OPPOSITION No B 2 688 219

JRC International Ltd., Unit 5-6, 9/F, Enterprise Square 3, 39 Wang Chiu Road, Kowloon Bay, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (opponent), represented by A2 Estudio Legal, Calle Hermosilla, 59, Bajo izquierda, 28001 Madrid, Spain (professional representative)

a g a i n s t

Saleslution, S.L., C/ Juan de la Cierva, No. 23 – Polígono Industrial, 03203 Elche (Alicante), Spain (applicant), represented by Garrigues IP, S.L.P., C/ San Fernando 57, 03001 Alicante, Spain (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 688 219 is partially upheld, namely for the following contested goods:

Class 18: Trunks and travelling bags, Hands bags, Portfolio bags, Pocket wallets, Backpacks, Shoulder belts.

2.        European Union trade mark application No 15 031 388 is rejected for all the above goods. It may proceed for the remaining goods, namely for the following goods:

Class 18: Leather and his/her imitations; Animal skins, hides, Umbrellas and parasols, Walking sticks, Whips, harness and saddlery.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 031 388, namely against all the goods in Class 18. The opposition is based on European Union trade mark registration No 14 881 072. 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 18: Bags.

The contested goods are the following:

Class 18: Leather and his/her imitations; Animal skins, hides, Trunks and travelling bags, Hands bags, Portfolio bags, Pocket wallets, Backpacks, Shoulder belts, Umbrellas and parasols, Walking sticks, Whips, harness and saddlery.

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.

The contested travelling bags, hands bags, portfolio bags, backpacks are included in the broad category of the opponent’s bags. Therefore, they are identical.

The contested trunks are large boxes with a hinged lid for storing or transporting clothes and other articles. In this regard, they are similar to the opponent’s bags since they have the same purpose. Furthermore, they can coincide in end user and distribution channels.

The contested pocket wallets, shoulder belts are accessories that may be produced by the same undertaking as the opponent’s bags. They also have the same general purpose, namely to carry things, and they are usually sold through the same distribution channels and target the same consumers. Therefore, they are similar.

The contested leather and his/her imitations; animal skins, hides, umbrellas and parasols, walking sticks, whips, harness and saddlery do not have anything in common with the opponent’s bags. The nature, purpose and method of use of the contested goods are clearly different. They are usually produced by different companies and are usually sold through different distribution channels. They do not target the same relevant public and are not in competition or complementary. The mere fact that the contested leather and his/her imitations; animal skins, hides are raw materials intended to be turned into finished products, cannot be regarded as complementary to the finished products like the opponent’s bags (made from these materials) (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39). Consequently, they are dissimilar.

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

SWASH
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the signs are meaningless in certain territories, for example, in those countries where English or German are not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on, for example, the Spanish-speaking part of the public.

 

The verbal elements of the signs have no meaning for the relevant public and are, therefore, distinctive. The figurative elements of the contested mark will be perceived by the relevant public as a winged letter ‘W’ with a star depicted above its central intersection. As they are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive. Furthermore, the contested sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The figurative contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letter sequence ‘*WASH’, constituting the verbal element of the contested sign in its entirety. However, they differ in the first letter, ‘S’, of the earlier mark, as well as in the bold, but standard, lettering of the verbal element of the contested sign and in its figurative elements, as described above.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛WASH’, present identically in both signs. Additionally, both signs will be pronounced in one single syllable and, therefore, their rhythm and intonation is highly similar. The pronunciation differs in the sound of the first letter, ‘S’, of the earlier sign, which has no counterpart in the contested mark, but adds little difference in the pronunciation of the signs because of its position before the letter ‘W’.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative elements of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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. In the present case, the earlier trade mark 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

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 (recital 8 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).

It has been established in the previous sections of this decision that the contested goods are considered partly identical, partly similar and partly dissimilar to the opponent’s goods. The degree of attention of the relevant public is average.

It has also been concluded that the signs are visually similar to an average degree and aurally highly similar, to the extent that the verbal element of the contested sign is fully reproduced in the earlier mark, which is of normal distinctiveness, but the signs have no concept attached to them. The difference between the signs is found in the first letter, ‘S’, of the earlier sign, which aurally is softened by virtue of its position, and in the figurative component of the contested sign.  

In this regard, whilst regarding fashion products and complements the visual aspect plays, generally, a greater role in the global assessment of the likelihood of confusion, oral communication in respect of the product and the trade mark is not excluded, given that customers can themselves either choose the product they wish to buy or be assisted by the sales staff. Therefore, the high aural similarity is particularly relevant when assessing the likelihood of confusion between the signs in the present case.

Additionally, account is 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).

Furthermore, it should also be born in mind that 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 which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the overall degree of similarity between them. Therefore, the relevant public with an average level of attention may believe that the identical or similar goods come from the same undertaking or at least economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

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 trade mark.

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

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

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

Vanessa PAGE

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.