(Trade mark without text) | Decision 2741497 - ITOCHU CORPORATION v. MAGNETO RESEARCH
Date Published: Sep 28, 2017
OPPOSITION No B 2 741 497
Itochu Corporation, 1-3, Umeda 3-chome, Kita-ku, Osaka-shi, Osaka 530-8448, Japan (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
Magneto Research, 20 Rue du Maréchal Joffre, 33200 Bordeaux, France (applicant), represented by Aquinov, Allée de la Forestière, 33750 Beychac & Caillau, France (professional representative).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 741 497 is upheld for all the contested goods, namely:
Class 25: Camouflage clothing; Gloves [clothing]; Scarves; Sashes for wear; Waistcoats; Shirts; Trousers; Jackets [clothing]; Sleeveless jackets; Footwear; Hoods (hats); Parkas; Uniforms; All the aforesaid goods being for use in combat simulation games using replica weapons.
2. European Union trade mark application No 15 333 081 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 333 081, namely against all the goods in Class 25. The opposition is based on, inter alia, international trade mark registration No 662 441A designating Austria, the Benelux countries, the Czech Republic, Germany, Spain, France, Hungary, Latvia, Poland, Portugal, Romania, Slovenia and Slovakia. 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 international trade mark registration No 662 441A designating Austria, the Benelux countries, the Czech Republic, Germany, Spain, France, Hungary, Latvia, Poland, Portugal, Romania, Slovenia and Slovakia.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 25: Clothing, including boots, shoes and slippers.
The contested goods are the following:
Class 25: Camouflage clothing; gloves [clothing]; scarves; sashes for wear; waistcoats; shirts; trousers; jackets [clothing]; sleeveless jackets; footwear; hoods (hats); parkas; uniforms; all the aforesaid goods being for use in combat simulation games using replica weapons.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘including’, 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).
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 25
The contested camouflage clothing; gloves [clothing]; scarves; sashes for wear; waistcoats; shirts; trousers; jackets [clothing]; sleeveless jackets; parkas; uniforms; all the aforesaid goods being for use in combat simulation games using replica weapons all fall under the earlier broader term Clothing, including boots, shoes and slippers. These goods are therefore identical.
The contested footwear; all the aforesaid goods being for use in combat simulation games using replica weapons serves the same purpose as clothing: both are used for covering and protecting parts of the human body. In this regard, it is important to note that the earlier goods are a broad category which encompasses clothing for use in combat simulation games as well. Therefore, these goods may be found in the same retail outlets. Moreover, many manufacturers and designers will design and produce both clothing and footwear; all the aforesaid goods being for use in combat simulation games using replica weapons. Therefore, the goods are similar.
The contested hoods (hats); all the aforesaid goods being for use in combat simulation games using replica weapons and clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. In this regard, it is important to note that the earlier goods are a broad category which encompasses clothing for use in combat simulation games as well. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, hoods (hats); all the aforesaid goods being for use in combat simulation games using replica weapons and clothing are considered similar.
b) 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 are directed at more specialised consumers such as those interested in combat simulation games.
The degree of attention is higher than average for clothing for combat simulation games due to the specialised nature of the goods and the frequency of the purchase of such goods.
c) The signs
Earlier trade mark | Contested sign |
The relevant territories are Austria, the Benelux countries, the Czech Republic, Germany, Spain, France, Hungary, Latvia, Poland, Portugal, Romania, Slovenia and Slovakia.
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).
Neither sign has an element that could be considered more dominant (visually eye-catching) than other elements.
The earlier mark is a figurative mark consisting of a stylised letter in black. The letter ‘M’ is depicted in a fanciful way with particularly curved sides resembling a circular shape. The top of the letter is not curved, however, with two pointed peaks at the top. There is a black dot at the bottom of the sign. The contested sign consists of a letter ‘M’ depicted in exactly the same stylised manner, except that the script used is not as bold as in the earlier mark. The contested sign is enclosed in a circular border.
The letter ‘M’, comprising both signs, may be associated with ‘medium’, indicating the size of clothing, for example. Bearing in mind that the relevant goods are clothing, footwear and headgear, this element is weak for the goods, since it may be perceived as indicating size.
Visually, the signs coincide in the letter ‘M’, the depiction of which is identical in shape. However, they differ in the bold text used in the earlier mark, the dot contained in that sign and the circular border of the contested sign.
Therefore, the signs are visually highly similar because even though the letter ‘M’ may be viewed as weak for the goods, it is effectively the principal element in both signs and is stylised in a particular manner.
Aurally and conceptually, since both signs will be pronounced and perceived as ‘M’, they are identical. In this respect, the dot in the earlier mark will be seen as an adornment and will neither be pronounced or seen as conveying a particular meaning. Furthermore, the weak distinctive character of the letter ‘M’ as such will not alter this finding as it is the principal element in each sign.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
d) 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, although the letter ‘M’ in the earlier trade mark may convey a meaning in connection with the goods, the mark is figurative and stylised in a particular way. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.
e) Global assessment, other arguments and conclusion
The goods at issue have been found identical and similar. The marks are highly similar visually, and identical from an aural and conceptual point of view.
Despite the fact that the letter ‘M’ could be seen as conveying a meaning in connection with the goods, the particular stylisation of the letter in the contested sign is identical to the earlier mark. The letter in each sign is far from a standard letter ‘M’, giving a circular impression overall with jagged peaks at the top. The small differences in the bold script used in the earlier mark and the dot, along with the circular border of the contested sign, are not sufficient to rule out a likelihood of confusion.
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).
In the view of the Opposition Division, and as indeed argued by the opponent in its submissions, it is highly likely that the relevant consumer will perceive the contested sign as a slight variation of the opponent’s logo.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 662 441A designating Austria, the Benelux countries, the Czech Republic, Germany, Spain, France, Hungary, Latvia, Poland, Portugal, Romania, Slovenia and Slovakia. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right international trade mark registration No 662 441A leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right 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
Chantal VAN RIEL | Lucinda CARNEY | 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.