OPPOSITION No B 2 635 111

 

s.Oliver Bernd Freier GmbH & Co. KG, s.Oliver-Str. 1, 97228 Rottendorf, Germany (opponent), represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany (professional representative)

 

a g a i n s t

 

Institut Químic de Sarriá Cets Fundació Privada, Via Augusta nº 290, 08017 Barcelona, Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative).

 

On 10/02/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 635 111 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 and services of European Union trade mark application No 14 414 064 namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 6 893 598. 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 25: Clothing, footwear, headgear.

 

The contested goods are the following:

 

Class 25: Clothing; footwear [excluding orthopedic footwear]; headgear.

 

The contested clothing; footwear [excluding orthopedic footwear]; headgear are identically contained in both lists of goods.

 

 

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 are directed at the public at large. The degree of attention is considered to be average.

 

 

3. The signs

 

 

 

QS
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 letters ‘QS’.

 

The contested sign is a figurative mark consisting of the letters ‘IQS’ written in standard white uppercase and represented in two circles that overlap at the level of the letter ‘Q’. The first circle is in blue whereas the second one is in dark yellow. However, at the level of the overlap, the colour is grey.

 

Neither ‘QS’ in the earlier mark nor ‘IQS’ in the contested sign have any relevant meaning in relation to the goods at hand. They are therefore considered to have a normal degree of distinctiveness. Furthermore, the signs have no elements that could be considered clearly more distinctive than other elements. This is particularly true for the contested sign since the contested goods are clothing-related and that the choice of an item of clothing is generally made visually (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). This is the reason why the role of the figurative elements in the contested sign cannot be underestimated.

 

Visually, the signs coincide in the letters ‘QS’. However, they differ in the letter ‘I’ placed at the beginning of the contested sign, in the circles and in the colours that have no counterpart in the earlier mark.

 

Normally, when signs 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. However, as already mentioned, for clothing-related goods the visual perception of the mark in question generally takes place prior to purchase and the visual aspect therefore plays a greater role. In the present case, because of the position it occupies within the sign, the impact of the figurative element cannot be neglected.

 

Furthermore, the signs in dispute are composed of short verbal elements, two letters against three, and the fact that they differ in one additional letter is a factor of particular relevance to take into consideration since small differences can frequently lead to a different overall impression.

 

Therefore, the signs are visually similar to a low degree.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, part of the relevant public may pronounce the contested sign as a single word, ‘IQS’, whereas the remaining part may spelling it letter by letter, ‘I-Q-S’. However, in the absence of any vowel, the earlier mark will most likely be spelled letter by letter by the relevant public, ‘Q-S’.

 

Therefore, for the part of the public that will spell out both signs, the pronunciation will coincide in the sound of the letters ‘Q-S’ but will differ in the sound of the additional letter ‘I’ at the beginning of the contested sign. For this part of the public, the signs are aurally similar to an average degree.

 

For the part of the public that will pronounce the contested sign as a single word, the pronunciation of the signs will only coincide to a certain degree to the sound of the letters ‘Q-S’. For instance, in French, the contested sign will be pronounced ‘IQS’ and the earlier mark, ‘/ku/es/’. Both pronunciations consequently share the sound /k/ and the sound /s/. For this part of the public, the signs are aurally similar to low degree.

 

Conceptually, since neither of the signs has a meaning for the public in the relevant territory, a conceptual comparison is not possible and 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 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

 

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

 

According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.

 

In the present case, even taking into account that the contested goods are identical to the opponent’s goods, the signs are visually and, for a part of the public only, aurally similar to a low degree. For the rest of the public, the signs are aurally similar to an average degree. The conceptual aspect does not influence the assessment at hand.

 

The signs in dispute are composed of two letters in the case of the earlier mark and of three letters in the case of the contested sign; both are, consequently, short marks and it is considered that the fact that they differ in one additional letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. Consequently, the fact that they only coincide in two letters, does not lead to a finding of likelihood of confusion, because the additional letter ‘I’ placed at the beginning of the contested sign will not go unnoticed by consumers. This is also true for the part of the public for which the signs are aurally similar to an average degree. (23/10/2002, T-388/00, ELS, EU:T:2002:260, by analogy).

 

This is because the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. In contrast, the public is less aware of differences between long signs.

 

Moreover, the visual differences between the signs caused by the circles and the colours of the contested sign are clearly perceivable and particularly relevant when assessing the likelihood of confusion between signs which goods are clothing-related and in situations where the visual aspect plays a particular role.

 

In view of the foregoing, although some coincidences exist, they are not sufficient to lead to confusion on the part of the public because there are definitely overshadowed by the differences encountered.

 

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, 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

 

 

Benoit VLEMINCQ

Sandra IBAÑEZ

Begoña URIARTE VALIENTE

 

 

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.