OPPOSITION No B 2 642 554

Patagonia, Inc., 259 West Santa Clara Street, Ventura, California 93001, United States of America (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Obshchestvo s ogranichennoy otvetsvennostyu "Capilano", ul. Serebrennikovskaya, d.14, Novosibirsk 630007, Russian Federation (holder), represented by Agency Tria Robit, Olga Vahatova, Vilandes iela 5, Riga, 1010 Latvia (professional representative).

On 22/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 642 554 is partially upheld, namely for the following contested goods and services:

Class 25:        Wimples; bandanas [neckerchiefs]; corselets; sweat-absorbent underclothing [underwear]; overalls; stuff jackets [clothing]; boas [necklets]; teddies [undergarments]; half-boots; breeches for wear; trousers; football boots; brassieres; shoulder wraps; detachable collars; veils [clothing]; galoshes; neckties; ascots; leggings; gaiters; vests; singlets; hosiery; drawers [clothing]; hoods [clothing]; pocket squares; pockets for clothing; collar protectors; tights; combinations [clothing]; wet suits for water-skiing; bodices [lingerie]; suits; bathing suits; masquerade costumes; beach clothes; jackets [clothing]; fishing vests; liveries; camisoles; tee-shirts; cuffs; mantillas; coats; sleep masks; furs [clothing]; mittens; muffs [clothing]; footmuffs, not electrically heated; bibs, not of paper; fur stoles; ear muffs [clothing]; socks; bath sandals; beach shoes; boots for sports; footwear; paper clothing; outerclothing; ready-made clothing; motorists' clothing; cyclists' clothing; clothing for gymnastics; gabardines [clothing]; jerseys [clothing]; clothing of imitations of leather; clothing of leather; knitwear [clothing]; uniforms; clothing; overcoats; parkas; babies' diapers of textile; pelerines; gloves [clothing]; pajamas; bathing drawers; scarfs; frocks; waterproof clothing; headbands [clothing]; garters; sock suspenders; stocking suspenders; soles for footwear; braces for clothing [suspenders]; lace boots; belts [clothing]; money belts [clothing]; layettes [clothing]; pullovers; welts for boots and shoes; shirts; wooden shoes; sandals; boots; saris; sweaters; inner soles; underpants; gymnastic shoes; slippers; shoes; turbans; berets; aprons [clothing]; bath robes; shower caps; stockings; sweat-absorbent stockings; shawls; paper hats [clothing]; skull caps; bathing caps; sashes for wear; studs for football boots [shoes]; babies' pants; gaiter straps; pelisses; esparto shoes or sandals; skirts; petticoats.

Class 35:        The bringing together of headgear, clothing and footwear, for others, excluding the transport thereof; the bringing together of headgear, clothing and footwear, for others, excluding the transport thereof provided by retail stores, wholesale outlets, pharmacies, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

2.        International registration No  1 101 680 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 101 680. The opposition is based on European Union trade mark registration No 10 555 936. 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 and services

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

Class 24:        Textiles and textile goods, fabrics, non-woven fabrics, linings for clothes, fabrics incorporated into and a feature of luggage.

Class 25:        Clothing, footwear, headgear; underwear; thermal clothing.

Class 35:        Retailing of textiles, clothing, footwear, headgear, underwear and thermal clothing.

The contested goods and services are the following:

