding machine elements; metal valves, excluding parts of machines; food cooling devices, containing heat exchange fluids, for household purposes; smoke absorbers for household purposes.

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paintbrushes); brush-making materials; brooms of synthetic fibers or natural animal fibers; glass, non-machined or semi-machined (except glass used in building); glassware, porcelain and tableware, not included in other classes; abrasive pads for the kitchen; abrasive sponges for scraping the skin; aerosol dispensers, not for medical purposes; animal hair brushes (equipment for brushes); apparatus for polishing, non-electric; aquarium hoods; baby baths, portable; basins (bowls); basins (receptacles); baskets for domestic use; sprinkling spoons, for culinary use; whiskers, not electrically powered; beer tankards; bird baths; birdcages; mixers, non-electric, for household use; boot jacks; drinking flasks for travelers; bottle openers; bottles; boxes of glass; metal boxes for dispensing paper towels; bread baskets, domestic; bread boards; brooms; brush goods; brushes for cleaning tanks and containers; brush for shoes; brushes; buckets made of woven fabrics; buckets; chamois leathers for cleaning; busts of china terra-cotta or glass; butter dishes; button hooks; cabaret (trays); cages for domestic animals; cake molds; candle extinguishers; candelabra (candlesticks); candlesticks; candy boxes; demijohns; beaters (hand instruments); carpet sweepers; cauldrons; ceramics for household purposes; chamber pots; cheese cutlery; porcelain ornaments; chopsticks; ash sieves (household utensils); cleaning instruments, hand-operated; tow; lids for pans; cloths for washing floors; laundry driers; clothes pegs; clothing stretchers; rags cloth for cleaning; coasters, not of paper and other than tablecloths; cocktail stirrers; coffee filters, non-electric; coffee grinders, hand-operated; percolators, non-electric; coffee services (tableware); coffeepots, non-electric; comb cases; combs for animals; combs; confectioners’ decorating bags; containers for household or kitchen use; cookery molds (molds); cookie cutters; cookie jars; cooking pot sets; skewers, of metal; cooking utensils, not electric; corkscrews; cosmetic utensils; cotton waste for cleaning; dish covers; covers, not of paper, for flower pots; condiment set; cruets; crumb trays; crystal (glassware); cups of paper or plastic; cups; currycombs; cutting boards for the kitchen; wine decanters; deep-fryers, non-electric; dental floss for children; dental floss holder; cotton dental floss; deodorising apparatus for personal use; soap holders; dishes; dishwashing brushes; disposable table plates; glasses; drinking horns; straws; drinking trough; drinking vessels; drying apparatus; dusting apparatus, non-electric; dusting cloths (rags); earthenware pans; egg cups; electric brushes, except parts of machines; electric combs; electric devices for attracting and killing insects; electric toothbrushes; electric toothbrushes and brush heads for children; electric toothbrushes and their parts and accessories; enameled glass; centerpiece; eyebrow brushes; feather dusters; feeding troughs; fiberglass, not for insulation or textile use; fiberglass thread, not for textile use; figurines (statuettes), of porcelain, ceramic, earthenware or glass; equipped picnic baskets, including crockery; hip flasks; holders for straightening irons; floss for dental use; flower boxes; fly catchers (fly traps or catchers); fruit cups; citrus presses, non-electric, for household purposes; frying pans; funnels; furniture dusters; fused silica (semi-finished product), other than the one used for construction; trash cans; gardening gloves; garlic press (kitchen utensils); glasses (receptacles); glass bowls; ampules (receptacles); glass caps; glass covers and lids for industrial packaging containers; glass flasks (containers); glass for vehicle windows (semi-finished product); glass incorporating fine electrical conductors; glass jars; glass stoppers for industrial packaging containers; glass wool other than for insulation; glass, not processed or semi-processed glass, except for building glass; glove stretchers; gloves for household use; glue-pots; goblets; graters (household utensils); grills and grill supports (kitchen utensils); hair for brushes; thermally insulated containers for beverages; heaters for feeding bottles; thermally insulated containers; holders for flowers and plants (flower arrangement); horse brushes; hot plates, not electrically heated; ice pails [coolers]; ice cube molds (molds); indoor aquariums; mini-indoor greenhouses (plant growing); indoor terrariums (vivariums); insect traps; insulating flasks; ironing board covers, shaped; ironing boards; isothermal bags; decanters; kettles, not electrically powered; kitchen vessels; kitchen mixers, non-electric; kitchen utensils; knife rests for the table; lamp glass brushes; wide-toothed haircombs; lazy Susans; liqueur sets; litter trays for animals; lunch boxes; majolica; make-up removing appliances; mangers for animals; manual mixers (cocktail shakers); material for brush making; menu holders; mess-tins; hand-operated grinder for household use; mixing spoons (kitchen utensils); molds (kitchen utensils); floor mop wringers; floor mops; mosaics of glass, not for construction; nail brush; napkin holders; napkin rings; nest eggs, artificial; isothermic boxes, non-electric; spaghetti pots, hand-operated; nozzles for perforated garden hose; nozzles for watering cans; opal glass; opaline glass; cleaning pads; painted glassware; paper plates; pasta cutters; pepper mills, hand-operated; pepper pots; perfume burners; perfume diffusers; pie servers; pig bristles; piggy banks; ice glasses (raw material); overflow prevention plates for milk; pipe cleaners (for unblocking pipes); polishing machines and apparatus, non-electric, for household use; gloves for polishing; polishing leathers; polishing materials for shining paper and stone, except preparations; porcelain service; non-electric cooking utensils; pan lids; stew-pans; pottery; poultry rings; powder compacts; powder puffs; powdered glass for decoration; pressure cookers (autoclaves), non-electric; rails and rings for towels; refrigerating bottles; rings for birds; rolling pins, domestic; salad bowls; salt cellars; saucepan scourers of metal; saucers; spoons (tableware); scrubbing brushes; services (plates); shaving brush stands; shaving brushes; shoe horns; stretchers (shapes); Chinese strainers (household utensils); sieves (household utensils); signboards of porcelain or glass; siphons for carbonated water; smoke absorbers for household purposes; soap boxes; soap dispensers; soup bowls; spatulas (kitchen utensils); spice sets; sponge holders; sponges for household purposes; spouts; syringes for watering flowers and plants; sprinklers; devices for watering; statues of porcelain, earthenware, ceramic or glass; strainers for household purposes; strainers; sugar bowls; table plates; tableware other than knives, forks and spoons; beer mugs; tar brushes, with long handles; tea caddies; tea cosies; tea infusers; tea services (tableware); tea strainers; teapots; thermally insulated containers for food; tie presses; closet brushes; toiletry sets; toilet paper holders; toilet tissue holder; toilet sponge; toilet utensils; tooth brushes, electric; toothbrushes; toothpick holders; toothpicks; trays for domestic purposes, of paper; trays for domestic use; table mats (utensils); trouser press; urns; utensils for household use; vases; vegetable dishes; containers, of metal, for making ices and iced drinks; vitreous silica fibers, not for textile use; waffle maker, non-electric; washing boards; tub; waste paper baskets; water apparatus for cleaning teeth and gums; watering cans; non-electric wax-polishing appliances for footwear; non-electric whisks for household use; precious objects of porcelain, earthenware, not of metal; steel wool; steel wool for cleaning; mouse traps; rattraps; water apparatus for cleaning teeth and gums; bread boxes; window-boxes.

