(Trade mark without text) | Decision 2751405
Date Published: Sep 24, 2017
OPPOSITION No B 2 751 405
Marjorie Olibere, Route de Rabastens, 65700 Auriebat, France (opponent), represented by Ipside, 6 Impasse Michel Labrousse, 31100 Toulouse, France (professional representative)
a g a i n s t
LIFEstyle Group GmbH, Erfurter Str. 3, 85386 Eching, Germany (applicant), represented by Beetz & Partner, Steinsdorfstr. 10, 80538 München, Germany (professional representative).
On 28/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 751 405 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 170 152 for the figurative trade mark .
The opposition is based on French trade mark registration No 4 153 785 for the figurative trade mark .
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
The goods on which the opposition is based are the following:
Class 14: Jewelry; jewelry products; precious stones; timepieces and chronometric instruments; precious metals and their alloys; works of art of precious metal; jewelry cases [caskets]; boxes of precious metal; watch cases; bracelets; chains; springs or glasses for watches; key rings [trinkets or fobs]; statues or figurines, namely, statuettes of precious metal; cases or presentation cases for timepieces, medals.
Class 18: Leathers and imitation leathers; animal skins; trunks and suitcases; umbrellas; parasols and walking sticks; whips, harness and saddlery; wallets; purses (coin purses); credit card holders, namely, wallets; bags; vanity cases (empty); collars or clothing for animals; net bags for shopping.
Class 25: Clothing; footwear; headgear; shirts; clothing of leather or imitation of leather; belts; clothing of fur; gloves; scarves; neckties; hosiery; socks; bedroom slippers; beach, ski or sports footwear; underwear.
The contested goods are the following:
Class 14: Amulets [jewellery, jewelry (Am.)], Pins being jewelry, Bracelets [jewellery, jewelry (Am.)], Jewellery of yellow amber, Brooches [jewelry], Wire of precious metal [jewellery, jewelry (Am.)], Ivory jewelry, Gold thread [jewellery, jewelry (Am.)], Necklaces [jewellery, jewelry (Am.)], Chains [jewelry], Lockets [jewellery, jewelry (Am.)], Pearls made of ambroid [pressed amber], Pearls [jewellery, jewelry (Am.)], Pearl, artificial, For making jewellery, Rings [jewellery, jewelry (Am.)], Key rings [trinkets or fobs], Jewel cases, Ornamental pins, Ornaments [jewellery, jewelry (Am.)], Jewels, Cases for watches [presentation], Bracelets of leather.
Class 18: Leather and imitation leather goods made thereof, Namely belts (of leather), Straps (Leather -), Leather bands, (necklaces, bracelets), Laces (Leather -), Purses, Wallets, Handbags, Casual bags, Agendas, Key bags, cases and Business card cases; Handbags, wallets, purses.
Class 25: Clothing, Clothing of imitations of leather, Belts [clothing], Leather clothing, Headbands [clothing], Espadrilles, Beach shoes, Scarves, Headgear, Neck scarfs [mufflers].
As a preliminary matter, for the sake of clarity, the correct wording of the applicant’s list of goods under consideration must be identified. In this regard, it should be noted that, according to the version of the list of goods of Class 18 in the first language of the EUTM application (that is one of the five languages of the Office -German-, which means that it will be the definitive version of the list of goods), the contested leather and imitation leather goods made thereof in the English translation should read leather and imitation leather and goods made thereof (Leder und Lederimitationen sowie Waren daraus).
Furthermore, 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 applicant’s and the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
In addition, 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 14
The contested amulets [jewellery, jewelry (Am.)], pins being jewelry, jewellery of yellow amber, brooches [jewelry], wire of precious metal [jewellery, jewelry (Am.)], ivory jewelry, gold thread [jewellery, jewelry (Am.)], necklaces [jewellery, jewelry (Am.)], chains [jewelry], lockets [jewellery, jewelry (Am.)], pearls [jewellery, jewelry (Am.)], rings [jewellery, jewelry (Am.)], Ornamental pins, Ornaments [jewellery, jewelry (Am.)], bracelets of leather are included in the broad category of, or overlap with, the opponent’s jewelry; jewelry products. Therefore, they are identical.
Bracelets [jewellery, jewelry (Am.)], key rings [trinkets or fobs], jewel cases, jewels, cases for watches [presentation] are identically contained in both lists of goods (including synonyms).
The contested pearls made of ambroid [pressed amber], pearl, artificial, for making jewellery are included in the broad category of the opponent’s precious stones. Therefore, they are identical.
