OPPOSITION No B 2 664 426

MyShoes SE, Deichmannweg 9, 45359 Essen, Germany (opponent), represented by Klaka, Delpstr. 4, 81679 Munich, Germany (professional representative)

a g a i n s t

CCC.eu Sp. z o.o., ul. Strefowa 6, 59-101 Polkowice, Poland (applicant), represented by Marek Rumak, Romańska 1/65, 01-451 Warsaw, Poland (professional representative).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 664 426 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 843 486. The opposition is based on international trade mark registration No 1 086 305 designating the European Union and German trade mark registration No 302 010 051 326. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 086 305 designating the European Union.

1. The goods and services

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

Class 18: Goods made of leather and leather imitations, included in this class; handbags; beach bags; shopping bags; trunks and suitcases; travelling bags; beauty cases; school bags and satchels; purses; wallets; key cases of leather or leather imitations; umbrellas; parasols.

 

Class 25: Clothing; footwear; headgear; socks; stockings; hosiery; belts for clothing; insoles.

Class 35: Retail services relating to clothing, footwear, headgear, care preparations for shoes and textiles, leather goods, bags, sporting articles, toys, perfumery, cosmetics, spectacles and/or jewellery; online retail services and mail order retail services, included in this class, relating to clothing, footwear, headgear, care preparations for shoes and textiles, leather goods, bags, sporting articles, toys, perfumery, cosmetics, spectacles and/or jewellery; the bringing together and displaying of clothing, footwear, headgear, care preparations for shoes and textiles, leather goods, bags, sporting articles, toys, perfumery, cosmetics, spectacles and/or jewellery, enabling customers to conveniently view and purchase such goods; advertising. 

The contested goods and services are the following:

Class 25: Footwear; clothing; hats.

Class 35: Advertising and marketing; sales promotion; publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; retail services in relation to footwear; wholesale services in relation to footwear; retail services in relation to clothing; wholesale services in relation to clothing; retail services connected with the sale of clothing and clothing accessories; mail order retail services connected with clothing accessories; retail services in relation to headgear; wholesale services in relation to headgear.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. The signs

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 element ‘MYSHOES’ is the visually dominant element in the earlier mark, since it overshadows the smaller verbal element of the mark, ‘HIER GEHT MEHR!’,  by virtue of its central position and size.

It should be noted that the words ‘SHOES&BAGS’ have limited visual impact in the contested sign due to their considerably smaller size in comparison to the other elements and their positioning below the element ‘CCC’.

The conjoined element ‘MYSHOES’ of the earlier mark will be understood by a significant part of the relevant public as the combination of the English words ‘MY’ (‘of, belonging to, or associated with the speaker or writer (me)’) and ‘SHOES’ (the plural form of the word ‘shoe’ – ‘one of a matching pair of coverings shaped to fit the foot’), since these are rather basic English words. Since the elements ‘MY’ and ‘SHOES’ together convey one meaning, they will capture the same degree of attention of the public. It is considered that the expression ‘MYSHOES’ is non-distinctive in relation to footwear and to services related to footwear, and weak in relation to the remaining relevant goods and services, which are articles of fashion belonging to the same or related industries and often sold together with footwear, or services in relation to such articles, because ‘MYSHOES’ indicates that the goods are intended or designed to be in possession of the buyer. The part of the relevant public which will not associate the English words ‘MY’ and ‘SHOES’ with any meaning will perceive them as fanciful terms of average distinctiveness.

The expression ‘HIER GEHT MEHR!’, depicted in much smaller letters than the other verbal element in the earlier mark, will be understood by the German-speaking consumers as a promotional slogan, meaning ‘More is possible’ or, literally, ‘Here goes more’, which conveys the idea that the opponent’s goods or services give or offer more to the consumers (than the competitors’ ones) in terms of desired characteristics of the goods and services. The relevant public will perceive the expression ‘HIER GEHT MEHR!’ as a promotional laudatory message, the function of which is to communicate a customer service and a value statement, as well as to transmit an inspirational and motivational message vis-à-vis the relevant goods and services. For these reasons, it is unlikely to be perceived as an indication of the commercial origin of the goods and services at issue. The expression ‘HIER GEHT MEHR!’ will be perceived as a meaningless and distinctive word combination by the part of the relevant public that does not understand German.

