OPPOSITION No B 2 598 368

Compass Yachtzubehör Handels GmbH & Co. KG, Lüdinghauser Str. 34, 59387 Ascheberg, Germany (opponent), represented by Manitz, Finsterwald & Partner GBR, Martin-Greif-Str. 1, 80336 München, Germany (professional representative)

a g a i n s t

L-Fashion Group Oy, Tiilimäenkatu 9, 15680 Lahti, Finland (applicant), represented by Heinonen & Co, Fabianinkatu 29 B, 00100 Helsinki, Finland (professional representative).

On 03/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 598 368 is partially upheld, namely for the following contested goods:

Class 18:        Hand bags; Shoulder bags; Shopping bags; Backpacks; Purses; Wallets; Sports bags; Vanity cases, not fitted; the aforementioned goods excluding products meant for yachting and boating.

Class 25:        Clothing; Footwear; Headgear; Dressing gowns; Underwear; Parkas; Overalls; Skirts; Hats; Ski gloves; Ski boots; Sweat-absorbent underclothing; Pants; Scarves; Football boots; Non-slipping devices for footwear; Fishing vests; Gloves [clothing]; Bandanas [neckerchiefs]; Shoes; Inner soles; Ear muffs [clothing]; Bath sandals; Bath robes; Caps [headwear]; Mittens; Leggings [trousers]; Sports shoes; Wet suits for water-skiing; Dresses; Motorists' clothing; Clothing of leather; Knitwear [clothing]; Topcoats; Outer clothing; Headbands [clothing]; Shirts; Jackets [clothing]; Clogs; Suits; Pyjamas; Cyclists' clothing; Belts (Money -) [clothing]; Beach clothes; Boots; Leg warmers; Sandals; Neckties; Socks; Tights; Tee-shirts; Coats; Slippers; Quilted trousers; Quilted jackets; Bathing drawers; Bathing caps; Swimsuits; Outdoor clothing; Singlets; Clothing for gymnastics; Babies' clothing; Waterproof clothing; Sweaters; Gymnastic shoes; Belts [clothing]; the aforementioned goods excluding products meant for yachting and boating.

2.        European Union trade mark application No 14 264 014 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 14 264 014. The opposition is based on European Union trade mark registration No 433 417 and on German trade mark registration No 2 901 316. 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:

1. EUTM No 433 417

Class 9:        Life jackets, life vests, sailing vests, life lines, floatation jackets, buoyancy aids.

Class 25:        Clothing, footwear, headgear.

2. German trade mark No 2 901 316

Classes 9, 18, 25 and 28: Clothing, footwear, headgear, all aforementioned goods especially for sailors; rafts for rescue purposes, floating belts, life vests, safety restraints for securing sailors at a boat; bags, in particular sailor bags; trunks and travelling bags; umbrellas, parasols.

The contested goods are (after the limitation made by the applicant on 20/01/2016) the following:

Class 18:        Umbrellas; hand bags; shoulder bags; shopping bags; backpacks; purses; wallets; sports bags; vanity cases, not fitted; the aforementioned goods excluding products meant for yachting and boating.

Class 25:        Clothing; footwear; headgear; dressing gowns; underwear; parkas; overalls; skirts; hats; ski gloves; ski boots; sweat-absorbent underclothing; pants; scarves; football boots; non-slipping devices for footwear; fishing vests; gloves [clothing]; bandanas [neckerchiefs]; shoes; inner soles; ear muffs [clothing]; bath sandals; bath robes; caps [headwear]; mittens; leggings [trousers]; sports shoes; wet suits for water-skiing; dresses; motorists' clothing; clothing of leather; knitwear [clothing]; topcoats; outer clothing; headbands [clothing]; shirts; jackets [clothing]; clogs; suits; pyjamas; cyclists' clothing; belts (money -) [clothing]; beach clothes; boots; leg warmers; sandals; neckties; socks; tights; tee-shirts; coats; slippers; quilted trousers; quilted jackets; bathing drawers; bathing caps; swimsuits; outdoor clothing; singlets; clothing for gymnastics; babies' clothing; waterproof clothing; sweaters; gymnastic shoes; belts [clothing]; the aforementioned goods excluding products meant for yachting and boating.

