OPPOSITION No B 2 505 355

Calida Holding AG, Bahnstr., 6208 Oberkirch, Switzerland (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Zunjiang International Trade Co Ltd, c/o eDressit, 130 Wigmore Street, London W1U 3SB, United Kingdom (applicant), represented by Clarke Willmott, Burlington House, Botleigh Grange Business Park, Hedge End, Southampton, Hampshire SO30 2AF, United Kingdom (professional representative).

On 26/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 505 355 is partially upheld, namely for the following contested goods and services:

Class 18: Bags, brief cases, handbags, key cases, wallets, purses.

Class 25: Clothing, footwear, headgear; underwear; outerwear; dresses; shirts; jackets; trousers; skirts; jumpers; pullovers; sweaters; t‑shirts; tops; coats; capes; shoes; sandals; hats; caps.

Class 35: Retail services relating to the sale of clothing, underwear, outerwear, dresses, shirts, jackets, trousers, skirts, jumpers, pullovers, sweaters, t‑shirts, tops, coats, capes.

2. Community trade mark application No 13 528 617 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 13 528 617, namely against some of the goods and services in Classes 18 and 35 and against all the goods in Class 25. The opposition is based on Community trade mark registration No 177 956. The opponent invoked Article 8(1)(b) CTMR.

PRELIMINARY REMARK

On 08/04/2015, the opponent filed a notice of opposition in which it invoked only Article 8(1)(b) CTMR and clearly stated that the opposition is based on some of the goods for which the earlier trade mark is registered, namely clothing in Class 25.

In the documents submitted on 03/09/2015, the opponent invoked Article 8(5) CTMR as an additional ground of its opposition and referred to Classes 24 and 25 as the basis of the opposition.

However, the opponent did not invoke Article 8(5) CTMR and did not base its opposition on the goods in Class 24 within the opposition period set by Article 41(1) CTMR.

Therefore, the new ground and basis of the opposition claimed by the opponent beyond the opposition period will not be taken into account by the Opposition Division.

The examination of the opposition will continue regarding Article 8(1)(b) CTMR on the basis of the goods explicitly mentioned in the notice of opposition, namely clothing in Class 25.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods and services

The goods on which the opposition is based are the following:

Class 25: Clothing.

The contested goods and services are the following:

Class 18: Leather and imitations of leather; bags, brief cases, handbags, key cases, wallets, purses.

Class 25: Clothing, footwear, headgear; underwear; outerwear; dresses; shirts; jackets; trousers; skirts; jumpers; pullovers; sweaters; t-shirts; tops; coats; capes; shoes; sandals; hats; caps.

Class 35: Retail services relating to the sale of leather and imitations of leather, bags, brief cases, handbags, key cases, wallets, purses, clothing, footwear, headgear, underwear, outerwear, dresses, shirts, jackets, trousers, skirts, jumpers, pullovers, sweaters, t-shirts, tops, coats, capes, shoes, sandals, hats, caps, fashion accessories.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 18

Clothing in Class 25 is used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

Bags, brief cases, handbags, key cases, wallets, purses are related to clothing in Class 25. This is because consumers are likely to consider the first as complementary accessories to articles of outer clothing. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing to directly produce and market the abovementioned contested goods. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

Leather and imitations of leather in Class 18 are various kinds of animal skins (or imitations thereof). These are raw materials. It should be noted that the mere fact that one type of goods is used for the manufacture of another (for example, clothing made of leather) is not sufficient in itself to conclude 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 and have different natures and purposes from those of clothing. These goods are therefore dissimilar.

Contested goods in Class 25

Clothing is identically contained in both lists of goods and services.

The contested underwear; outerwear; dresses; shirts; jackets; trousers; skirts; jumpers; pullovers; sweaters; t-shirts; tops; coats; capes are included in the broad category of the opponent’s clothing. Therefore, they are identical.

Footwear serves the same purpose as clothing: both are used to cover and protect various parts of the human body against the elements and are also articles of fashion. They are often found in the same retail outlets. Consumers, when seeking to purchase clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the contested footwear, shoes; sandals are similar to the opponent’s clothing.