Class 25:        Wimples; bandanas [neckerchiefs]; corselets; sweat-absorbent underclothing [underwear]; overalls; stuff jackets [clothing]; boas [necklets]; teddies [undergarments]; half-boots; breeches for wear; trousers; football boots; brassieres; shoulder wraps; detachable collars; shirt yokes; veils [clothing]; galoshes; neckties; ascots; leggings; gaiters; boot uppers; vests; singlets; hosiery; heels; drawers [clothing]; hoods [clothing]; hat frames [skeletons]; pocket squares; pockets for clothing; collar protectors; cap peaks; tights; combinations [clothing]; wet suits for water-skiing; bodices [lingerie]; suits; bathing suits; masquerade costumes; beach clothes; jackets [clothing]; fishing vests; liveries; camisoles; tee-shirts; cuffs; chemisettes [shirt fronts]; mantillas; coats; sleep masks; furs [clothing]; mittens; muffs [clothing]; footmuffs, not electrically heated; heelpieces for boots and shoes; bibs, not of paper; fur stoles; ear muffs [clothing]; socks; bath sandals; beach shoes; boots for sports; footwear; paper clothing; outerclothing; ready-made clothing; motorists' clothing; cyclists' clothing; clothing for gymnastics; gabardines [clothing]; jerseys [clothing]; clothing of imitations of leather; clothing of leather; knitwear [clothing]; uniforms; clothing; fittings of metal for shoes and boots; overcoats; parkas; babies' diapers of textile; pelerines; gloves [clothing]; pajamas; bathing drawers; scarfs; frocks; waterproof clothing; headbands [clothing]; garters; sock suspenders; stocking suspenders; ready-made linings [parts of clothing]; dress shields; soles for footwear; braces for clothing [suspenders]; lace boots; belts [clothing]; money belts [clothing]; layettes [clothing]; non-slipping devices for boots and shoes; pullovers; heelpieces for stockings; welts for boots and shoes; shirts; wooden shoes; sandals; boots; saris; sweaters; footwear uppers; inner soles; underpants; gymnastic shoes; slippers; shoes; turbans; berets; aprons [clothing]; bath robes; tips for footwear; shower caps; stockings; sweat-absorbent stockings; shawls; paper hats [clothing]; skull caps; bathing caps; sashes for wear; studs for football boots [shoes]; babies' pants; gaiter straps; pelisses; esparto shoes or sandals; skirts; petticoats.

Class 35:        Import-export agencies; demonstration of goods; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; business management assistance; commercial or industrial management assistance; presentation of goods on communication media, for retail purposes; auctioneering; sales promotion for others; distribution of samples; the bringing together of headgear, clothing and footwear, for others, excluding the transport thereof; the bringing together of headgear, clothing and footwear, for others, excluding the transport thereof provided by retail stores, wholesale outlets, pharmacies, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes; commercial administration of the licensing of the goods and services of others; administrative processing of purchase orders; procurement services for others [purchasing goods and services for other businesses].

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 25

The contested sweat-absorbent underclothing [underwear] is identically contained in the list of goods of the earlier mark, although with a slightly different wording.

The contested corselets; teddies [undergarments]; brassieres; singlets; hosiery; drawers [clothing]; tights; bodices [lingerie]; sock suspenders; stocking suspenders; underpants are included in the broader category of the opponent’s underwear. Therefore, they are considered identical.

The contested wimples; bandanas [neckerchiefs]; overalls; stuff jackets [clothing]; boas [necklets]; breeches for wear; trousers; shoulder wraps; half-boots; football boots; detachable collars; veils [clothing]; galoshes; neckties; ascots; leggings; gaiters; vests; hoods [clothing]; pocket squares; collar protectors; combinations [clothing]; wet suits for water-skiing; suits; bathing suits; masquerade costumes; beach clothes; jackets [clothing]; fishing vests; liveries; camisoles; tee-shirts; cuffs; mantillas; coats; sleep masks; furs [clothing]; mittens; muffs [clothing]; footmuffs, not electrically heated; bibs, not of paper; fur stoles; ear muffs [clothing]; socks; bath sandals; beach shoes; boots for sports; footwear; paper clothing; outerclothing; ready-made clothing; motorists' clothing; cyclists' clothing; clothing for gymnastics; gabardines [clothing]; jerseys [clothing]; clothing of imitations of leather; clothing of leather; knitwear [clothing]; uniforms; clothing; overcoats; parkas; babies' diapers of textile; pelerines; gloves [clothing]; pajamas; bathing drawers; scarfs; frocks; waterproof clothing; headbands [clothing]; garters; braces for clothing [suspenders]; lace boots; belts [clothing]; money belts [clothing]; layettes [clothing]; pullovers; shirts; wooden shoes; sandals; boots; saris; sweaters; gymnastic shoes; slippers; shoes; turbans; berets; aprons [clothing]; bath robes; shower caps; stockings; sweat-absorbent stockings; shawls; paper hats [clothing]; skull caps; bathing caps; sashes for wear; babies' pants; gaiter straps; pelisses; esparto shoes or sandals; skirts; petticoats are identical (either because they are identically contained in both lists, including synonyms, or because the opponent’s goods are included in or overlap with the contested goods or vice versa) or at least similar to the opponent’s clothing, footwear, headgear. They are all goods that are manufactured to cover, protect and cloth the human body. Therefore, they might easily coincide in end consumers and can all be manufactured by the same undertakings. All the goods at issue can be found in the same shops or in closely connected sections of department stores.

