XYZ | Decision 2737875
Date Published: Sep 28, 2017
OPPOSITION No B 2 737 875
Sportina, zunanja in notranja trgovina na debelo in drobno, proizvodnja, zastopanje, posredovanje in organizacija, Bled, d.o.o., Alpska cesta 43, 4248 Lesce, Slovenia (opponent), represented by Jure Marn, Ljubljanska ulica 9, 2000 Maribor, Slovenia (professional representative)
a g a i n s t
Zimbelmann Holding GmbH, Zeppelinstr. 28, 73033 Göppingen, Germany (applicant), represented by IT-Recht-Kanzlei, Alter Messeplatz 2, 80339 München, Germany (professional representative).
On 24/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 737 875 is upheld for all the contested goods.
2. European Union trade mark application No 15 264 881 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 264 881. The opposition is based on, inter alia, European Union trade mark registration No 6 829 345. The opponent invoked Article 8(1)(a) and (b) and 8(5) EUTMR.
DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.
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 6 829 345.
- The goods
The goods on which the opposition is based are inter alia the following:
Class 18: Leatherware, handbags, purses, key wallets, purses, vanity cases, not fitted, briefcases, garment bags for travel, ironbound trunks, suitcases, leather cases for toilet articles and accessories, umbrellas, wallets, duffel bags, travelling bags, briefcases and attaché cases, overnight bags, credit card holders, business card holders.
Class 25: Clothing, footwear, headgear; women's, men's, boy's and girls' clothing, overalls, shirts, blouses, jackets, swimsuits, pants, shorts, warm-up clothing, pelerines, walking shorts, denim clothing, mens' suits, tuxedos, waterproof clothing, neckties, socks, stockings and tights, hats, overcoats, pullovers, skirts, coats, coats with fur accessories, furs (clothing), vests, T-shirts, singlets for tennis and golf, shorts, beach wraps, waterproof clothing, ponchos, sleeveless T-shirts, shoes, boots, slippers, blazers, pants, shirts, pocket handkerchiefs, belts (clothing), gloves (clothing), dresses, coats and jackets of sheepskin, shawls and scarves, sweatshirts, men's and boy's underwear, underwear, nightwear, leisurewear, including (but not restricted to) pants, boxer shorts, sports underwear, sports hosiery, T-shirts, sleeveless T-shirts, vests, underwear, knitted and woven nightwear, night gowns, pyjama tops, pyjama bottoms, dressing gowns, bed jackets, dressing gowns, knitted and woven leisurewear, leisurewear tops and bottoms, housecoats, women's and girl's underwear, underwear and nightwear, leisurewear, underwear, bras, suspenders, singlets, corsets, balletwear, pants, knickers, bikinis, bra slips, bodices, waistbands, bodices, ladies' hats (Merry Widow hats), tunics, gymnastic singlets and leotards, daywear, including (but not restricted to), wide loose above-the-knee or ankle trousers, bikini pants, knickers, pants, slips (undergarments), blouse slips, camisoles, shirt slips, wide leg above-the-knee or ankle pants, night lingerie, slips for pregnant women, pant slips, (princess) slips (undergarments), reinforced slips, strapless slips, underwear suits, close-fitting slips, waist slips, mini slips, shirts, tight trousers, camisoles, bodices, blouses with bras (bralettes), pants and fur pants, daywear, leisurewear, nightwear and underwear, including (but not restricted to), nighwear, togas, nightshirts, pyjamas, short pyjamas, jumpsuits, short or long-sleeved pyjamas without collars, short nightgowns, pyjamas with harem trousers, wide loose trousers, house pyjamas, shorts with suspenders, sleeping shorts, shrugs, bed jackets, kaftans, overalls, tight trousers, bathrobes, dressing gowns, kimonos, housecoats, beach togas, shrugs for breakfast gowns, breakfast or lunch gowns, warm shrugs, gowns with wide sleeves and without buttons, hostess gowns, kabuki coats, housecoats, monk gowns, bra tops, crop tops, tights and tight trousers with strips under the feet (leggings).
The contested goods are the following:
Class 18: Leather bags.
Class 25: Shoes; clothing, apparel.
Contested goods in Class 18
The contested leather bags overlap with some of the opponent’s goods such as handbags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested goods in Class 25
The contested shoes; clothing, apparel are identically protected by the earlier mark, with slight differences in the wording (clothing, footwear).
- 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. The degree of attention will be average.
- The signs
xyz | XYZ |
Earlier trade mark | Contested sign |
Both signs are word marks and therefore, it is irrelevant whether they are depicted in lower or upper case. The signs are identical.
- Global assessment, other arguments and conclusion
The signs were found to be identical and the contested goods are also identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier European Union trade mark registration No 6 829 345 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)(a) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(b) 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
Benjamin Erik WINSNER | Begoña URIARTE VALIENTE | Boyana NAYDENOVA |
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.