Headgear and clothing are of an identical or very similar nature. They also serve the same purpose, in particular as regards types of clothing which are supposed to give some protection against the elements. Furthermore, headgear is not only seen as a means for protecting the head against weather influences, but also as a fashion article which may match an outfit and for this reason is sometimes chosen as a complementary item to clothing. Moreover the distribution channels of the respective goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, the contested headgear; hats; caps are considered similar to the opponent’s clothing.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services relating to the sale of clothing, underwear, outerwear, dresses, shirts, jackets, trousers, skirts, jumpers, pullovers, sweaters, t‑shirts, tops, coats, capes are similar to a low degree to the opponent’s clothing.

The contested retail services relating to the sale of leather and imitations of leather, bags, brief cases, handbags, key cases, wallets, purses, footwear, headgear, shoes, sandals, hats, caps, fashion accessories and the opponent’s clothing are dissimilar. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

2. 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 and services found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is average.

3. The signs

CALIDA	CARLYNA
Earlier trade mark	Contested sign

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The relevant territory is the European Union. The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the relevant public.

The signs have no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘CA*L**A’. They differ in the fourth and fifth letters of the earlier mark, ‘ID’, and in the letters ‘R’ and ‘YN’ of the contested sign. Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CA*L**A’, present identically in both signs. The letters ‘I’ in the earlier mark and ‘Y’ in the contested sign will be pronounced in a highly similar manner by the German public, and the letter ‘R’ in the contested sign does not have a strong pronunciation, as it is placed between the vocal ‘A’ and the consonant ‘L’. The most significant difference in the pronunciations of the signs is in the sound of the letters ‛D’ of the earlier sign and ‘N’ in the contested mark. Both signs are composed of three syllables. They have a highly similar vocal sequence and the same intonation. Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as a result of its long standing and intensive use in the European Union in connection with the goods on which the opposition is based, namely clothing. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted, in particular, the following evidence:

• Affidavit issued on 25/07/2013 by Ms Karin Stäbler, Managing Director of Reich Online Services GmbH, stating that the company has made large-scale purchases of merchandise labelled with the trade mark ‘CALIDA’, especially daywear for women and men, sleepwear for women, men and children and swimwear for women and men, and has resold it to end customers online and in the shop in Rosenheim, Germany. Between 2006 and 2011, Reich Online Services GmbH purchased goods labelled ‘CALIDA’ for a total value of EUR 6 654 872.81.

• Survey entitled ‘Brand Awareness of Underwear’ carried out during the period 2006-2007 by Marplan, Ipsos GmbH, Sinus Sociovision GmbH and ISBA Informatik Service-GmbH. This survey was carried out in Germany on 10 167 respondents aged 14-64 years. The results of the survey show that 31% of the German public knows the earlier mark, ‘CALIDA’, 8% own one or more pieces of underwear labelled with that brand and 9% would purchase or repurchase ‘CALIDA’ underwear.

Having examined the material listed above, taking into account the large volume of sales over several years and the brand awareness in Germany, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the German market, at least for underwear.

5. Global assessment, other arguments and conclusion

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.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17 et seq.).

The relevant goods and services are partly identical and partly similar to varying degrees and partly dissimilar.

The signs are visually and aurally similar to an average degree for the reasons mentioned in section c) of this decision. Moreover, the earlier mark has an enhanced degree of distinctiveness and the degree of attention paid by the relevant public is average.

Regarding the differences in the marks’ letters, which have a significant impact on the visual comparison, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

In addition, since the signs are word marks and do not convey any meaning, there are no further visual characteristics or meanings that can separate the signs in the consumers’ minds.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Community trade mark registration. 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.

In relation to the goods and services that are similar to a low degree, according to the case law, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). The average degree of visual and aural similarity between the signs and the enhanced distinctiveness of the earlier mark outweigh the low degree of similarity between some of the goods and services, and, therefore, a likelihood of confusion also exists in relation to these goods and services.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Maria Belen IBARRA DE DIEGO

Alexandra APOSTOLAKIS

Sigrid DICKMANNS

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.