OPPOSITION No B 2 374 901

F. Engel K/S, Norgesvej 12, 6100 Haderslev, Denmark (opponent), represented by Andersen Partners, Jernbanegade 31, 6000 Kolding, Denmark (professional representative)

a g a i n s t

Engel GmbH, Wörthstr 155, 72793 Pfullingen, Germany (holder), represented by Kurz Pfitzer Wolf & Partner Rechtsanwälte mbB, Königstr. 40, 70173 Stuttgart, Germany (professional representative).

On 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 374 901 is upheld for all the contested goods.

2.        International registration No 1 178 629 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 178 629. The opposition is based on European Union trade mark registrations No 10 631 455 and No 10 631 448. 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 European Union trade mark registration No 10 631 448.

1. The goods

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

Class 25: Clothing, footwear, headgear; Workwear, casual wear, uniforms, waterproof clothing, socks, underwear, gloves, belts (clothing), braces for clothing (suspenders), scarves, overgarments, rainwear, windwear, shirts, trousers, jackets, skirts, tee-shirts, sweat shirts, knitwear (clothing), neckties.

The contested goods are the following:

Class 25:        Clothing; shoes; headgear for wear.

Contested goods in Class 25

Clothing; headgear for wear are identically contained in both lists of goods (including synonyms).

The contested shoes are included in the broad category of the opponent’s footwear. Therefore, they are 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 found to be identical are directed at the public at large.

The degree of attention is average.

The holder claims that the degree of attention of the relevant public is high, since articles of clothing are often prestigious goods. Firstly, the comparison of the goods must be based on the wording indicated in the respective lists of goods. Any actual or intended use not stipulated in the list of goods is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Nothing in the list of goods indicates that these are luxury products.

Secondly, the fact that some of the relevant goods may belong to the category of luxury, prestigious clothing, footwear and headgear cannot lead to the conclusion that the degree of attention of the public as a whole is high in respect of everyday goods for mass consumption.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element ‘ENGEL’ is meaningless in certain territories, such as French-, Italian- and Polish-speaking territories. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-, Italian- and Polish-speaking parts of the public.

When assessing the similarity of the signs, an analysis of whether coinciding and differentiating components are descriptive, allusive or otherwise weak in the perception of the relevant public is carried out to determine the extent to which these components have a lesser or greater capacity to indicate commercial origin.

The earlier mark is a figurative mark composed of one verbal element, ‘ENGEL’, written in standard bold characters, slightly italicised.

The element ‘ENGEL’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark composed of a verbal element, ‘ENGEL’, written in standard bold characters, slightly italicised, and an abstract figurative element in the form of interlaced curved red and blue lines.

As in the earlier mark, the verbal element ‘ENGEL’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

Since the verbal element and the figurative element are equally prominent and eye-catching, the contested sign has no elements that could be considered clearly more dominant than other elements.

However, 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). Therefore, in the present case the verbal element has a stronger impact on the overall impression created by the contested sign.

Visually, the signs coincide entirely in their distinctive verbal elements, ‘ENGEL’. These are stylised in particular ways in both signs, yet their depictions are rather standard and similar. However, they differ in the figurative element of the contested sign, which will have a lesser impact on consumers than the verbal element of the sign, as explained above.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in the different languages of the public under consideration, the pronunciation of the signs coincides completely.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public under consideration. 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.

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.

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 (recital 8 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).

The contested goods are identical to the opponent’s goods. For the public under consideration, the signs are visually highly similar and aurally identical, and the conceptual aspect does not influence the assessment of the similarity of the signs. The degree of attention of the relevant public is average.

The Opposition Division is of the opinion that the overall similarities between the signs and the identity between the goods are clearly sufficient for there to be a likelihood of confusion on the part of the public under consideration.

The holder refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the holder are not relevant to the present proceedings because the coinciding word elements were meaningful for the relevant public and had a low degree of distinctive character, if any, in relation to the relevant goods/services or there were clearly discernible visual differences between the signs under comparison, unlike in the present case.

In its observations, the holder argues that it has prior rights to the word ‘Engel’, since its company, Engel GmbH, has existed and has been producing clothing since 1990. In this regard it must be noted that the right to an EUTM begins on the date when the EUTM application was filed or on its claimed priority date, and not before. This applies by analogy to international registrations designating the European Union. Therefore, in opposition proceedings, this is the valid date to be taken into account.

Considering all the above, there is a likelihood of confusion on the part of the French-, Italian- and Polish-speaking parts of the public. 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 European Union trade mark registration No 10 631 448. It follows that the contested trade mark must be refused protection in respect of the European Union for all the contested goods.

As earlier European Union trade mark registration No 10 631 448 leads to the success of the opposition and to the refusal of protection in respect of the European Union for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 holder 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

Frédérique SULPICE

Anna ZIÓŁKOWSKA

Martina GALLE

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.