OPPOSITION No B 2 354 747

MAC Mode GmbH & Co. KGaA, Industriestr. 2, 93192 Wald/Roßbach, Germany (opponent), represented by Ruttensperger Lachnit Trossin Gomoll Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Arnulfstrasse 58, 80335 München, Germany (professional representative)

a g a i n s t

Guangzhou Feng Ping Computer Co.,Ltd, First Floor,38th Building,Yuangan 4th street, Hechen Xin Er Dui, Shiling Town, Huadu District, Guangzhou, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center VERTAS Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 354 747 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 12 647 103, namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 12 451 951. 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

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

Class 25:        Clothing, apparel, especially pants and denim pants.

The contested goods are the following:

Class 18:        Luggage, bags, wallets and other carriers; Saddlery, whips and animal apparel; Sausage skins and imitations thereof; Umbrellas and parasols; Walking sticks.

Class 25:        Clothing; Footwear; Headgear.

As a preliminary remark, it should be noted that the English translation of the opponent’s goods does not reflect the original list. In particular, the original German list of opponent’s goods in Class 25 contains only the word Bekleidung which has been translated into English as clothing, apparel. In cases of discrepancy between the language versions, the definite version of the list of goods should be the text in the first language if the first language is one of the five languages of the Office. The Opposition Division will, therefore, examine the goods in question taking into account the original German term Bekleidung in the meaning of clothing.

An interpretation of the wording of the list of goods is also required to determine the scope of protection of these goods.

The term ‘especially’, 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 by analogy the interpretation of ‘in particular’ in 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 opponent’s 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.

The contested bags, wallets are related to articles of clothing in Class 25. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of outer clothing as the former are closely co-ordinated with the latter. 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 goods such as bags and wallets. Moreover, these goods can be found in the same retail outlets. Therefore, the contested bags, wallets are considered similar to the opponent’s clothing in class 25.

Furthermore, the contested other carriers in class 18 which include as a broad category e.g. sling bags for carrying babies are similar to a low degree to the opponents clothing in class 25 as they may coincide in the producer, the end user and distribution channels. It is e.g. not unusual for specialised retail outlets to sell both infant’s carriers and children’s or maternity clothing.

 

Luggage refers to suitcases or other bags in which personal belonging are packed for travelling. Umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; parasols are light umbrellas carried as protection from the sun; walking sticks are canes or other staffs used as an aid in walking. Saddlery, whips and animal apparel include, inter alia, equipment for horses, such as saddles and harnesses, instruments used for driving animals and all kind of garments used to dress and/or decorate animals. Sausage skins and imitations thereof refer to the material that encloses the filling of a sausage. The nature of these goods is very different from that of clothing in Class 25. They serve very different purposes (e.g. storage, protection from rain/sun, help in walking, aid in the control and/or riding of animals versus covering/protecting the human body). They do not usually have the same retail outlets and they are usually not made by the same manufacturers. Consequently, the contested luggage; saddlery, whips and animal apparel; sausage skins and imitations thereof; umbrellas and parasols; walking sticks are considered dissimilar to the opponent’s clothing, especially pants and denim pants.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

Footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for 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.

Headgear and clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these 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, headgear and clothing are considered similar.

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 or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is 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 earlier sign is a figurative mark featuring the verbal element ‘MAC’. It is depicted in black, fairly standard upper case letters. For part of the public such as the English-speaking public, the word will be understood as referring to ‘Mac raincoat, especially one made from a particular kind of waterproof cloth’ (Collins English Dictionary, online edition). Bearing in mind the relevant goods, this element is weak for this part of the public. On the other hand, the Romanian and Bulgarian public will associate the term with a poppy flower and greasy substances respectively. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. Likewise, for the remaining part of the public, for which it has no meaning, it is also distinctive.

As regards the contested sign, it is a figurative mark containing the verbal element ‘KINMAC’ written in black, slightly stylised upper case letters. The verbal element has no meaning for the relevant public and is, therefore, distinctive.

It cannot be generally assumed that the elements of difference between the marks would tend to become less marked in the consumer’s memory in favour of the elements of similarity. In accordance with settled case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 84).

Visually, the signs coincide in the letters ‘MAC’. However, they differ in the letters ‘KIN’ which have no counterparts in the earlier sign, and the slight, yet perceptible stylisation of the contested sign. Although the contested sign includes entirely the earlier mark, it is important to note that the letters ‘MAC’ appear in the final part of the verbal element ‘KINMAC’, which is the part that catches less attention of the reader, because the public reads from left to right. Consequently, the signs are considered similar to a low degree, irrespective of whether the word ‘MAC’ is distinctive or weak.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛MAC’, present identically in both signs. The pronunciation differs in the sound of the letters ‛KIN’ of the contested mark, which have no counterparts in the earlier sign; and applying the same logic as stated above in the visual comparison, this part will catch more of the listener’s attention. Therefore, the signs are similar to a low degree, irrespective of whether the word ‘MAC’ is distinctive or weak.

Conceptually, for the part of the public for which neither of the signs has a meaning, the conceptual comparison is not possible. For the remaining part of the public the signs are not similar. Although the coinciding letter string ‘MAC’ may be associated with a concept in parts of the relevant territory, it is not sufficient to establish any conceptual similarity, because the contested sign will be perceived as a whole, that is, as the fanciful term ‘KINMAC’; and the public will not proceed to analyse its various details.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark will be seen as low for the goods in question and for a part of the relevant public, namely the English-speaking public. However, the mark has a normal degree of distinctiveness for the goods in question from the perspective of the remaining public in the relevant territory.

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).

The goods covered by the trade marks in dispute are partly identical, partly similar to various degrees and partly dissimilar. They target the public at large. However, in the present case, the identity or similarity of the goods cannot be offset by the tenuous similarity of the signs which have only been considered similar to a low degree aurally and visually. Conceptually, there is no similarity between the signs. Therefore, the Opposition Division considers that the relevant public will not believe that the goods in question originate from the same company or from economically linked undertakings.

The opponent refers to the principle of interdependence which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that some of the goods are identical or similar cannot, in this case, compensate for the differences identified between the signs.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Solveiga BIEZA

Arkadiusz GORNY

Ana MUÑIZ RODRÍGUEZ

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.