V VICTORIA | Decision 2691924
Date Published: Sep 22, 2017
OPPOSITION No B 2 691 924
Deichmann SE, Deichmannweg 9, 45359 Essen, Germany (opponent), represented by Klaka, Delpstr. 4, 81679 München, Germany (professional representative)
a g a i n s t
Mohammed Ibrahim Al-Shamasy Trading Est., P.O. Box 5067, Riyadh 11422, Saudi Arabia (applicant), represented by Bourgeois Rezac Mignon, 17, boulevard Malesherbes, 75008 Paris, France (professional representative).
On 15/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 691 924 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 907 257 (figurative mark:
“”), namely against all the remaining goods in Class 18 (see opposition decision B 2 704 800 of 07/04/2017 and opponent´s letter of 20/07/2017 to maintain the opposition). The opposition is based on, inter alia, international trade mark registration No 784 495 (figurative mark:
“”) designating the European Union, Cyprus, Lithuania, Bulgaria, Latvia, France and Sweden. 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 784 495 designating the European Union, Cyprus, Lithuania, Bulgaria, Latvia, France and Sweden.
- The goods
The goods in Classes 18, 25 and 28 on which the opposition is based are the following:
Class 18: Leather and imitations thereof, namely bags and other cases not adapted for the objects to be carried, as well as small leather goods, including purses, wallets, key cases, trunks and suitcases; back bags, bags for sports, leisure bags, umbrellas, parasols and walking sticks.
Class 25: Clothing, footwear, headwear.
Class 28: Games, toys; gymnastics and sports articles included in this class, with the exception of accessories for tennis, squash, badminton, table tennis and golf.
The contested goods in Class 18 are the following (after partial refusal, see above):
Animal skins, hides.
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).
However, the term ‘namely’, used in 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.
The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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.
The contested animal skins and hides refer to the skins of various kinds of animals. These are raw materials. The fact that one product is used for manufacturing another (for example, leather for footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent´s goods. Therefore, these goods are dissimilar and not similar, as the opponent has incorrectly pointed out on page 4 of its observations with examples and old case law which is not current practice of the Office. According to case-law, the raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (see, to that effect, judgment of 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (judgment of 09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43), see Guidelines for Examination in the Office of 01/05/2017, Part C, Opposition Page 39.
b) Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
The opponent has also based its opposition on the same earlier German trade mark No 30 221 016. Since this mark is identical to the one which has been compared and covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
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
Swetlana BRAUN | Peter QUAY | Julia SCHRADER |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.