TAGA | Decision 2786575

Date Published: Sep 22, 2017

OPPOSITION No B 2 786 575

Louis Vuitton Malletier, 2, rue du Pont-Neuf, 75001 Paris, France (opponent), represented by T Mark Conseils, 9 avenue Percier, 75008 Paris, France (professional representative)

a g a i n s t

Shanghai’sun Young Industrial Co. Ltd., Room 406, 12 Floor, Long 3599 Qibaoqixin Road, Minhang District, Shanghai City 201101, People’s Republic of China (applicant), represented by Jannig & Repkow, Klausenberg 20, 86199 Augsburg, Germany (professional representative).

On 04/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 786 575 is partially upheld, namely for the following contested goods:

Class 18:        Travelling trunks; school satchels; handbags; travelling bags; key cases; umbrellas; valises; briefcases; haversacks; attaché cases; rucksacks; bags for sports; pocket wallets; luggage; trimmings of leather for furniture; leather thread.

Class 25:        Overcoats; overalls; shirts; sports shoes; sweaters; trousers; vests; articles of clothing made of hides; clothing of imitations of leather; down jackets; outerclothing; jackets [clothing]; fur jackets; tights; thermal clothing; sports jerseys; athletic uniforms; sports bras; sweat shorts; suit jackets; tee-shirts; shorts; hooded sweatshirts; open-necked shirts; jeans; headgear for wear; scarfs; girdles; braces for clothing [suspenders]; neckties; shawls; headscarves; hosiery; gloves [clothing]; bathing suits; bathing trunks; lace boots.

2.        European Union trade mark application No 15 634 091 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 634 091 , namely against some of the goods in Classes 18 and 25. The opposition is based on French trade mark registration No 92 436 303 ‘TAIGA’. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 18:         Goods made of leather or of imitations of leather, canvas, synthetic fibers not included in other classes, in particular trunks, travelling bags, packs, rucksacks, shopping bags, beach bags, handbags, pouches, boxes intended for toiletry called “vanity cases”; suit cases, school bags, briefcases, card cases, wallets, cheque book holders, purses (not of precious metal), key case, umbrellas; boxes of leather and of leather-board.

The contested goods are the following:

Class 18:        Travelling trunks; school satchels; handbags; travelling bags; key cases; umbrellas; valises; briefcases; haversacks; attaché cases; rucksacks; bags for sports; pocket wallets; luggage; animal skins; imitation leather; trimmings of leather for furniture; leather thread.

Class 25:        Overcoats; overalls; shirts; sports shoes; sweaters; trousers; vests; articles of clothing made of hides; clothing of imitations of leather; down jackets; outerclothing; jackets [clothing]; fur jackets; tights; thermal clothing; sports jerseys; athletic uniforms; sports bras; sweat shorts; suit jackets; tee-shirts; shorts; hooded sweatshirts; open-necked shirts; jeans; headgear for wear; scarfs; girdles; braces for clothing [suspenders]; neckties; shawls; headscarves; hosiery; gloves [clothing]; bathing suits; bathing trunks; lace boots.

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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Handbags; travelling bags; key cases; umbrellas; briefcases; rucksacks are identically contained in both lists of goods.

The contested travelling trunks; school satchels; valises; haversacks; attaché cases; bags for sports; pocket wallets; luggage; trimmings of leather for furniture; leather thread are included in the broad category of the opponent’s goods made of leather or of imitations of leather, canvas, synthetic fibers not included in other classes. Therefore, they are identical.

The contested animal skins; imitation leather are all raw materials that are used to make finished goods and they are not similar to any of the goods on which the earlier mark is based in Class 18. The latter comprise various finished goods, including those made of leather, imitations of leather, etc. The goods under comparison differ in all aspects. They have different natures (raw materials as opposed to finished products) and purposes (raw materials used to make finished products as opposed to finished products for various purposes, e.g. luggage). They also target different publics (a professional public, namely manufacturers of different goods from raw materials, as opposed to a general public that buys finished products) and, consequently, have different channels of distribution. The goods are neither complementary nor in competition. They are, therefore, dissimilar.

Contested goods in Class 25

The contested overcoats; overalls; shirts; sports shoes; sweaters; trousers; vests; articles of clothing made of hides; clothing of imitations of leather; down jackets; outerclothing; jackets [clothing]; fur jackets; tights; thermal clothing; sports jerseys; athletic uniforms; sports bras; sweat shorts; suit jackets; tee-shirts; shorts; hooded sweatshirts; open-necked shirts; jeans; headgear for wear; scarfs; girdles; braces for clothing [suspenders]; neckties; shawls; headscarves; hosiery; gloves [clothing]; bathing suits; bathing trunks; lace boots are similar to the opponent’s rucksacks. They can have the same producers, end users and distribution channels.

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 and similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

TAIGA
Earlier trade mark	Contested sign

The relevant territory is France.

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 the word mark ‘TAIGA’.

The contested sign is a figurative mark consisting of the verbal element ‘TAGA’, written in slightly stylised white upper case letters with black borders.

The word ‘TAIGA’ of the earlier mark means in French the sometimes swampy coniferous forest of high northern latitudes, especially that between the tundra and steppes of Eurasia and the New World (‘formation végétale constituée de conifères, qui longe, en une ceinture forestière presque ininterrompue, le nord de l’Eurasie et du Nouveau Monde, au S. de la toundra’, information extracted from Dictionnaire Larouse on 22/08/2017 at www.larousse.fr/dictionnaires/francais/ta%c3%afga/76419?q=taiga#75528).

The word ‘TAGA’ of the contested sign has no meaning in French.

Both words are distinctive to an average degree with regard to the relevant goods.

The figurative elements of the contested sign are rather decorative in nature. Therefore, they are less distinctive.

The signs in conflict have no elements that could be considered more distinctive or more dominant (visually eye-catching) than other elements.

When signs consist of both verbal and figurative components, 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).

Visually, the signs coincide in ‘TA*GA’. However, they differ in the third letter, ‘I’, in the earlier mark. As explained above, the figurative elements of the contested sign are decorative in nature and less distinctive.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TA*GA’, present identically in both signs. The pronunciation differs in the sound of the letter ‛I’ of the earlier sign, which has no counterpart in the contested mark. It is hardly audible, as it is a vowel. The lengths, rhythms and intonations of both signs are very similar.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark, 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.

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.

5. Global assessment, other arguments and conclusion

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.

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.

As concluded above, some of the contested goods are identical and similar to the opponent’s goods. The rest of the goods are dissimilar. The signs are visually and aurally similar to a high degree. They are not conceptually similar. The earlier mark has a normal degree of distinctiveness. Furthermore, the public in question includes the public at large, whose degree of attention is average. Therefore, the signs could be confused with each other.

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).

Consumers tend to remember the similarities rather than the dissimilarities between signs. The first two letters (‘TA’) and the last two letters (‘GA’) of the signs under comparison are the same.

Consequently, the Opposition Division finds that the similarities between the signs are not outweighed by the differences (i.e. the figurative element of the contested sign and the additional letter, ‘I’, of the earlier mark).

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

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods 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 goods 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

Janja FELC

Michal KRUK

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.