OPPOSITION DIVISION

OPPOSITION No B 2 709 148

Stone Fashion Group B.V., Tokyostraat 7-11, 1175 RB Lijnden, The Netherlands

(opponent), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX

Weesp, The Netherlands (professional representative)

a g a i n s t

Reset Priority SL, Calle Numancia 40 SA 2, 08029 Barcelona, Spain (applicant),

represented by Mapa Trademarks, Alameda San Mamés 43 bis, 3ª planta, dpto 1,

parasols.

Class 25: Swimwear, beachwear, kaftans, beach wraps, sandals and

beach shoes, T-shirts, lingerie, loungewear, pyjamas, corsetry,

underwear.

2. European Union trade mark application No 15 147 317 is rejected for all the

above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

PRELIMINARY REMARK — APPLICABLE REGULATIONS

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Union trade mark application No 15 147 317 . The opposition is

based on, inter alia, international trade mark registration designating the European

Union No 1 270 724, ‘RESET’. The opponent invoked Article 8(1)(b) EUTMR.

Decision on Opposition No B 2 709 148 page: 2 of 8

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

opponent’s international trade mark registration designating the European Union

No 1 270 724, ‘RESET’.

a) The goods and services

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

Class 18: Leather and artificial leather; trunks, suitcases, travel trunks; bags,

briefcases, handbags, shoulder bags, carrier bags, travel bags, sports bags,

shopping bags, beach bags, beauty cases [empty], rucksacks, backpacks, sling bags

for carrying babies and children; garment bags [duffles]; purses, wallets and purses;

the aforementioned products, whether or not wholly or partly of leather or imitation

leather; umbrellas and parasols.

petticoats, dresses, petticoats, frocks; baby clothing, swimwear, sportswear;

footwear, including shoes, sport shoes, boots, sneakers, slippers, flip-flops, slippers,

espadrilles, sandals; headgear, including bathing caps, shower caps, hats,

headbands, hats, caps, berets; gloves [clothing], mittens, shawls, scarves,

bandanas, ties and bow ties, suspenders, belts and sashes.

The contested goods and services are, after a limitation, the following:

Class 18: Luggage, bags, wallets and other carriers; Umbrellas and parasols.

Class 25: Swimwear, beachwear, kaftans, beach wraps, sandals and beach shoes, T-

shirts, lingerie, loungewear, pyjamas, corsetry, underwear.

Class 35: Commercial trading and consumer information services related to beach

Decision on Opposition No B 2 709 148 page: 3 of 8

introduces a non-exhaustive list of examples (see the judgment of 09/04/2003,

T-224/01, Nu-Tride, EU:T:2003:107).

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 luggage is a broad category that includes the opponent’s travel trunks.

The contested bags; umbrellas and parasols are identically covered by the earlier

mark.

The contested wallets and other carriers overlap with the opponent’s wallets and

purses. Therefore, they are considered identical.

The limitation included in the opponent’s list of goods in Class 18 (the

aforementioned products, whether or not wholly or partly of leather or imitation

leather) does not change the findings above.

Contested goods in Class 25

The contested swimwear, beachwear, kaftans, beach wraps, t-shirts, lingerie,

loungewear, pyjamas, corsetry, underwear are included in the opponent’s broad

As regards the contested services in Class 35, namely, commercial trading and

consumer information services related to beach bags, swimwear, beachwear,

kaftans, beach wraps, sandals and beach shoes, towels, T-shirts, lingerie,

loungewear, pyjamas, corsetry, underwear, it has to be pointed out that the

expression commercial trading designates activities consisting of using the futures

market primarily to hedge current business activities and that consumer information

services designates services consisting in providing information to consumers in

order for them to take a reasoned decision (of purchase).

In this regard, it is noted at the outset that these services and the opponent’s goods

obviously have different natures (intangible versus tangible). Moreover, as apparent

from the above, the contested services and the opponent’s goods have different

purposes. They are usually not provided by the same undertakings and they are

contested consumer information services target the public at large and not business

Decision on Opposition No B 2 709 148 page: 4 of 8

Therefore, it is concluded that the contested commercial trading and consumer

information services related to beach bags, swimwear, beachwear, kaftans, beach

corsetry, underwear are dissimilar to the opponent’s goods in Classes 18 and 25.

b) Relevant public — degree of attention

according to the category of goods or services in question.

