OPPOSITION No B 2 428 020

Merkal Calzados, S.L., Pau Claris, 132-5º, 08009 Barcelona, Spain (opponent), represented by S. Orlando Asesores Legales y en Propiedad Industrial, S.L., C/ Castelló, 20, 4ºD, 28001 Madrid, Spain (professional representative)

a g a i n s t

Frison Denis, Via Como n. 3, 20811 Cesano Maderno, Italy (applicant), represented by Pipparelli & Partners, Via Quadronno, 6, 20122 Milano, Italy (professional representative)

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 428 020 is upheld for all the contested goods and services.

2.        European Union trade mark application No 12 805 495 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 805 495, namely against all the goods and services in Classes 25 and 42. The opposition is based on Spanish trade mark registration No 3 028 492. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade mark	Contested sign

PRELIMINARY REMARK

With the notice of opposition the opponent filed an extract of the database of the Spanish Patent and Trade Mark Office (and the corresponding translation), in which the previous owner of the earlier trade mark was indicated. During the substantiation period the opponent informed about a transfer of the earlier mark. After the substantiation period the opponent submitted a confirmation of the Spanish Patent and Trade Mark Office of the transfer of the trade mark to the opponent (and the corresponding translation).

The applicant claims that the opponent should have provided the copy of the relevant registration certificate or equivalent documents and the corresponding translation within the substantiation deadline and that the opposition is unfounded.

The Opposition Division cannot agree. During the substantiation period the opponent informed about the transfer. It then filed documents which prove this. The earlier mark is substantiated.

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 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols, canes and walking sticks; Whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Retailing in shops, wholesaling and sale via global computer networks of clothing, pashminas, scarves, gloves, footwear, perfumery products, glasses; umbrellas, textile goods, harness and saddlery, and leatherware.

The contested goods and services are the following:

Class 25: Clothing; Tops [clothing]; Belts [clothing]; Bottoms [clothing]; Casualwear; Gloves; Dress shoes; Footwear.

Class 42: Fashion design; Fashion design consulting services; Fashion design; Fashion design.

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

Clothing and footwear are identically contained in both lists of goods.

The contested tops [clothing]; belts [clothing]; bottoms [clothing]; casualwear; gloves are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested dress shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

Contested services in Class 42

The contested fashion design; fashion design consulting services; fashion design; fashion design services are similar to a low degree to the opponent’s clothing, footwear in Class 25. Shops providing customized design of clothing, such as graphic illustrations or photos printed on clothing usually also offer the clothing, such as T-Shirts with the customized design. Also, it is not uncommon to use the services of a fashion designer to provide design and tailoring services for clothing items worn on special occasions (e.g. suits and wedding dresses). Although the goods and services differ in their nature, they share the same relevant public and might coincide in the same usual origin (producer/provider) (06/10/2014, R 423/2014-4, CLOSET / CLOSED, § 22; see also 28/01/2014, R 926/2013-4, BLK DNM, § 21).

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 to a low degree are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 sign is a figurative mark. It is composed of two letters ‘F’ which are mirroring each other and the superimposed letter ‘S’. All letters are in upper case and serif typeface. The sign is in black on a white background.

The earlier mark has no elements that could be considered clearly more distinctive or dominant than other elements. The letters ‘FSF’ have an average degree of distinctiveness for the relevant goods and services.

The contested sign is a figurative mark. It is composed of two letters ‘F’ which are mirroring each other and the superimposed letter ‘D’. Below, in considerably smaller size, are the words ‘DENIS FRISON’ which are separated by a thin white line. All letters are in upper case and serif typeface. They are outlined in white on a black rectangular background.

The words ‘DENIS FRISON’ of the contested sign will be perceived as a name and surname by the relevant public. As they are not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive. The black rectangular background and the thin white line are less distinctive elements of a purely decorative nature. The combination of the letters ‘FDF’ is the dominant element due to is size and its position in the upper part of the sign.

Visually, the signs coincide in their structure, namely the mirrored letter ‘F’ and a superimposed third letter. Furthermore, the typeface is highly similar and the differentiating letter is in both cases very rounded. They differ in the superimposed letter, an ‘S’ or ‘D’ respectively, and the less distinctive elements of the white line and the rectangular background in the contested mark. They also differ in the words ‘DENIS FRISON’ of the contested mark which are of a considerably smaller size and placed in a secondary position at the bottom. As regards the colours, both signs are in black and white, although inversed, as the earlier mark has black letters on a white background and the contested mark white letters on a black background. Overall, the signs are visually similar to a high degree.

Aurally, the earlier sign will be pronounced as EFE-ESE-EFE as these are the only letters contained therein. The contested sign will be pronounced as ‘DENIS FRISON’ as these are words which are clearly legible. The letters ‘FDF’ of this sign will be perceived as the abbreviation of the latter and will not be repeated. Both signs contain the letters ‘F’ and ‘S’, although in different positions. Overall, the signs are phonetically similar to a very low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the words ‘DENIS FRISSON’, included in the contested mark, will be perceived as a name and surname, while the earlier mark has no meaning at all. 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 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

The goods and services are partly identical and partly similar to a low degree. The level of attention of the relevant public is average. The distinctiveness of the earlier mark is normal.

The signs are visually highly similar due to their same structure of the mirrored letter ‘F’ with a superimposed third letter. The typeface is very similar. The colours are simply inversed. The signs are phonetically similar to a very low degree and conceptually not similar. The differentiating elements are either less distinctive (rectangular background and thin white line in the contested mark) or visually not sufficiently dominant (words ‘DENIS FRISSON’ in the contested mark). Even the differentiating letters ‘S’ vs. ‘D’ are not sufficient to safely distinguish the signs as they are superimposed on the mirrored letter ‘F’ and somewhat similar due to their rounded shape.

In the present case the relevant goods and services are clothing, footwear and the related design services. For all of these the visual aspect is of mayor importance. Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual similarities between the signs due to their same structure have a stronger impact than the aural similarity which is very low.

Furthermore, consumers do not generally encounter conflicting marks simultaneously. They are more likely, when encountering a sign, to compare it with their recollection of signs already known for the relevant area of goods. However, consumers do not clearly recollect every detail of signs. The present sign and an imperfect recollection of another sign are the basis on which consumers evaluate whether or not signs are the same or similar (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the earlier Spanish trade mark No 3 028 492. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Octavio MONGE GONZALVO

Julia SCHRADER

Claudia MARTINI

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.