The contested goods are the following:

Class 8: Garden tools, hand-operated; manicure sets; crimping irons; hair curling (hand implements for); curling tongs; tattooing (apparatus for); table cutlery [knives, forks and spoons]; hair clippers for animals [hand instruments]; pruning knives; pruning scissors.

Class 11: Burners (incandescent); light emitting diodes led lighting apparatus; aquarium lights; automobile lights; bread toasters; kitchen ranges [ovens]; griddles [cooking appliances]; bath installations; steam facial apparatus [saunas]; hot water bottles; fans [air conditioning]; microwave ovens [cooking apparatus]; kettles, electric; hot plates; hoods (extractor) for kitchens.

Class 21: Toothbrushes; toothbrushes, electric; cosmetic utensils; rails and rings for towels; sprinkling devices; roses for watering cans; refuse bins; toilet utensils; skin (abrasive sponges for scrubbing the); griddles [cooking utensils]; tableware, other than knives, forks and spoons; stands (flat-iron); birdcages; brooms; toilet paper dispensers.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 8

Garden tools, hand-operated; manicure sets; crimping irons; hair curling (hand implements for); curling tongs; tattooing (apparatus for); table cutlery [knives, forks and spoons]; hair clippers for animals [hand instruments]; pruning knives are identically contained in both lists of goods (including synonyms).

The contested pruning scissors are included in the broad category of the opponent’s scissors. Therefore, they are identical.

Contested goods in Class 11

Automobile lights; kitchen ranges [ovens]; kettles, electric; hot plates; microwave ovens [cooking apparatus] are identically contained in both lists of goods (including synonyms).

The contested burners (incandescent) are included in the broad category of the opponent’s burners. Therefore, they are identical.

The contested light emitting diodes led lighting apparatus; aquarium lights are included in the broad category of the opponent’s apparatus for lighting. Therefore, they are identical.

The contested bread toasters; griddles [cooking appliances] are included in the broad category of, or overlap with, the opponent’s cooking apparatus and installations. Therefore, they are identical.

The contested steam facial apparatus [saunas] are included in the broad category of, or overlap with, the opponent’s apparatus for steam generating. Therefore, they are identical.

