OPPOSITION No B 2 709 502

Zapa, 54, rue de Lancry, 75010 Paris, France (opponent), represented by Novagraaf France, Bâtiment O2 – 2, rue Sarah Bernhardt CS 90017, 92665 Asnières-sur-Seine  France (professional representative)

a g a i n s t

José Lorenzo López Álvarez, Cuenca 3, 28938 Mostoles/Madrid, Spain (applicant), represented by Elena Javier Sanchez, Paseo de la Castellana, 123 – esc.dcha. 7°B, 28046 Madrid, Spain (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 709 502 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 058 365 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 and services of European Union trade mark application No 15 058 365. The opposition is based on European Union trade mark registration No 3 416 047 and French trade mark registration No 1 597 967. The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier rights.

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:

(1)        European Union trade mark registration No 3 416 047

Class 25: Clothing, footwear including boots, shoes and slippers, headgear.

 (2)        French trade mark registration No 1 597 967

Class 18: Leather and imitations of leather, products made of this material, not comprised in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips and saddlery

The contested goods and services are the following:

Class 18: Luggage, bags, wallets and other carriers. 

Class 25: Footwear; Waist belts.

Class 35: Retailing of footwear, belts, luggage, handbags, wallets and other carriers; Wholesaling of footwear, belts, luggage, handbags, wallets and other carriers.

An interpretation of the wording of the opponent’s list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

The contested luggage includes, as a broader category the opponent’s trunks and travelling bags. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods covered by earlier right (2).

The contested bags include, as a broader category the opponent’s travelling bags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods covered by earlier right (2).

The contested wallets and other carriers are included in the broad categories of the opponent’s leather and imitations of leather, products made of this material, not comprised in other classes covered by earlier right (2). Therefore, they are identical.

Contested goods in Class 25

The contested footwear is identically contained in the contested list of goods and services and the opponent’s list of goods of earlier right (1).

The contested waist belts are included in the broad category of the opponent’s clothing covered by earlier right (1). Therefore, they are identical.

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. The same remarks are appropriate to the wholesale services of particular goods.

Therefore, the contested services of retailing of footwear, belts, luggage, handbags, wallets and other carriers; wholesaling of footwear, belts, luggage, handbags, wallets and other carriers are similar to a low degree to the opponent’s leather and imitations of leather, products made of this material, not comprised in other classes; trunks and travelling bags covered by earlier right (2) and the opponent’s footwear and clothing covered by earlier right (1).

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 a low degree are directed at the public at large or at business customers. For instance, the wholesale services of particular goods in Classes 18 and 25 are specialised services directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness is deemed to be average.

3. The signs

ZAPA
Earlier trade marks (1) and (2)	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, for reasons of procedural economy, finds it appropriate to focus the comparison on the French-speaking part of the relevant public as regards also the European Union trade mark registration, since the common element ‘ZAPA’ of the colliding marks is not meaningful, for example, for this part of the relevant public.

The earlier trade marks ‘ZAPA’ are word marks, and the contested sign is a figurative mark consisting of the conjunct word elements ‘ZAPA’ and ‘TOP’, both in upper case latters in fanciful font, of which the letters creating the element ‘TOP’ are red, bold and slightly bigger than the grey, thinner letters of the element ‘ZAPA’. The lettering of the contested sign ‘ZAPATOP’ is placed on white background.

The element ‘ZAPA’ contained in all the marks has no meaning for the relevant public and is, therefore, distinctive.

The element ‘TOP’ of the contested sign will be understood as ‘the best’ by the French-part of the relevant public (Collins French-English Dictionary, online edition), and thus will be perceived as a laudatory element that is weak for all the goods and services in question.

For this reason, the first element of the contested sign ‘ZAPA’ is more distinctive than the second weak element ‘TOP’.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘ZAPA’ constituting the earlier trade marks, and the first part of the contested sign. However, they differ in the second element of the contested sign ‘TOP’ that is weak. Moreover, the verbal element of the contested sign is incorporated in the fanciful lettering with a certain degree of stylisation, whilst the earlier trade marks are word marks.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. That is why the coinciding element ‘ZAPA’ placed at the beginning of the contested sign will be immediately noticed by the consumers when encountering the marks, even though the other element ‘TOP’ of the contested sign has a little bigger size of the lettering in red colour.

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, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ZA/PA’, present identically in all the signs. The pronunciation differs in the sound of the letters ‛TOP’ of the weak element of the contested sign which have no counterpart in the earlier signs. 

Therefore, the signs are aurally highly similar.

Conceptually, although the signs ‘ZAPA’/’ZAPATOP’ as a whole do not have any meaning for the public in the relevant territory, the element ‘TOP’, included in the contested sign, will be associated with the meaning explained above having laudatory character, and as such this element is a weak element. Therefore, 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 marks

The distinctiveness of the earlier marks 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 marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, 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).

In the present case, the contested goods and services have been found identical or similar to a low degree to the opponent’s goods covered by earlier marks (1) and (2). The earlier trade marks are deemed to have a normal degree of distinctiveness. The degree of attention of the relevant public is average.

The contested sign  coincide visually and aurally with the earlier marks in the element ‘ZAPA’ constituting the latter, and therefore a high degree of similarity between the marks can be established despite the additional differing, although weak element ‘TOP’ in the contested sign. Therefore, neither the second part ‘TOP’ of the contested sign, nor its figurative elements in the form of fanciful lettering incorporating the verbal element of the contested sign, may confer on the existing differences between the marks more significant role than the similarities found.

Furthermore, since some of the goods in question are in Class 25, it is worth mentioning here, that generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Nevertheless as concluded above, the visual differences between the signs caused by the additional verbal and figurative elements of the contested sign, are not particularly relevant when assessing the likelihood of confusion between them.

Moreover, account is 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 416 047 and French trade mark registration No 1 597 967. 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 that the contested trade mark must be rejected for all the contested goods and services.

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

Andrea VALISA	José Antonio GARRIDO OTAOLA	Michele M. BENEDETTI-ALOISI

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.