WE=LV2 | Decision 2513599 – WE Brand S.a.r.l. v. Maij Entertainment LLC

OPPOSITION No B 2 513 599

WE Brand S.à.r.l., 31-33 Avenue Pasteur, 2311 Luxembourg, Luxembourg (opponent), represented by Nauta Dutilh N.V., Strawinskylaan 1999, 1077 XV Amsterdam, The Netherlands (professional representative)

a g a i n s t

Maij Entertainment LLC, 80 Horse Country Lane, Walton, New York 13856, United States of America (applicant), represented by Mishcon de Reya Llp, Africa House, 70 Kingsway, London WC2B 6AH, United Kingdom, (professional representative).

On 14/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 513 599 is upheld for all the contested goods, namely

Class 14:Jewellery; watches; diamonds; precious and semi-precious gemstones; precious metals, namely, gold, platinum and silver; jewellery ornaments; chronometrical instruments; watches; stopwatches; gemstones, pearls and precious metals and imitations thereof; time instruments; other articles of precious metals and precious stones, and imitations thereof namely statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof, Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof, Coins and tokens, works of art of precious metal, key rings (trinkets or fobs); jewellery boxes and watch boxes; and parts and fittings of all the aforesaid goods, included in the class.

Class 25: Clothing; footwear; headgear; tank tops; khaki pants; cargo pants; capri pants; sweaters; sweat pants; raincoats; head bands; sneakers; robes; bras; leggings; tights; leotards; sports bras; briefs; thongs; sleepwear; nightgowns; hosiery; overalls; boots; ready-made clothing; lace boots; shoes; heels; slippers; bath slippers; sandals; trainers; beach shoes; sports shoes; boots for sports; socks; hosiery; tights; hats; bandanas; caps (headwear); berets; scarves; gloves (clothing); mittens; shirts; T-shirts; polo shirts; sports shirts; trousers; jeans; shorts; sports shorts; swimwear; bathing trunks; bathing suits; bikinis; underwear; lingerie; bodices (lingerie); bath robes; tracksuits; outerclothing; coats; jackets; parkas; ski jackets; waterproof clothing; waterproof and weatherproof jackets and coats; ski wear; beach wear; suits; jumpers and cardigans; knitwear; leggings; neckties; pyjamas; waistcoats; headbands (clothing); wristbands; menswear; womenswear; childrenswear; underclothing; clothing for men, women, children and infants; slacks; skirts; wraps; jerseys; blouses; dresses; gowns; sleepwear; robes; sweatshirts; stockings; earmuffs; ties; tuxedos; vests; kilts; shawls; blazers; overalls; sleep masks; aprons; wedding dresses; weddings gowns; bridesmaid dresses; bridesmaid gowns; cuffs; boas; fur stoles; winter sportswear; running, walking, hiking, camping and cycling wear; hoods.

2. European Union trade mark application No 13 622 253 is rejected for all the contested goods. It may proceed for the remaining goods.

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 13 622 253; however, in its further submissions, the opponent limited the scope of the opposition to Class 14 and Class 25. The opposition is based on European Union trade mark registration No 7 209 571. 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.

The goods and services

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

Class 3: Soaps, perfumery, essential oils, cosmetics, hair lotions.

Class 9: Spectacles including sunglasses; spectacle frames; cases and containers for spectacles.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments including watches.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; umbrellas and parasols; trunks and travelling bags; bags not included in other classes.

Class 25: Clothing, footwear, headgear.

Class 35: Business mediation in the purchase and sale, including within the framework of retailing, of soaps, perfumery, essential oils, cosmetics, hair lotion, eyewear, including sunglasses, optical frames, cases and containers for spectacles, precious metals and their alloys and products made from the aforesaid materials or coated therewith, jewellery, costume jewellery, precious stones, clocks and chronometrical instruments, including watches, leather and imitation leather and products made from the aforesaid materials, umbrellas and parasols, trunks and suitcases, bags, clothing, footwear, headgear; the aforesaid services also offered via electronic channels, including the internet.

The contested goods, following a limitation of the scope of the opposition by the opponent on 09/09/2015, are:

Class 14: Jewellery; watches; diamonds; precious and semi-precious gemstones; precious metals, namely, gold, platinum and silver; jewellery ornaments; chronometrical instruments; watches; stopwatches; gemstones, pearls and precious metals and imitations thereof; time instruments; other articles of precious metals and precious stones, and imitations thereof namely statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof, Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof, Coins and tokens, works of art of precious metal, key rings (trinkets or fobs); jewellery boxes and watch boxes; and parts and fittings of all the aforesaid goods, included in the class.

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

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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 the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 14

The contested jewellery is identically contained in both lists of goods.

The contested jewellery ornaments, coins and tokens; key rings (trinkets or fobs) are included in the broad category of the opponent’s jewellery. Therefore, they are identical.

The contested diamonds; precious and semi-precious gemstones; gemstones, pearls are included in the broad category of the opponent’s precious stones. Therefore, they are identical.

The contested watches; chronometrical instruments are identically contained in both lists of goods.

The contested stopwatches; time instruments are included in the broad category of the opponent’s horological and chronometric instruments including watches. Therefore, they are identical.

The contested precious metals, namely, gold, platinum and silver; precious metals and imitations thereof; other articles of precious metals, and imitations thereof namely statues and figurines, made of or coated with precious or semi-precious metals, or imitations thereof, ornaments, made of or coated with precious or semi-precious metals, or imitations thereof, works of art of precious metal, and parts and fittings of all the aforesaid goods, included in the class are included in the broad category of, or overlap with, the opponent’s precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes. Therefore, they are identical.