The contested hot water bottles are included in the broad category of, or overlap with, the opponent’s apparatus for supplying water. Therefore, they are identical.

The contested fans [air conditioning] are included in the broad category of the opponent’s air conditioning apparatus. Therefore, they are identical.

The contested bath installations include, as a broader category, or overlap with, the opponent’s bath fittings; bath tubs; heaters for baths. 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 hoods (extractor) for kitchens are included in the broad category of, or overlap with, the opponent’s apparatus for ventilation. Therefore, they are identical.

Contested goods in Class 21

Toothbrushes; toothbrushes, electric; cosmetic utensils; rails and rings for towels; sprinkling devices; toilet utensils; skin (abrasive sponges for scrubbing the); tableware, other than knives, forks and spoons; birdcages; brooms are identically contained in both lists of goods (including synonyms).

The contested roses for watering cans overlap with the opponent’s devices for watering. Therefore, they are identical.

The contested refuse bins are included in the broad category of, or overlap with, the opponent’s household or kitchen containers. Therefore, they are identical.

The contested griddles [cooking utensils] are included in the broad category of, or overlap with, the opponent’s kitchen utensils. Therefore, they are identical.

The contested stands (flat-iron) are included in the broad category of, or overlap with, the opponent’s holders for straightening irons. Therefore, they are identical.

The contested toilet paper dispensers overlap with the opponent’s toilet paper holders. Therefore, they are identical.

2. 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 and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. 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 marks are figurative, the earlier mark containing the verbal element ‘SONY’, written in bold slightly stylised upper case letters, and the contested mark containing the verbal elements ‘SONI’, written in black lower case letters and having a small leaf depicted instead of the dot on the letter ‘I’, and ‘LOVE’, depicted in grey lower case letters.

As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know, namely ‘SONI’ and ‘LOVE’ (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). This will happen in particular because the verbal element ‘SONI’ is written in black letters, whereas the verbal element ‘LOVE’ is written in grey letters.

The verbal elements ‘SONY’ of the earlier word mark and ‘SONI’ of the contested mark have no meanings for the relevant public and are, therefore, distinctive.

The element ‘LOVE’, contained in the contested mark, is a basic English word and will be perceived as ‘an intense emotion of affection, warmth, fondness, and regard towards a person or thing’ (information extracted from Collins English Dictionary online on 05/09/2017 at https://www.collinsdictionary.com/dictionary/english/love). This word is frequently used in advertising and in the media in general. Bearing in mind the relevant goods, the distinctiveness of this element is reduced, because it will be perceived more as an allusion to the positive aspects or attractiveness of the goods than as a badge of commercial origin. Consequently, this element is weak for all the relevant goods (21/02/2011, R 886/2010-2, BABYLOVE/BABYWAVE CREATIVE (FIGURATIVE); 02/06/2010, R 145/2010-1, LOVE).

The figurative element of a leaf replacing the dot on the letter ‘i’ of the contested sign is less important, as it is banal.

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 (‘SON’) the one that first catches the attention of the reader.

Visually, the signs coincide in the letters ‘SON’ at the beginning of their verbal elements. However, they differ in their next letters, ‘Y’/‘I’, and the less distinctive verbal element ‘LOVE’ and the figurative element depicting a leaf in the contested mark. The signs also differ in their stylisations.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‘SO-NI/Y’ (since the letter ‘Y’ in the earlier mark is pronounced in the same way as the letter ‘I’ in the contested mark). The pronunciation differs in the sound of the letters ‘LOVE’ of the contested mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the verbal element ‘LOVE’ and the figurative element depicting a leaf in the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs 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.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The goods are identical and are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

The marks coincide visually in the letters ‘SON’ in their beginnings, and are similar aurally in respect of the letters ‘SONY’/‘SONI’. The difference between the signs consists of the letters ‘LOVE’ at the end of the contested sign, which are weak for all the relevant goods, and the figurative element of the contested mark, which is less important, as it is a banal decorative feature. The signs also differ in their stylisations. However, the stylisation and additional figurative elements, which are not particularly fanciful and memorable, are not striking enough to substantially modify the visual perception. Rather, the relevant public will tend to focus on the word elements, in accordance with established case-law (16/09/2013, T-569/11, Gitana, EU:T:2013:462, § 56; 06/09/2013, T-349/12, Revaro, EU:T:2013:412, § 23).

The letters that are visually and aurally different in the marks are placed in the middle and at the end of the marks; as explained above, this difference may therefore not catch the initial attention of the consumer.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

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).

Therefore, in the present case, the identity of the goods offsets any lesser degree of similarity between the signs.

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. 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).

Considering all the above, there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 194 843. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to their reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Birgit FILTENBORG

Francesca DRAGOSTIN

Loreto URRACA LUQUE

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.