WINGMAN Rebel | Decision 2433319 - SALON UK LTD v. Stu Jolley
Date Published: Sep 24, 2017
OPPOSITION No B 2 433 319
Salon UK Ltd, Unit 5, Mitcham Industrial Estate, Streatham Road, Mitcham, Surrey, CR4 2AP, United Kingdom (opponent), represented by HGF Limited, 8th Floor, 140 London Wall, London EC2Y 5DN, United Kingdom (professional representative)
a g a i n s t
Stu Jolley, Flat 3, 129 Newbridge Road, Bath Devon BA1 3HG, United Kingdom (applicant).
On 31/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 433 319 is upheld for all the contested goods.
2. European Union trade mark application No 13 112 198 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 13 112 198 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 10 644 086 for the word mark ‘REBEL’. The opponent invoked Article 8(1)(b), 8(4) and 8(5) 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 trade mark European Union trade mark registration No 10 644 086.
- The goods and services
The goods and services on which the opposition is based are, interalia, the following:
Class 3: Soaps, essential oils, perfumery, fragrances, cosmetics, non-medicated toilet preparations, preparations for the body, hair, scalp, skin or nails; preparations for use in the bath or shower; deodorants for use on the person, dentifrices; false nails; decorations for nails; depilatory wax.
Class 25: Cutting gowns, aprons and disposable gloves.
The contested goods are the following:
Class 3: Hair wax; Hair styling waxes; Hair styling gel; Hair styling preparations; Hair styling lotions; Hair styling spray.
Class 25: Clothing; Headgear; Headwear.
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 3
The contested hair wax; hair styling waxes; hair styling gel; hair styling preparations; hair styling lotions; hair styling spray are included in the broad category of the opponent’s cosmetics. Therefore they are identical.
Contested goods in Class 25
The contested clothing includes, as a broader category, the opponent’s aprons. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested headgear; headwear are similar to the opponent’s cutting gowns. Headgear, headwear and cutting gowns (clothing) are of a very similar nature. Cutting gowns are an item of clothing designed to protect the clothes of the wearer while headgear, headwear also has a protective function. Hence, these goods have the same purpose, the distribution channels for these goods may coincide as may the relevant public. These goods are often made by the same companies.
- 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. The degree of attention is considered to be average.
- The signs
REBEL | |
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 common element ‘REBEL’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, for economy of proceedings the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The contested sign is a figurative mark with the verbal elements ‘W WINGMAN Rebel’. At the top of the sign above the word ‘WINGMAN’ is a capital ‘W’ in grey with four grey horizontal lines at each side. This element reinforces the fact that ‘WINGMAN’ starts with the letter ‘W’. Underneath the ‘W’ is the smaller word ‘WINGMAN’ in a grey capital standard typeface, beside which is a tiny trade mark symbol, TM. Below, standing out on a black background, is the word ‘Rebel’ in a large stylized typeface the outline of which is white. Despite the fact that the word ‘WINGMAN’ is significantly smaller than the word ‘Rebel’, it is clearly perceptible. There is no dominant element in the contested sign.
A ‘WINGMAN’ is ‘a pilot whose aircraft is positioned behind and outside the leading aircraft in a formation’ (Oxford English dictionary at https://en.oxforddictionaries.com on 25/08/2017). This has no relation to the goods in question and so it is distinctive. A ‘Rebel’ is a person who ‘resists authority, control or convention’ (Oxford English dictionary at https://en.oxforddictionaries.com on 25/08/2017). The word has no clear meaning with respect to the goods in question and is therefore also distinctive.
The trade mark symbol, TM, beside the verbal element ‘WINGMAN’ is an informative indication that the ‘WINGMAN’ sign is a trade mark and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison. In any case it is almost invisible due to its size.
The earlier mark is the word mark ‘Rebel’ which, as has been explained above, is distinctive for the goods at hand.
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 the distinctive word ‘Rebel’ which is the earlier sign in its entirety and the larger verbal element of the contested sign. However, they differ in the distinctive word ‘WINGMAN’ and the letter ‘W’ with the four horizontal lines on each side which only appears in the contested sign. They differ in addition in the graphical representation, typeface and colours of the contested sign which has no counterpart in the earlier mark. Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛RE-BEL’, present identically in both signs. The pronunciation differs sound of the letters ‘WING-MAN’ of the contested mark, which have no counterpart in the earlier sign. It is highly unlikely that the ‘W’ of the contested mark will be pronounced at all as it simply repeats the first letter of ‘WINGMAN’. Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The element ‘WINGMAN’ of the contested sign has a meaning but does not alter the perception of the word ‘Rebel’ nor will it be seen as an adjective in connection with ‘Rebel’. The element ‘Rebel’, included in both signs, will be associated with the meaning explained above. As the signs will be associated with a similar meaning due to the coincidence in this word, the signs are conceptually similar to an average 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 claimed that the earlier trade mark enjoys reputation but did not file any evidence in order to prove such a claim.
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
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.
According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
In the present case the goods are partly identical and partly similar. The signs are visually, aurally and conceptually similar to an average degree. The earlier mark has a normal degree of distinctive character and the level of attention of the relevant consumer is normal.
The earlier sign ‘Rebel’ is contained in its entirety in the contested mark. It is distinctive and is clearly perceivable being the largest verbal component of the contested sign.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public.
The Opposition Division notes, that it is a common practice for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, modernized image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices.
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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
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 10 644 086. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right ‘Rebel’ 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).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Articles 8(4) and 8(5) EUTMR.
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
Renata COTTRELL | Lynn BURTCHAELL | Begoña URIARTE VALIENTE |
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.