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 earlier EUTM’s clothing in Class 25 is used to cover parts of the human body and protect them against the elements. Goods such as shoes, clothing, hats or handbags may, in addition to their basic function, have a common aesthetic function by jointly contributing to the external image (‘look’) of the consumer concerned. The perception of the connections between them must therefore be assessed by taking account of any attempt at coordinating presentation of that look, that is to say coordination of its various components at the design stage or when they are purchased. That coordination may exist in particular between clothing, footwear and headgear in class 25 and the various clothing accessories which complement them such as handbags in class 18. The fact that the goods are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 49-51). There is a link between the opponent’s goods and the contested hand bags; shoulder bags; shopping bags; backpacks; purses; wallets; sports bags; vanity cases, not fitted; the aforementioned goods excluding products meant for yachting and boating. This is because, as explained above, consumers are likely to consider the above-mentioned contested 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 the related contested goods. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

The remaining contested umbrellas; excluding products meant for yachting and boating, are products used to protect their users from rain while walking. Whilst their purpose is similar to that of clothing, footwear and headgear of the earlier EUTM (protect one’s body from the elements), their method of use is different. Their nature also differs and they are not commonly sold though the same distribution channels. Moreover, it is not usual for these goods to be produced by the same undertakings. These goods are thus dissimilar. Moreover, in addition to the difference in all the above mentioned factors, umbrellas do not even coincide in purpose with the earlier EUTM’s goods in Class 9. They are also dissimilar to them.

The Opposition Division notes here that the opponent filed a declaration within the meaning of Article 28(8) EUTMR in relation to the Class 25 of the EUTM 433 417. This declaration was not reflected in the Register yet but the proceedings do not have to be suspended in this case as the goods mentioned in the declaration, namely boot uppers; dress shields; fittings of metal for shoes and boots; footwear uppers; hat frames [skeletons]; heelpieces for boots and shoes; heelpieces for stockings; heels; inner soles; non-slipping devices for boots and shoes; pockets for clothing; ready-made linings [parts of clothing]; shirt fronts; shirt yokes; soles for footwear; studs for football boots [shoes]; tips for footwear; welts for boots and shoes are also dissimilar to umbrellas as they do not coincide in any of the relevant criteria. Therefore, the outcome of the comparison would not change even if those goods were taken into account.

On the other hand, umbrellas; excluding products meant for yachting and boating are included in the category umbrellas registered for the earlier German trade mark. These goods are identical.

Contested goods in Class 25

The contested clothing; footwear; headgear is included in the specification of the earlier EUTM. These goods are identical.

The contested dressing gowns; underwear; parkas; overalls; skirts; ski gloves; sweat-absorbent underclothing; pants; scarves; fishing vests; gloves [clothing]; bandanas [neckerchiefs]; ear muffs [clothing]; bath robes; mittens; leggings [trousers]; wet suits for water-skiing; dresses; motorists' clothing; clothing of leather; knitwear [clothing]; topcoats; outer clothing; headbands [clothing]; shirts; jackets [clothing]; suits; pyjamas; cyclists' clothing; belts (money -) [clothing]; beach clothes; leg warmers; neckties; socks; tights; tee-shirts; coats; quilted trousers; quilted jackets; bathing drawers; swimsuits; outdoor clothing; singlets; clothing for gymnastics; babies' clothing; waterproof clothing; sweaters; belts [clothing]; the aforementioned goods excluding products meant for yachting and boating are included in the earlier EUTM’s broad category clothing. These goods are identical.

The contested hats; caps [headwear]; bathing caps; the aforementioned goods excluding products meant for yachting and boating are included in the earlier EUTM’s broad category headgear. These goods are thus identical.

The contested ski boots; football boots; shoes; bath sandals; sports shoes; clogs; boots; sandals; slippers; gymnastic shoes; the aforementioned goods excluding products meant for yachting and boating are included in the earlier EUTM’s broad term headgear. These goods are identical.

Finally, the contested non-slipping devices for footwear and inner soles are products complementary to the earlier EUTM’s footwear. These goods are used together with footwear to enhance its quality (resistance against slippery surfaces) or to make it more comfortable to wear (inner soles). These goods are sold through the same distribution channels to the same relevant public and they are often produced by the same undertakings. Therefore, these goods are similar.

For the sake of completeness, the Opposition Division notes that, in the present case, it is not necessary to carry out the comparison of the goods protected by the earlier German trade mark with the contested goods already found identical or similar to the goods of the earlier EUTM, as will become evident from the part e) of this decision (Global Assessment).

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 will be average.

