OPPOSITION No B 2 623 828

Adler Modemärkte AG, Industriestr. Ost 1-7, 63808 Haibach, Germany (opponent), represented by Christina Hambeck-Joh (Adler Modemärkte AG), Industriestr. Ost 1-7, 63808 Haibach, Germany (employee representative)

a g a i n s t

Thea Cutting, The Ale House, Frostenden Corner, Beccles NR34 7JA, United Kingdom (applicant), represented by Wright Hassall LLP, Olympus Avenue Leamington Spa, Warwickshire CV34 6BF, United Kingdom (professional representative).

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

DECISION:

1.        Opposition No B 2 623 828 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 14 560 081, namely against all the goods in Class 25 (i.e. clothing; footwear; headgear; aprons; nightwear; nighties; pajamas; rainwear; scarves; socks; t-shirts; waterproof clothing; wellingtons; wellington boots). The opposition is based on European Union trade mark registration No 12 339 636 covering clothing, footwear, headgear in Class 25. 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 signs

THEA
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 earlier mark is a word mark consisting of the word ‘THEA’, which will be understood by a part of the relevant public (e.g. the English- and Romanian-speaking parts of the public) as a given name of Greek origin or a short female name derived from Dorothea, Anthea or T(h)eodora. However, in some European languages, such as French, Polish and Spanish, the word has no meaning. As it is not descriptive of or allusive to the relevant goods in a manner that would affect its distinctiveness in a material way, it is distinctive to an average degree.

The contested sign is a figurative mark containing the word ‘Gallery’ in a highly stylised typeface that resembles handwriting or ink brushstrokes. A figurative element appears underneath this word, consisting of a combination of vertical intertwined and curved lines that are reminiscent of a sequence of ink brushstrokes. These lines end with an element that can clearly be discerned as a stylised lower case letter ‘a’.

Contrary to the opponent’s arguments, the word ‘THEA’ cannot be considered ‘the essential part of the challenged trade mark’, as it is simply not discernible as such in the contested mark. Admittedly, in its application, the applicant chose to describe the verbal elements of the contested sign as ‘GALLERY THEA’. However, this does not automatically imply that the relevant public will perceive the word ‘THEA’ in the contested sign, because the consumer will not be assisted by this information when encountering the contested sign. Similarly, it is not relevant for the present assessment that the word ‘Thea’ in the contested sign could be recognised only with the help of the earlier mark, since the consumer normally does not have the opportunity to compare signs side by side. The Opposition Division considers, therefore, that the word ‘Thea’ is not perceptible in the contested sign, as the high degree of stylisation of the first letters prevents the relevant public from identifying the verbal element as a whole, without being assisted by the description of the mark or by the earlier sign. Taking the above into account, it is considered that consumers will perceive a figurative element followed by a stylised lower case letter ‘a’, and the opponent’s claims must, therefore, be set aside as unfounded.

The English word ‘Gallery’ in the contested sign is likely to be perceived by the public in the relevant territory as meaning, inter alia, ‘a room or building for exhibiting works of art’ or ‘a covered passageway open on one side or on two sides’ (information extracted from Collins English Dictionary on 27/02/2017 at https://www.collinsdictionary.com/dictionary/english/gallery), since the word has a similar equivalent in all European languages (e.g. ‘galería’ in Spanish, ‘galleri’ in Danish, ‘galéria’ in Hungarian, ‘gal(l)eria’ in Italian, ‘galerija’ in Latvian, Lithuanian and Slovenian, and ‘galerie’ in French and Romanian). It is the word ‘Gallery’ that will be attributed the most trade mark significance in the contested sign. It is the first element to be perceived in the sign and, on its own, it has no direct meaning in relation to the goods at issue, nor is it allusive in a manner that could alter its distinctiveness in a material way; furthermore, in signs consisting of word and figurative elements, 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).

The earlier mark, being a word mark, has no element that could be considered clearly more dominant than other elements.

The contested sign, contrary to the opponent’s arguments, has no element that could be considered clearly more dominant (visually eye-catching) than other elements. This is because both the word ‘Gallery’ and the figurative element and the letter ‘a’ at its end (although placed underneath ‘Gallery’) are clearly visible in the overall composition of the contested sign and, despite some small differences in size, neither can be deemed to be clearly more visually outstanding than the other.

Visually, there is no similarity between the signs. Due to the high degree of stylisation, the word ‘THEA’, which constitutes the entire earlier mark, is not discernible as a whole in the contested sign. The only recognisable letter in the lower part of the contested mark is the letter ‘a’ at the end of the figurative element; however, this insignificant coincidence between the signs is not sufficient to lead to a finding of similarity. Bearing in mind that the signs merely coincide in an irrelevant aspect (i.e. the letter ‘a’ at the end of the earlier mark and at the end of the figurative element of the contested sign), the overall visual impression of the conflicting signs is that they are clearly dissimilar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced as ‘THE·A’. However, the contested sign, depending on the relevant territory, will be pronounced as ‘GAL·LERY’ (two syllables) or ‘GAL·LE·RY’ (three syllables), followed by the letter ‘a’, (referred to aurally according to the pronunciation rules of the relevant official language).

The mere fact that the last letter of the earlier mark is the same as the letter ‘a’ in the contested sign is not of such a nature as to lead to any degree of similarity between the signs. Therefore, it is concluded that the signs are not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. It has been established that, for a part of the public in the relevant territory, the signs will be associated with dissimilar meanings. However, for another part of the public, the earlier sign will not be associated with any meaning. Therefore, the signs are not conceptually similar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Contrary to the opponent’s arguments, the signs are dissimilar. Consequently, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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

Carlos MATEO PÉREZ

Anna MAKOWSKA

Oana-Alina STURZA

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.