Contested goods in Class 18
Leather and imitation leather, goods made thereof, namely purses, wallets; wallets, purses are identically contained in both lists of goods (including synonyms).
The contested goods made thereof (leather and imitation leather), namely handbags, casual bags, key bags; handbags are included in the broad category of the opponent’s bags. Therefore, they are identical.
The contested goods made thereof (leather and imitation leather), namely belts (of leather), straps (leather -) are similar to the opponent’s bags. These goods are complementary. Furthermore, they come from the same undertakings and may target the same end users.
The contested leather bands, (necklaces, bracelets), laces (leather -) are similar to the opponent’s bracelets; chains in Class 14. These goods have the same purpose of adornment and the same method of use. Furthermore, they are goods in competition and may target the same end users.
The contested agendas, cases and business card cases are similar to the opponent’s credit card holders, namely, wallets as they can coincide in nature, producer, end user and distribution channels.
Contested goods in Class 25
Clothing, belts [clothing], beach shoes, scarves, headgear, neck scarfs [mufflers] are identically contained in both lists of goods (including synonyms).
The contested clothing of imitations of leather, leather clothing, headbands [clothing], are included in the broad category of the opponent’s clothing. Therefore, they are identical.
The contested espadrilles are included in the broad category of the opponent’s footwear. 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 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 nature of the goods, the frequency of purchase and their price. It will be higher than average, for example, in relation to certain pieces of jewellery. Indeed, in its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed in relation to goods in Class 14. The degree of attention is considered average for the relevant goods in Classes 18 and 25.
- The signs
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 element ‘OLIBERE’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.
The respective figurative elements of the signs will be understood by the relevant public as the depiction of a peacock. Since it is not descriptive in relation to the relevant goods, its degree of distinctiveness is average. The opponent claims in this regard that this representation ‘must be regarded as highly distinctive with regard to the products in question and thus enjoy the widest possible protection’. However, as enhanced distinctive has not been claimed, the inherent degree of distinctiveness must be considered average.
Contrary to the opponent’s opinion, the earlier mark has no elements that could be considered clearly more dominant than the other element in the mark, as the representation of the peacock is not more eye-catching than the word element due to its size or position within the mark.
Visually, the signs differ in the distinctive verbal element ‘OLIBERE’, only present in the earlier mark. Furthermore, while both signs contain the distinctive depiction of a peacock, the way this bird is represented differs substantially.
Indeed, in the case of the earlier mark, the peacock is highly stylised, formed by a twisted droplet-shaped like form, and although its body and tail are looking to the left, its head is turned to the right. The body is all depicted in black and its three feather-crest and the tail are formed by teardrops of different sizes.
On the other hand, in the contested sign the depiction of the peacock is more realistic and its body and head are both looking to the left. Furthermore, while the head and torso are depicted in black, the body is covered by a big white wing with feathers. The contested depiction also contains a fourth thin feather-crest and a big feather-tail with circular inners, and, unlike the earlier mark, an eye, beak and leg.
From the foregoing, it is clear that the signs do not coincide in any verbal elements and that the shapes and the stylisation of the signs at issue are represented differently in their details. Therefore, it is concluded that the signs are not visually similar.
Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar distinctive meaning on account of their figurative elements, the signs are conceptually similar to a high degree.
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 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 settled case-law, 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).
According to the same line of case-law, 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 relevant goods are purchased in shops where customers can themselves either choose them or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 - T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the visual dissimilarity of the signs is particularly relevant when assessing the likelihood of confusion between them.
Furthermore, the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24). However, in the present case, the opponent did not explicitly claim that its earlier mark is particularly distinctive by virtue of intensive use or reputation.
It is true that, exceptionally, where the signs have the same distinctive concept in common accompanied by visual similarities between the signs, this may lead to a likelihood of confusion even in the absence of a particularly high distinctiveness of the earlier mark.
Yet, in the present case, the signs only have in common that they both contain a representation of a peacock, but, as seen above, these representations have nothing in common for the remainder; they are totally different in their set-up, stylisation and aesthetic expression. Therefore, the signs have been found visually dissimilar.
Therefore, the conceptual similarity is not sufficient for a finding of likelihood of confusion even with regard to identical goods, since the signs do not display any visual or aural similarities, and also taking into account that the degree of attention of the relevant public is considered to vary from average to high, and that the earlier sign has an average degree of distinctiveness.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Carlos MATEO PÉREZ | Eva Inés PEREZ SANTONJA | Saida CRABBE |
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.