The contested inner soles; soles for footwear; studs for football boots [shoes] are similar to the earlier footwear. These goods may coincide in producer, target consumer and distribution channels. Furthermore, they are complementary.

The contested pockets for clothing are similar to the earlier clothing. These goods may coincide in producer, target consumer and distribution channels. Furthermore, they are complementary.

The remaining contested goods shirt yokes; boot uppers; heels; hat frames [skeletons]; cap peaks; chemisettes [shirt fronts]; heelpieces for boots and shoes; fittings of metal for shoes and boots; ready-made linings [parts of clothing]; dress shields; non-slipping devices for boots and shoes; heelpieces for stockings; footwear uppers; tips for footwear are dissimilar to all the earlier goods in all classes. They have a different nature and purpose, they target a different consumer, they are distributed through different channels and they are manufactured and provided by different undertakings.

Contested services in Class 35

The contested procurement services for others [purchasing goods and services for other businesses] include, as a broader category, the opponent’s retailing of textiles, clothing, footwear, headgear, underwear and thermal clothing. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Therefore, the contested services bringing together of headgear, clothing and footwear, for others, excluding the transport thereof; the bringing together of headgear, clothing and footwear, for others, excluding the transport thereof provided by retail stores, wholesale outlets, pharmacies, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes are similar to the opponent’s retailing of clothing, footwear, headgear, underwear and thermal clothing. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels.

The contested import-export agencies services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. The contested auctioneering services are a type of sale where the price is neither set nor arrived at by negotiation, but is discovered through the process of competitive and open bidding. These services are different to the opponent’s goods and services as they are also offered by different companies to consumers with different needs. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these services and the opponent’s goods and services come from the same undertaking or economically linked undertakings. Therefore, all these contested services are dissimilar.

The contested demonstration of goods; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; presentation of goods on communication media, for retail purposes; sales promotion for others; distribution of samples are different forms of advertising services, which are fundamentally different in nature and purpose from the opponent’s goods and services. They have different usual origins and distribution channels, and are neither complementary to nor in competition with each other. Therefore, they are dissimilar.

The contested business management assistance; commercial or industrial management assistance are intended to help companies manage their businesses by setting out the strategy and/or direction of the company. The contested commercial administration of the licensing of the goods and services of others; administrative processing of purchase orders are intended to help companies with the performance of these business operations. Therefore, these services and the opponent’s goods and services are dissimilar. They have different usual origins and distribution channels, and are neither complementary to nor in competition with each other.

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 and services 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

CAPILENE	CAPILANO
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 earlier mark has no meaning. It cannot be excluded that the contested sign could be associated by part of the relevant public as a place in the North of Vancouver. However, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public who will not associate the contested sign with any meaning.

The earlier mark and the contested sign have no elements that could be considered more distinctive or clearly more dominant than other elements.

Visually and aurally, the signs coincide in the sequence of the letters ‘CAPIL*N*’. However, they differ in the sixth and last letter of the earlier mark ‘E’ and ‘E’ and of the contested sign ‘A’ ‘O’.

The first parts of the conflicting marks are identical ‘CAPIL’. 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 part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 as a whole has no meaning for any of the goods and services 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

As it has been concluded above, the contested goods and services are partially identical, partially similar and partly dissimilar. The degree of attention of the relevant public is average and the distinctiveness of the earlier mark is normal.

In relation to the signs, they are visually and aurally similar to a high degree due to the coincidence in six of their eight letters, five of them placed at the beginning of the signs, where consumers will pay more attention. The marks differ only in two letters out of eight, the sixth and last letter (‘E’ and ‘E) of the earlier mark and (‘A’ and ‘O’) of the contested sign.

 

It is the opinion of the Opposition Division that the impact of the abovementioned two different letters in each sign (considering their position) will be limited when assessing the likelihood of confusion between the marks, because average consumers only rarely have the chance to make a direct comparison between different marks, and must trust in their imperfect recollection of them. Based on the principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause the relevant public to believe that the conflicting goods and services, which were found identical or similar, come from the same undertaking or economically-linked undertakings.

Considering all the above, the Opposition Division considers that the difference found between the marks is not sufficient to counteract their main visual and aural similarities. Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the public. 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 and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services 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 and services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Pierluigi M. VILLANI

María Clara  IBÁÑEZ FIORILLO

Janja FELC

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.