3. The signs

COMPASS Compass	COMPA
Earlier trade marks	Contested sign

The relevant territory is the European Union as regards the earlier EUTM (1) and Germany as regards the earlier German trade mark (2).

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 finds it appropriate to focus the comparison of the signs, as far as the earlier EUTM is concerned, on the Hungarian- and Greek-speaking part of the public.

All marks are word marks composed of a single word element, ‘Compass’ in the earlier marks, and ‘COMPA’ in the contested sign. The contested sign is meaningless from the perspective of all the relevant public as defined above. The earlier EUTM is meaningless for the Hungarian- and Greek-speaking relevant public. The earlier German mark will be perceived, by the relevant public, as ‘compass’, that is, an instrument that has a needle always pointing to the north and that is used to finding directions. This term is normally distinctive in relation to the relevant goods.

The marks, being word marks, do not have any elements that could be considered dominant. Likewise, they do not include any elements that could be considered more or less distinctive than other elements.

Visually, the signs coincide in the sequence of letters ‘COMPA’ that form the entire contested sign and are placed at the beginning of both earlier marks. They differ in the additional letters ‘SS’ at the end of the earlier marks. Since the contested sign is totally included at the beginning of the earlier marks, which only include an additional double letter at their end, they are considered visually similar to a high degree.  

Aurally, irrespective of the different pronunciation rules of the Greek-, Hungarian- and German-speaking public, the pronunciation of the signs coincides in the sound of the letters ‘COMPA’, present identically in all signs. The pronunciation differs in the sound of the last double ‘S’ of the earlier marks. Since the signs merely differ in the sound of the earlier sign’s last letters while they coincide in all the rest, they are aurally similar to a high degree.

Conceptually, from the perspective of Greek- and Hungarian-speaking public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this public.

From the perspective of the German-speaking public (the entire relevant public in relation to the earlier German trade mark), the earlier mark transmits the concept of ‘compass’, that is, an instrument that has a needle always pointing to the north and that is used to finding directions. The German equivalent to this English word is ‘Kompass’ and the ‘c’ and ‘k’ are, in this case, quite interchangeable for the German public. The contested sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for the German-speaking consumers.

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 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 marks are particularly distinctive by virtue of intensive use or reputation.

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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

From the perspective of the Greek- and Hungarian-speaking public, the marks are highly similar visually and aurally since they coincide in most of their letters, and the contested sign is totally included at the beginning of the earlier EUTM. The coinciding sequence is of normal distinctiveness. The marks only differ in the final double ‘S’ of the earlier EUTM. For this part of the public, the marks have no meaning and, thus, the conceptual comparison has no bearing on the assessment of the likelihood of confusion. In view of this, the marks are highly similar overall, the goods are identical and similar (with the exception of umbrellas) and the earlier EUTM has average degree of distinctiveness. Considering all the above, there is a likelihood of confusion between the earlier EUTM and the contested mark on the part of the Greek- and Hungarian-speaking part of the relevant 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 trade mark application. Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier European Union trade mark.

The rest of the contested goods are dissimilar to the goods for which the earlier EUTM is protected. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on the earlier EUTM and directed at these goods cannot be successful.

The goods found dissimilar to the goods of the earlier EUTM are umbrellas; excluding products meant for yachting and boating. These goods are identical to the goods of the earlier German trade mark. As explained above, from the perspective of the German relevant public (which is the relevant public as far as this earlier trade mark is concerned), the marks are also highly similar visually and aurally. However, there is an important conceptual difference between the marks as regards the German-speaking public, since one of the marks is immediately linked to a clear concept of a compass, which is distinctive in relation to umbrellas, whereas the other mark is meaningless. On account of this clear conceptual difference, the German-speaking public will not confuse or associate the marks, even considering that consumers normally do not have the chance to directly compare the marks. The conceptual difference will counteract the visual and aural similarity of the marks since the public will grasp immediately the specific meaning of the earlier German mark (see, to this effect, 18/12/2008, C-16/06 P, Mobilix, EU:C:2008:739, § 98-99). Therefore, and despite the identity of the goods at issue, the Opposition Division concludes that there is no likelihood of confusion between the earlier German trade mark and the contested sign. The opposition has to be rejected insofar as it was based on this earlier right. Consequently, the contested application may proceed for umbrellas; excluding products meant for yachting and boating.

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 shall 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

Ferenc GAZDA

Michaela SIMANDLOVA

Marianna KONDÁS

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.