SWEAR | Decision 2630658
Date Published: Oct 1, 2017
OPPOSITION No B 2 630 658
Loreto Rodríguez Chavida, Ctra de Marcosende Nº 104, 36310 Vigo, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)
a g a i n s t
Platforme International Limited, 16 South End Croydon, Surrey CR10 1DN, United Kingdom (holder), represented by Briffa, Business Design Centre 52 Upper Street, Islington, London N1 0QH, United Kingdom (professional representative).
On 01/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 630 658 is partially upheld, namely for the following contested goods:
Class 18: Bags not included in other classes, rucksacks, backpacks and goods made of leather and imitations of leather not included in other classes excluding trunks and travelling bags.
Class 25: Footwear, clothing and headgear.
2. International registration No 1 241 567 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 241 567. The opposition is based on European Union trade mark registration No 5 174 073. 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 and services
The goods on which the opposition is based are the following:
Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
The contested goods and services are the following:
Class 18: Bags not included in other classes, rucksacks, backpacks and goods made of leather and imitations of leather not included in other classes excluding trunks and travelling bags.
Class 25: Footwear, clothing and headgear.
Class 35: Retail services in the field of clothing, footwear and headgear; retail services connected with the sale of clothing, footwear and headgear; retail services connected with clothing, footwear and headgear in order to make it possible for others to conveniently view and purchase such goods; retail services in the field of bags, rucksacks, backpacks and goods made of leather and imitations of leather, excluding trunks and travelling bags; retail services connected with the sale of bags, rucksacks and backpacks and goods made of leather and imitations of leather, excluding trunks and travelling bags; retail services connected with bags, rucksacks and backpacks and goods made of leather and imitations of leather, excluding trunks and travelling bags, in order to make it possible for others to conveniently view and purchase such goods; retail services in the field of jewellery, imitation jewellery, chronometric and horological instruments; retail services connected with the sale of jewellery, imitation jewellery, chronometric and horological instruments; retail services connected with jewellery, imitation jewellery, chronometric and horological instruments in order to make it possible for others to conveniently view and purchase such goods; retail services in the field of spectacles, sunglasses and frames thereof; retail services connected with the sale of spectacles, sunglasses and frames thereof; retail services connected with spectacles, sunglasses and frames thereof in order to make it possible for others to conveniently view and purchase such goods; retail services in the field of perfumes, cosmetics and toilet articles; retail services connected with the sale of perfumes, cosmetics and toilet articles; retail services connected with perfumes, cosmetics and toilet articles in order to make it possible for others to conveniently view and purchase such goods; the aforesaid retail services provided via the internet, mail order, catalogue and other communication networks; provision of information and advice to consumers regarding the selection and purchase of the aforementioned goods; import-export agency services in relation to clothing, footwear and headgear, bags, rucksacks and backpacks and goods made of leather and imitations of leather, excluding trunks and travelling bags, jewellery, imitation jewellery, chronometric and horological instruments, spectacles, sunglasses and frames, perfumes, cosmetics and toilet articles; retail services being the sale of goods on commission in relation to clothing, footwear and headgear, bags, rucksacks and backpacks and goods made of leather and imitations of leather, excluding trunks and travelling bags, jewellery, imitation jewellery, chronometric and horological instruments, spectacles, sunglasses and frames, perfumes, cosmetics and toilet articles; research services relating to advertising, business and marketing; assistance and consultancy relating to business management and organization and in particular relating to the establishment of retail boutique stores and retail stores featuring clothing, footwear and headgear and related fashion accessories; business advisory services relating to the establishment and operation of franchises.
Class 42: Design of articles of clothing, footwear and headgear; fashion design; product design; research to develop new products in the field of clothing footwear and headgear; design services relating to packaging, textiles, clothing, footwear, headgear and fashion articles; industrial design.
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 bags not included in other classes, rucksacks, backpacks and goods made of leather and imitations of leather not included in other classes excluding trunks and travelling bags are highly similar to the opponent’s trunks and travelling bags as they have the same purpose and nature. They can coincide in producer, end user and distribution channels.
