OPPOSITION No B 2 235 060

King.com Limited, Aragon House Business Centre, Dragonara Road, St. Julians STJ 3140, Malta (opponent), represented by Noerr Alicante IP, S.L., Avenida México 20, 03008 Alicante, Spain (professional representative)

a g a i n s t

Jose Luis Mazo Lerdo de Tejada, Gran Vía Juan Carlos I, 42, 26002 Logroño, Spain (applicant), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 235 060 is upheld for all the contested goods.

2.        European Union trade mark application No 11 809 779 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 809 779. The opposition is based on European Union trade mark registration No 11 540 201. 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 and services on which the opposition is based are, inter alia, the following:

Class 25:        Clothing, footwear, headgear; anti-sweat underwear; aprons [clothing]; ascots; babies' pants [clothing]; bandanas [neckerchiefs]; bath robes; bath sandals; bath slippers; bathing caps; bathing trunks; beach clothes; beach shoes; belts [clothing]; berets; bibs, not of paper; boas [necklets]; bodices [lingerie]; boot uppers; boots; boots for sports; brassieres; breeches for wear; camisoles; cap peaks; caps [headwear]; chasubles; clothing; clothing for gymnastics; clothing of imitations of leather; clothing of leather; coats; collar protectors; combinations [clothing]; corselets; corsets [underclothing]; cuffs; cyclists' clothing; detachable collars; dress shields; dresses; dressing gowns; ear muffs [clothing]; esparto shoes or sandals; fishing vests; fittings of metal for footwear; football boots; footmuffs, not electrically heated; footwear; footwear uppers; fur stoles; furs [clothing]; gabardines [clothing]; gaiter straps; galoshes; garters; girdles; gloves [clothing]; gymnastic shoes; half-boots; hat frames [skeletons]; hats; headbands [clothing]; headgear for wear; heelpieces for footwear; heelpieces for stockings; heels; hoods [clothing]; hosiery; inner soles; jackets [clothing]; jerseys [clothing]; jumper dresses; knitwear [clothing]; lace boots; layettes [clothing]; leg warmers; leggings [trousers]; liveries; maniples; mantillas; masquerade costumes; miters [hats]; mittens; money belts [clothing]; motorists' clothing; muffs [clothing]; neckties; non-slipping devices for footwear; outerclothing; pants; paper clothing; paper hats [clothing]; parkas; pelerines; pelisses; petticoats; pocket squares; pockets for clothing; ponchos; pullovers; pyjamas; ready-made clothing; ready-made linings [parts of clothing]; sandals; saris; sarongs; sashes for wear; scarfs; shawls; shirt fronts; shirt yokes; shirts; shoes; short-sleeve shirts; shoulder wraps; shower caps; singlets; ski boots; ski gloves; skirts; skorts; skull caps; sleep masks; slippers; slips [undergarments]; smocks; sock suspenders; socks; soles for footwear; spats; sports shoes; stocking suspenders; stockings; studs for football boots; stuff jackets [clothing]; suits; suspenders; sweat-absorbent stockings; sweaters; swimsuits; teddies [undergarments]; tee-shirts; tights; tips for footwear; togas; top hats; topcoats; trousers; turbans; underpants; underwear; uniforms; veils [clothing]; vests; visors [headwear]; waterproof clothing; welts for footwear; wet suits for water-skiing; wimples; wooden shoes.

The contested goods are the following:

Class 25:        Ready-made clothing for men, women and children, namely footwear.

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

The specification of ready-made clothing for men, women and children, namely footwear would require interpretation to determine the exact scope of protection as the term ‘namely’ is used in the applicant´s list of goods, which is usually used to show the relationship of individual goods and services with a broader category and is exclusive and restricts the scope of protection only to the specifically listed goods.

However, irrespective of the possible interpretations, since the earlier mark covers footwear and clothing these contested goods are identically covered by the earlier mark.

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 considered to be 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). 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 common element ‘SWEET’ is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘SWEET’ contained in both signs will be understood as ‘having the pleasant taste characteristic of sugar or honey; not salty, sour, or bitter’ by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

Moreover, the aforementioned element is the most eye-catching and hence the dominant element in the contested mark. The other verbal elements of the contested mark, namely ‘de MAZO’, will not be understood by the relevant public and are distinctive, too.

Both signs are composed of distinctive verbal elements and less distinctive figurative elements of a purely decorative nature (background, stylization). Therefore, the respective verbal elements are more distinctive than the figurative elements.

Conceptually, the signs are highly similar for the relevant public for whom the element ‘SWEET’ has the above described meaning and the contested sign’s ‘de MAZO’ has none.

Visually and aurally, the signs coincide in the distinctive element ‘SWEET’, which is also the dominant one in the contested sign. However, they differ in their respective stylizations (stylized script and colours in the earlier mark and grey rectangle in the contested sign) as well as in the contested sign’s additional verbal elements ‘de MAZO’ and in the exclamation mark of the earlier right.

Therefore, the signs are visually similar to an average degree and aurally to a high degree.

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

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 goods were found to be identical and the earlier sign’s only verbal element plays an independent distinctive and even dominant role at the beginning of the contested sign. The different stylizations are not enough no safely distinguish between the signs because they are neither sophisticated nor do they distract or make the verbal elements illegible. Therefore, a likelihood of confusion exists.

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Account is also 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).

While it is true that the conflicting goods are fashion items generally bought at sight, it remains that they also may be ordered orally, for example when asking the shop assistant for a specific brand or making telephone inquiries at different shops. Given that the signs are visually similar to an average degree and phonetically highly similar, there is a risk that the relevant public might assume a common commercial origin of the goods at issue (05/09/2013, R 668/2010-4, S WEAR, § 33). This is even more the case for the English-speaking public because the marks are even conceptually highly similar for this part of the relevant public.

The applicant refers to a previous decision 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.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decision submitted to the Opposition Division is to some extent factually similar to the present case, the outcome may not be the same. The cited decision is not directly comparable with the present case because, for example, the coinciding element in that case is not dominant (contrary to the present case) and it is almost illegibly stylized.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part 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 the opponent’s European Union trade mark registration No 11 540 201. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Beatrix STELTER

Swetlana BRAUN

Claudia MARTINI

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.