OPPOSITION No B 2 725 490

Sprinter Megacentros Del Deporte, S.L., Polígono Vizcarra, Nave 17, 03290 Elche (Alicante), Spain (opponent), represented by Urquhart-Dykes & Lord Llp, Arena Point Merrion Way, Leeds Leeds LS2 8PA, United Kingdom (professional representative)

a g a i n s t

Suixi Aesop Enterprise Co. Ltd, No#19 Jin Gui Road Suixi Industrial Zone, Huaibei City, Anhui Province, People´s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 20/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 725 490 is partially upheld, namely for the following contested goods:

Class 18: Fur; travelling trunks; canvas bags; school bags; shopping bags; backpacks; pocket wallets; handbags; umbrellas; canes.  

Class 25: Underwear; children's clothing; clothing; layettes [clothing]; shoes; hats; hosiery; gloves [clothing]; scarfs; girdles.  

2.        European Union trade mark application No 15 239 321 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 239 321, based on European Union trade mark registration No 11 403 888. The opponent invoked Article 8(1)(b) and 8(5) 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

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; vanity cases; holdalls, back packs and rucksacks; wallets, key cases, purses and pouches; credit card cases, tote bags, bottle bags, record bags, book bags; handbags; sports bags; sports holdalls; shopping bags; luggage and suitcases; weekend bags; jewellery rolls; attaché cases and briefcases; parts and fittings for all the aforesaid goods.

Class 25 Clothing; footwear; headgear; belts. 

Class 28 Gymnastic and sporting articles and equipment; games and playthings; parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 16: Paper; towels of paper; note books; printed publications; staplers for offices; clips for offices; writing instruments; self-adhesive tapes for stationery or household purposes; modelling paste; printed teaching materials.  

Class 18: Fur; travelling trunks; canvas bags; school bags; shopping bags; backpacks; pocket wallets; handbags; umbrellas; canes.  

Class 25: Underwear; children's clothing; clothing; layettes [clothing]; shoes; hats; hosiery; gloves [clothing]; scarfs; girdles.  

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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 16

Paper; towels of paper; note books; printed publications; staplers for offices; clips for offices; writing instruments; self-adhesive tapes for stationery or household purposes; modelling paste; printed teaching materials comprise paper, goods made of paper, printed matter and office requisites. These goods have no points of connection with any of the opponent´s goods in Classes 18, 25 or 28 which basically comprise leather, imitations of leather and certain goods made of those materials as well as wallets, bags, luggage, umbrellas, parasols or walking sticks in Class 18, clothing, footwear and headgear in Class 25 and toys, games and sports equipment in Class 28. They clearly have different nature, purpose and commercial origin. They are distributed through different channels and are neither complementary nor in competition. They are therefore dissimilar.  

Contested goods in Class 18

The contested fur is synonym with the opponent´s hides, and the contested canes to walking sticks. The contested travelling trunks are included in the opponent´s broader category trunks and the contested pocket wallets in the category of wallets. Shopping bags; backpacks; handbags and umbrellas are identically included in the opponent´s list of goods. Finally, the contested canvas bags; school bags overlap with the opponent’s handbags. For these mentioned reasons, the goods are respectively identical.

Contested goods in Class 25

Clothing is identically listed in both list of goods under comparison, and the contested underwear; children's clothing; layettes [clothing]; hosiery; gloves [clothing]; scarfs; girdles are included in the opponent´s broader category clothing and therefore, they are identical.

The contested shoes; hats are included in the opponent´s broader categories footwear and headgear respectively. They are therefore 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 with an average level of attention.

3. The signs

DAFOR
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).

As word marks, none of the signs has elements which could be considered more dominant than others.

None of the signs has, or will be associated, with a particular meaning. Therefore, they have no elements that could be considered more distinctive than others.

As none of the signs has a meaning, a conceptual comparison is not possible. For this reason, the conceptual aspect does not influence the assessment of the similarity of the signs

Visually and aurally, the signs coincide in the letters or phonemes ‘DA-FO-R’ and differ in the additional letters or phonemes ´S´ and ´U´ of the contested sign which are not present in the earlier sign.

Visually the signs also slightly differ in the representation in bold grey characters of the contested sign. However, this stylisation has not much impact as the public does not tend to analyse the signs and will more easily refer to the signs in question by their verbal element than by describing its stylisation.

Therefore, the signs are visually and aurally highly 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim. 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 contested goods are partially identical and partially dissimilar to the opponent´s goods. As to the comparison of the signs, it has been concluded above that they are visually and aurally similar to a high degree. From the conceptual perspective it is not possible to distinguish them as none of the signs convey a meaning. Therefore, with this in mind and taking into account the average degree of attention of the public and the normal degree of distinctiveness of the earlier mark, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

Consequently the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 11 403 888. It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The opposition is not successful insofar as based on Article 8(1)(b) EUTMR and directed at the rest of the contested dissimilar goods as similarity of goods and services is a necessary condition for the application of this article.

Therefore, the analysis of the opposition continues on the basis of Article 8(5) EUTM in relation to those contested dissimilar goods.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 06/07/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 11/11/2016. However, the opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

André BOSSE

Ana MUÑIZ RODRIGUEZ

Loreto URRACA LUQUE

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.