OPPOSITION No B 2 702 440

Kaufland Warenhandel GmbH & Co. KG, Rötelstr. 35, 74172 Neckarsulm, Germany (opponent), represented by Boehmert & Boehmert Anwaltsparnerschaft MBB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Thymen François, Kapellaan 13, 8301 Knokke-Heist (Duinbergen), Belgium (applicant), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 702 440 is partially upheld, namely for the following contested goods and services:

Class 25:  Articles of clothing, Headgear, Footwear; Shirts, Sweat shirts, Casual jackets, Casual jackets, Rainwear, Snowsuits, Knickers, Knickers, Short pants [clothing], Denim jeans, Suits, Tank tops, Rainwear, Cloth bibs, Skirts, Coveralls, Gowns, Stocking suspenders, Sweaters, Athletic uniforms, Warm-up suits, Running Suits, Footwear, Boots, Athletic shoes, Sandals, Booties, Slipper socks, Maillots, Scarves, Robes, Boxer shorts, Socks, Tee-shirts; Hats, caps, sun visors, sleepwear, pyjamas, slippers, underwear, lingerie, wrist bands, head bands, ties, robes; Masquerade and Halloween costumes; Footwear and headwear for babies and toddlers; Articles of clothing for babies and toddlers.

Class 35:  Retailing in relation to the sale of men's, women's and children's clothing, headgear, underwear, ties, belts and socks, textile goods for personal use.

2.        European Union trade mark application No 14 921 217 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 all the goods and services of European Union trade mark application No 14 921 217 for the figurative mark, .The opposition is based on international trade mark registration No 1 134 210 designating the European Union for the figurative mark . 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.

1. The goods and services

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

Class 24: Handkerchiefs of textile.

Class 25: Clothing; casual clothes; shirts, jackets (clothing), trousers, sweaters, shorts, jeans, suits, waterproof clothing, sleep masks, ear muffs (clothing), collar protectors, gloves (clothing), scarves, suspenders, socks, underwear, pyjamas, dressing gowns, swimwear, hosiery, gloves, belts, coats, parkas, waistcoats, tee-shirts, all aforementioned goods as far as not included in other classes; headgear for wear.

The contested goods and services are the following:

Class 14: Watches, clocks, and horological instruments; Watchstraps; Jewellery and imitation thereof; Alloys of precious metal; Cuff links; Tie pins, tie slides and key rings; Jewellery, precious stones; Time instruments; parts and fittings for all the aforesaid goods.

Class 25: Articles of clothing, Headgear, Footwear; Shirts, Sweat shirts, Casual jackets, Casual jackets, Rainwear, Snowsuits, Knickers, Knickers, Short pants [clothing], Denim jeans, Suits, Tank tops, Rainwear, Cloth bibs, Skirts, Coveralls, Gowns, Stocking suspenders, Sweaters, Athletic uniforms, Warm-up suits, Running Suits, Footwear, Boots, Athletic shoes, Sandals, Booties, Slipper socks, Maillots, Scarves, Robes, Boxer shorts, Socks, Tee-shirts; Hats, caps, sun visors, sleepwear, pyjamas, slippers, underwear, lingerie, wrist bands, head bands, ties, robes; Masquerade and Halloween costumes; Footwear and headwear for babies and toddlers; Articles of clothing for babies and toddlers.

Class 35: Retailing in relation to the sale of men's, women's and children's clothing, footwear, headgear, underwear, ties, belts and socks, bags, travel bags, backpacks, credit card cases, wallets, purses, textile goods for home or personal use, sheets and pillowcases, duvet covers, sheets, blankets, pillowcases or ticks; Retailing in relation to the sale of towels, cologne, perfumes, cosmetics, skin preparations, bath and shower preparations, soaps, deodorants and antiperspirants for personal use, watches, clocks, jewellery and imitations thereof, cuff links, tie pins, key rings, books, magazines, spectacles, frames for spectacles and sunglasses.

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 14

The contested watches, clocks, and horological instruments; watchstraps; jewellery and imitation thereof; alloys of precious metal; cuff links; tie pins, tie slides and key rings; jewellery, precious stones; time instruments; parts and fittings for all the aforesaid goods are dissimilar to the opponent’s goods in Classes 24 and 25. Although some of these goods might have some distant link to the fashion market, the mere fact that someone might want to match the contested goods and the opponent’s goods in Classes 24 and 25 is not sufficient to conclude that these goods are complementary and, therefore, similar. Goods can only be considered complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other and is not merely ancillary. In the present case, these conditions are not fulfilled. Furthermore, the nature and method of use of these goods is different. They are not in competition with each other. The production of these goods involves different expertise, they do not belong to the same category of goods and they are not regarded as components of a general array of goods that potentially have the same commercial origins.