The contested other articles of precious stones, and imitations thereof namely statues and figurines, made of or coated with precious or semi-precious stones, or imitations thereof, ornaments, made of or coated with precious or semi-precious stones, or imitations thereof are similar to the opponent’s precious stones. They may be complementary and have the same purpose, they are sold through the same distribution channels (specialised outlets, e.g. jewellery stores) and they target the same public.

The contested jewellery boxes are similar to the opponent’s precious metals and their alloys and goods in precious metals or coated therewith. They are complementary, as the purpose of jewellery boxes is to contain jewels, are produced by the same manufacturers, have the same distribution channels and target the same public.

The contested watch boxes are similar to the opponent’s horological and chronometric instruments. They are sold through the same distribution channels (specialised outlets, e.g. jewellery stores), are produced by the same manufacturers and target the same public.

The contested [and] parts and fittings of all the aforesaid goods (Jewellery; watches; diamonds…), included in the class are similar to the opponent’s goods in Class 14. The parts and fittings of these goods are often produced and/or sold by the same undertakings that manufacture the end product and they target the same public, as in the case of spare or replacement parts. The public may also expect a component to be produced by, or produced under the control of, the ‘original manufacturer’ (e.g in the case of watches), which is a factor that contributes to a finding that the goods are similar.

Contested goods in Class 25

Clothing; footwear; headgear are identically contained in both lists of goods.

The contested tank tops; khaki pants; cargo pants; capri pants; sweaters; sweat pants; raincoats; robes; bras; leggings; tights; leotards; sports bras; briefs; thongs; sleepwear; nightgowns; hosiery; overalls; ready-made clothing; socks; hosiery; tights, scarves; gloves (clothing); mittens; shirts; T-shirts; polo shirts; sports shirts; trousers; jeans; shorts; sports shorts; swimwear; bathing trunks; bathing suits; bikinis; underwear; lingerie; bodices (lingerie); bath robes; tracksuits; outerclothing; coats; jackets; parkas; ski jackets; waterproof clothing; waterproof and weatherproof jackets and coats; ski wear; beach wear; suits; jumpers and cardigans; knitwear; leggings; neckties; pyjamas; waistcoats; wristbands; menswear; womenswear; childrenswear; underclothing; clothing for men, women, children and infants; slacks; skirts; wraps; jerseys; blouses; dresses; gowns; sleepwear; robes; sweatshirts; stockings; earmuffs; ties; tuxedos; vests; kilts; shawls; blazers; overalls; sleep masks; aprons; wedding dresses; weddings gowns; bridesmaid dresses; bridesmaid gowns; cuffs; boas; fur stoles; winter sportswear; running, walking, hiking, camping and cycling wear are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested head bands; hats; bandanas; caps (headwear); berets; headbands (clothing); hoods are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested sneakers; boots; lace boots; shoes; heels; slippers; bath slippers; sandals; trainers; beach shoes; sports shoes; boots for sports; headgear are included in the broad category of the opponent’s footwear. Therefore, they are identical.

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 public’s degree of attentiveness may vary from average to high, depending on the price, sophistication or terms and conditions of the purchased goods. The degree of attention for the goods at issue will vary from average for clothing to high for jewellery (in its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods). In many cases, the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

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 Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is the word mark ‘WE’. This word will be understood by the relevant public as the first-person plural pronoun; it has a normal degree of distinctiveness because it has no meaning in relation to the goods at issue. The contested sign is the figurative sign , which has no clear meaning as a whole, but is likely to be dissected into the letters ‘WE’, which have the meaning described above, and the second part of the sign, which is composed of the symbols and letters ‘=LV2’ and might be associated with a mathematical formula. The contested sign has no elements that could be considered more distinctive or dominant than other elements.

Visually, the signs are similar to the extent that they coincide in the letters ‘WE’. However, they differ in the typeface and additional symbols and letters, ‘=LV2’, of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛WE’, which constitute the entire earlier sign and the beginning of the contested sign, which has an increased impact on the public. The pronunciation differs in the sound of the letters ‛LV’ and in the sound of the symbols, which will be pronounced as ‘equal’ and ‘power of 2’ and which have no counterparts in the earlier sign, and in the length of the contested mark.

Therefore, the signs are aurally similar to a lower than average degree.

Conceptually, the earlier mark is the first-person plural pronoun, as explained above; the contested sign as a whole does not have any meaning for the relevant public. However, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, ‘RESPICUR’, § 57). Therefore, it is reasonable to assume that the relevant public will split the figurative element of the contested sign into two parts, in one of which the public will perceive the English word ‘WE’, as explained above. The element ‘=LV2’ might be associated with a mathematical expression.

Therefore, as both signs will be associated with the meaning of the word ‘we’, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

Global assessment, other arguments and conclusion

The goods are partly identical and partly similar.

The signs are visually and conceptually similar to an average degree and aurally similar to a lower than average degree. The marks coincide in the word ‘WE’, which is the sole element of the earlier sign and the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the initial part the one that first catches the attention of the reader. Consequently, this identical first two letters of the contested sign have to be taken into account when assessing the likelihood of confusion between the marks.

It is common for undertakings active on the market to use sub-brands, that is, signs that derive from a principal mark and that have an element in common, in order to distinguish the scope of one product from that of another. It is, therefore, conceivable that the target public, even if it does not directly confuse the signs, may still regard the identical and similar goods designated by the conflicting signs as product lines that come from the same undertaking or from economically linked undertakings. The relevant public might assume that the contested sign, , is a sub-brand of the earlier mark, ‘WE’.

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).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public, even for the goods for which the public has a high degree of attention. 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 7 209 571. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Gueorgui

IVANOV

Patricia

LÓPEZ FERNÁNDEZ

DE CORRES

Dorothee

SCHLIEPHAKE

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.

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