Contested goods in Class 25
The contested goods footwear, clothing and headgear are lowly similar to the opponent’s sporting articles not included in other classes as they can coincide in producer, end user and distribution channels.
Contested services in Class 35
The contested services in Class 35 are retail services in relation to different kind of goods. In general goods and services do not have the same nature. There can only be found similarity if the goods that are subject of the retail services are identical to the ones of the earlier trade mark. As this is not the case, the retail services are all dissimilar to all earlier goods in Classes 18 and 28. They do not have the same retail outlets and are not made/provided by the same manufacturers/companies. Moreover, the goods are neither in competition nor complementary. The further contested services in this Class such as the business advisory services and franchising services are also dissimilar for the same reasons as set out above as they do not share any of the similarity requirements with the opponent’s goods in Classes 18 and 28.
Contested services in Class 42
The contested services in Class 42, which are fashion design and industrial design services are all dissimilar to all earlier goods in Classes 18 and 28. They do not share the same producers/providers, they are directed at different consumers and they are also not in competition to each other.
- 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 similar (different degrees) are directed at the public at large. The degree of attention is considered to be average.
- The signs
SWEAR | |
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 earlier mark consists of a figurative device in the form of the drawing of a ribbon arranged in an S-shaped with the word ‘S wear’ written on the bottom line of the ribbon. The figurative element is not commonplace and will attract consumers’ attention due to its sheer size. Nevertheless, despite its much smaller size and subordinate position, the word ‘S wear’ will not be overlooked. In signs that contain both figurative and word elements consumers tend to refer to the words as the easiest form to denominate the sign. The word ‘S wear’ therefore must be considered as co-dominant in the application’s overall impression. The contested mark is the word ‘SWEAR’.
Visually, the signs coincide in the letters ‘SWEAR’, but differ in the figurative element of the earlier mark, which has no counterpart in the contested application. In the overall sign’s visual impression the space between the letter ‘S’ and the letters ‘wear’ is so insignificant that it will go unnoticed (05/09/2013, R 668/2010-4, S WEAR, § 27).
Therefore, the signs are similar to an average degree.
Aurally, the figurative element of the application is to be disregarded since it cannot be articulated. Again, consumers are unlikely to notice the space between the letter ‘S’ and the letters ‘wear’ and will pronounce the signs identically as [swear]. As a word ‘S wear’ does not exist in the English or any other language, there is no reason for consumers to articulate the earlier mark in two syllables as [es-wear]. Moreover, the overall phonetic impression produced by the words [swear] and [es-wear] is almost identical.
The signs are therefore phonetically identical or highly similar.
Conceptually, there is identity for consumers who perceive in both signs the English word ‘swear’ (to promise or undertake on oath to observe or perform/ to use bad language – see Oxford English Dictionary). There is no word ‘S wear’ in the English language and hence there can be no conceptual dissimilarity. For consumers who do not understand the meaning of the word ‘swear’, the conceptual comparison remains neutral.
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
According to Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion.
Taking into account the average distinctiveness of the earlier mark, the visual similarity and the high phonetic similarity or even identity of the signs there exists a likelihood of confusion for the similar goods. There is no conceptual difference between the letters ‘S wear’ of the application and the word ‘SWEAR’ that could neutralise the similarities that arise from the almost identity of these two words. On the contrary, for the English-speaking consumers the signs are also conceptually identical. While it is true that the conflicting goods are fashion items generally bought at sight, it remains that they also may be ordered orally, for example when asking the shop assistant for a specific brand or making telephone inquiries at different shops. Given that the signs are visually similar to an average degree and phonetically identical or at least highly similar, there is a risk that the relevant public might assume a common commercial origin of the goods at issue (05/09/2013, R 668/2010-4, S WEAR, § 33).
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, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly wellfounded on the basis of the opponent’s European Union trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods found to be similar to various degrees to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Sigrid DICKMANNS | Lars HELBERT | Claudia MARTINI |
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.