Contested goods in Class 25

The contested articles of clothing are identically contained in both lists of goods (including synonyms).

The contested headgear is identically contained in both lists of goods (including synonyms).

The contested shirts, sweat shirts, casual jackets (mentioned twice),  rainwear, cnowsuits, knickers (mentioned twice) short pants [clothing], denim jeans, suits, tank tops, rainwear, cloth bibs, skirts, coveralls, gowns, stocking suspenders, sweaters, athletic uniforms, warm-up suits, running suits, slipper socks, maillots, scarves, robes, boxer shorts, socks, tee-shirts; sleepwear, pyjamas, slippers, underwear, lingerie, wrist bands, , ties, robes; masquerade and Halloween costumes; articles of clothing for babies and toddlers are either identically reproduced in the earlier specification and/or are clothing articles that are included in the general specification of the opponent’s goods, clothing  in Class 25. These goods are therefore identical.

The contested hats, caps, sun visors; head bands; headwear for babies and toddlers are all headgear articles that are included in the opponent’s broader category of headgear for wear in Class 25. These goods are therefore identical.

The contested footwear (mentioned twice); boots, athletic shoes, sandals, booties, footwear for babies and toddlers serve the same purpose as the opponent’s clothing in Class 25: 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 goods are similar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those 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 retailing in relation to the sale of men's, women's and children's clothing, headgear, underwear, ties, belts and socks, textile goods for personal use are similar to a low degree to the opponent’s goods in Classes 24 and 25.

The contested retailing in relation to footwear; textile goods for home; bags, travel bags, backpacks, credit card cases, wallets, purses,  sheets and pillowcases, duvet covers, sheets, blankets, pillowcases or ticks; retailing in relation to the sale of towels, cologne, perfumes, cosmetics, skin preparations, bath and shower preparations, soaps, deodorants and antiperspirants for personal use, retailing in relation to the sale of watches, clocks, jewellery and imitations thereof, cuff links, tie pins, key rings, books, magazines, spectacles, frames for spectacles and sunglasses are not similar to the opponent’s goods in Classes 24 and 25. Apart from being different in nature, since 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 goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services 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 various degrees) are directed at the public at large.

The degree of attention is average.

3. The signs

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.  In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier mark is a figurative mark composed of the word ‘YOUNG’, written in a slightly stylised, bold, italic typeface and followed by an exclamation mark, placed inside a rectangular background depicting children.

The contested sign is a figurative mark composed of the stylised, title case word ‘YOUNG’ preceded by the number ’2’, included in a black rectangular frame. There is a figurative non-further-definable element inserted in a frame (square) with a black and white background on the left side, as shown above.

The common element ’YOUNG’ does not have any meaning for the Spanish-speaking part of the relevant territory. It is a distinctive term in relation to the goods and services at stake.

The element ‘2’ in the contested sign is a weak element, since it could refer to the fact that the goods are for children of 2 years old.

The conflicting signs do not have any elements that could be considered more dominant (visually eye-catching) than other elements.

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). Furthermore, it is important to point out that the figurative element in the earlier mark of some children can also be considered a weak element, since it refers to the target public of the goods.

Visually, the signs coincide in the distinctive word element ‘YOUNG’. On the other hand, they differ in the exclamation mark and the figurative element of the earlier mark, a weak element, and the stylisation and figurative elements of the contested sign, as described above.

The signs are, therefore, visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘YOUNG’, present identically in both signs. The pronunciation differs in the sound of the number ‘2’ of the contested sign, which is a weak element. The exclamation mark in the earlier mark is unlikely to affect the emphasis of the earlier mark when pronounced.

The signs are therefore aurally similar to a high degree.

Conceptually, a part of the relevant public might see the number ’2’ in the contested sign. Nevertheless, this concept, as pointed out above, is a weak element and does not alter the fact that the signs share the element ’YOUNG’ with no meaning. The figurative element in the earlier mark, albeit weak, refers to the concept of children.

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.

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.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. 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 (eighth recital 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).

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 goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, Lloyd Schuhfabrik, § 20; Sabèl, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

As has been concluded above, the contested goods and services are partly identical, partly similar (to various degrees) and partly dissimilar. The goods and services are directed at the public at large with a degree of attention that is considered to be average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. Additionally, the marks in dispute have been found visually similar to an average degree, aurally to a high degree and conceptually not similar.

Furthermore, account also must 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).

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those services that are similar even only to a low degree. The similarity of the signs outweighs the low similarity of these services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s international registration designating the European Union. 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.

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 various 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) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

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

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

Saida CRABBE

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.