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

contested sign is a figurative mark consisting of the word elements ‘RESET’ and

‘PRIORITY’ displayed in upper case standard black letters on top of a very small

stylised representation of a feline head.

The words ‘RESET’ and ‘PRIORITY’ are English vocabulary words that respectively

designate the action of setting again or renew and the condition of being prior or

antecedence, precedence. They will thus be understood as such by the English-

speaking part of the public.

Decision on Opposition No B 2 709 148 page: 5 of 8

Consequently, the Opposition Division finds it appropriate to focus the comparison of

the signs on the English-speaking part of the public.

As none of the words included in the marks in question has any relation with the

goods in question, they are distinctive to an average degree for this part of the public.

If the line displayed on top of the word elements is not be given any trade mark

significance, the elaborated representation of a feline which is fanciful in relation to

considered as clearly more distinctive than other elements.

smaller than the word elements. As a result, the word elements of the contested sign

are clearly more dominant (visually eye-catching) than its figurative elements.

Visually, the signs coincide in ‘RESET’, which is in a standard capital font in the

contested sign. However, they differ in the word ‘PRIORITY’ as well as in the

figurative elements of the contested sign, which have no counterparts in the earlier

mark.

Taking into account the position of the common element ‘RESET’ in the beginning of

the contested sign – to which consumers generally pay more attention – and bearing

in mind that when a sign consist of both verbal and figurative components, the verbal

component of the sign usually has a stronger impact on the consumer than the

figurative component (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37),

the signs are considered visually similar to an average degree.

an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks. As both signs will be perceived as conveying the

concept of ‘RESET’ and since the contested sign includes the additional concepts of

‘PRIORITY’ on the one hand, and of a feline (if perceived as such), on the other

hand, the signs are similar to an average degree from the conceptual point of view.

As the signs have been found similar in at least one aspect of the comparison, the

examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

Decision on Opposition No B 2 709 148 page: 6 of 8

not otherwise non-distinctive), it is Office practice to consider it as having no more

than a normal degree of inherent distinctiveness. However, this degree of

higher degree of distinctiveness of the earlier mark has been acquired through use or

because it is highly original, unusual or unique (26/03/2015, T-581/13, Royal County

of Berkshire POLO CLUB, EU:T:2015:192, § 49, last alternative).

distinctiveness per se. In the present case, as the opponent puts forward, the earlier

Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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).

In the present case, the contested goods are identical but the contested services are

dissimilar to the opponent’s goods.

consumer would perceive the contested mark as a sub-brand, a variation of the

earlier mark, configured in a different way to designate a new line of the opponent’s

Class 18 and 25 products (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49, by

analogy).

Moreover, bearing in mind the above, the fact that the purchase of goods in Classes

the global assessment of the likelihood of confusion (06/10/2004, T-117/03, T-119/03

contrary to the applicant’s claim.

In its observations, the applicant also argues that the earlier trade mark has a low

argument, the applicant refers to several trade mark registrations in the European

Decision on Opposition No B 2 709 148 page: 7 of 8

showing some use of three of these marks on the internet is obviously not sufficient

to demonstrate that consumers in the European Union have been confronted to

It follows that the evidence submitted by the applicant does not demonstrate that

consumers have been exposed to widespread use of, and have become accustomed

to, trade marks that include ‘RESET’. Under these circumstances, the applicant’s

likelihood of confusion for only part of the relevant public of the European Union is

Therefore, the opposition is partly well founded on the basis of the opponent’s

international trade mark registration designating the European Union No 1 270 724.

It follows from the above that the contested trade mark must be rejected for the

goods found to be identical to those of the earlier trade mark.

The contested 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

Since the first of these marks cover the same and the others a narrower scope of

goods, the outcome cannot be different with respect to services for which the

opposition has already been rejected. Therefore, no likelihood of confusion exists

with respect to those services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must

others. Consequently, each party has to bear its own costs.

Decision on Opposition No B 2 709 148 page: 8 of 8

According to Article 67 EUTMR, any party adversely affected by this decision has a

right to appeal against this decision. According to Article 68 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 for

appeal must be filed within four months of the same date. The notice of appeal will be