TWINS SPECIAL | Decision 2723438 - TWIN SET - SIMONA BARBIERI S.P.A. v. Ryan Imro Resida
Date Published: Oct 1, 2017
OPPOSITION No B 2 723 438
Twin Set - Simona Barbieri S.P.A., Via del Commercio 32, 41012 Carpi (Modena), Italy (opponent), represented by Gidiemme S.R.L., Via Giardini, 474 Scala M, 41124 Modena, Italy (professional representative)
a g a i n s t
Ryan Imro Resida, Postbus 172, 2910 AD Nieuwerkerk ad Yssel, Netherland (applicant).
On 28/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 723 438 is upheld for all the contested goods, namely:
Class 25: Clothing; Headgear; Hats; all the aforementioned goods for sports use only; Footwear; for boxing practice exclusively.
2. European Union trade mark application No 15 199 524 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 199 524, namely against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 13 980 628. 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 European Union trade mark registration No 13 980 628.
- The goods
The goods on which the opposition is based are the following:
Class 25: Skirts, Trousers, Trousers shorts, Denim jeans, Shirts, Chemisettes, Undershirts, Vest tops, Salopettes, Sports suits, Cloaks, Jackets (Stuff -) [clothing], Coats, Blousons; Heavy jackets, jackets (clothing), windcheaters, waterproof clothing, hats, headgear for wear, sashes for wear, gloves, ties, swimming costumes, belts, shoes, footwear, slippers, bootees, stockings, socks, tights, leotards, boots, dressing gowns, underwear, sportswear, sweatshirts, scarves, eveningwear, daywear.
After a limitation requested by the applicant on 22/06/2016, the contested goods are the following:
Class 25: Clothing; Headgear; Hats; all the aforementioned goods for sports use only; Footwear; for boxing practice exclusively.
The contested clothing; all the aforementioned goods for sports use only is a synonym of the opponent’s sportswear. They are, therefore, identical.
The contested headgear; hats; all the aforementioned goods for sports use only are included in the broad categories of the opponent’s hats, headgear for wear. Therefore, they are identical.
The contested footwear; for boxing practice exclusively 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 are directed at the public at large and at professionals with specific knowledge or expertise in sports. The degree of attention is considered average.
- The signs
TWIN-SET | |
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The elements ‘TWIN-SET’ as a whole in the earlier mark and ‘TWINS’ in the contested sign, are not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public for which they have no meaning and are, therefore, distinctive.
The contested sign includes the registered trade mark symbol, ®, which acts like the dot of the letter ‘i’. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.
The element ‘SET’ of the earlier mark is an English word that has become part of Spanish vocabulary and appears in Spanish dictionaries with the meaning of, inter alia, ‘a number of things that belong together or that are thought of as a group’. Bearing in mind that the relevant goods are clothing, footwear and headgear that can be sold as a set of articles this element is non-distinctive for all these goods.
The element ‘SPECIAL’ of the contested sign is a basic English word that will be associated with ‘better, greater, or otherwise different from what is usual’. It is, furthermore, very close to the Spanish equivalent, namely ‘especial’. Bearing in mind that the relevant goods are clothing, footwear and headgear, this element is non-distinctive for all these goods, since it simply indicates a high quality of the goods. The two sets of three stars placed in each side of the verbal element ‘SPECIAL’ will reinforce this indication about the quality of the goods and are, therefore, also non-distinctive.
The rectangular background with a red outline also present in the contested sign will be perceived a banal element constituting labels for clothing and will have, therefore, a reduced distinctive character in relation to the relevant goods.
The element ‘TWINS’ in the contested sign is the dominant element as it is the most eye-catching, due to its white lettering with red borders against the black background, which along with the larger characters make it visually outstanding as regards the element ‘SPECIAL’ and the two sets of three tiny stars, which are, moreover, represented in a secondary place at the bottom of the mark.
Furthermore, 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 (the initial part) the one that first catches the attention of the reader.
Visually, the signs coincide in the letter sequence ‘T-W-I-N-S’, the last letter ‘S’ separated from the element ‘TWIN’ by a hyphen in the earlier mark and joined to it in the contested sign. Furthermore, the element ‘TWIN’ is placed at the forefront of the earlier mark where will attract first the consumer’s attention and is totally reproduced in the dominant and distinctive verbal element of the contested sign. However, the signs differ in the additional letters ‘ET’ and the hyphen in the earlier mark as well as in the figurative representation and colours of the element ‘TWINS’ in the contested sign and in the remaining non-distinctive, less distinctive and less dominant verbal and figurative elements of this mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘t-w-i-n-s’. The fact that the letter ‘s’ is joined in the contested sign whereas it is separated by a hyphen in the earlier mark will not result in any marked difference in pronunciation. As explained above, this coinciding element is distinctive in relation to all the relevant goods, is placed at the beginning of the earlier mark and plays a dominant role in the contested sign. The pronunciation differs in the sound of the letters ‘et’, placed at the end of the earlier mark, and in the sound of the non-distinctive element ‘special’ of the contested sign (if pronounced at all), which has no counterpart in the earlier sign.
Therefore, the signs are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, consisting of non-distinctive elements, 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.
- 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
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
It has been established in the previous sections of this decision that the contested goods are identical to the goods on which the opposition is based. They target both the public at large and professionals, with an average degree of attention and the earlier mark has a normal degree of distinctiveness in relation to all the relevant goods.
It has also been concluded that the signs are visually similar to an average degree and aurally highly similar, whereas they are not conceptually similar. The differences between the signs are not sufficient to counteract their similarities since they are mainly confined to elements which are non-distinctive, less distinctive or less dominant within the signs, as explained in detail above.
In addition, account should be 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).
Furthermore, it should also be born in mind that 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 which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them and the identity of the goods, as a result of the principle of interdependence. Therefore, the relevant public with an average level of attention may believe that the identical goods come from the same undertaking or, at least, economically-linked undertakings.
Considering all the above, there is a likelihood of confusion (including likelihood of association) on the part of the Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 980 628. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right No 13 980 628 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 rights 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
Martin MITURA | Alexandra APOSTOLAKIS | Vanessa PAGE |
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.