As for the contested sign, the letters ‘CCC’ will not be associated with any meaning by the relevant public and are, therefore, of average distinctiveness. The opponent argues that these letters refer to the applicant’s company name and are, therefore, of limited distinctiveness. However, in the opposition proceedings, the activity of the parties in the market is irrelevant as only the signs and the goods as they occur in the registration certificates or in the contested application are to be taken into account. There is no reason to consider that consumers will perceive the element ‘CCC’ as a business name, indicating the company ‘behind’ the trade mark, since in the mark as applied for it is not preceded by ‘by’ or any other equivalent term. Therefore, the Opposition Division considers that the element ‘CCC’ in the contested mark will be perceived as a meaningless and distinctive element.

The expression ‘More to go’ in the contested sign consists of English words and will be perceived by the part of the public that understands its elements as a promotional slogan, which indicates that the goods or services give or offer to the consumers something (possibly of goods or services) that lasts out or endures to a greater extent or amount than normal. The relevant public will perceive this expression as an inspirational and motivational message vis-à-vis the relevant goods and services. For these reasons, it will not be perceived as an indication of the commercial origin of the goods and services at issue. The expression ‘More to go’ will be perceived as a meaningless and distinctive word combination by the part of the relevant public that does not understand its meaning.

The words ‘SHOES & BAGS’ in the contested sign, if at all perceived and read considering their size and position, will be understood by a significant part of the relevant public with some knowledge of English, since they are rather basic English words commonly used in relation to the relevant goods. The meaning of the word ‘SHOES’ was already described above. The word ‘BAGS’ will be understood as the plural form of ‘bag’ – ‘a flexible container with an opening at one end’. Bearing in mind that the relevant goods and services are or (may) relate to footwear, clothing and clothing accessories, it is considered that this word combination is of limited distinctiveness in relation to all goods and services, as it will be perceived as a reference to their nature. The word combination ‘SHOES & BAGS’ is of average distinctiveness for the consumers that do not understand the meaning of the English words contained therein.

The black rectangles, which serve as the background to (some of) the verbal elements of the marks, are simple geometrical shapes, which will be considered as banal elements and are, therefore, non-distinctive for all the goods and services at issue.

Two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (judgment of 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (judgment of 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

With respect to composite marks, like the marks under comparison, it must be borne in mind that they cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of such a complex mark, unless that component forms the dominant element within the overall impression created by the composite mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (23/10/2002, T-6/01, ‘Matratzen’, EU:T:2002:261, § 33).

Visually, the representation of the marks under comparison is clearly different. The individual elements of the marks and their colours and arrangement are different. The visual coincidences between the marks are limited to the fact that both signs contain rectangular black figures and the word ‘SHOES’. However, as seen above, the black rectangles are simple and banal elements which will be perceived as non-distinctive.

Regarding the common word ‘SHOES’, it occupies a central position in the earlier mark. However, the word combination ‘SHOES & BAGS’ in the contested sign is not likely to be given any trade mark value by the part of the public that understands its meaning due to the fact that it is depicted in a much smaller size than the central and distinctive verbal element ‘CCC’ in red and will be perceived as a reference to the nature of the goods or the object of the services at issue. The same applies also to the part of the public that does not understand the meaning of these English words in the contested sign, since for this part of the public the element ‘More to go’ is also distinctive and, consequently, the mark is visually dominated by the distinctive elements ‘CCC’ and ‘More to go’, while the element ‘SHOES & BAGS’ is not noticeable at first sight in the complex sign and is likely to be disregarded by the relevant public.

Altogether, as the signs only coincide visually in irrelevant (negligible and/or non-distinctive) aspects, it is concluded that they are not visually similar.

Aurally, irrespective of the pronunciation rules in the various parts of the relevant territory, the marks will be pronounced differently.

The earlier mark is likely to be referred to orally as ‘MY SHOES’, because of the size and the central position of these words, regardless of the fact that they will be perceived as of limited distinctiveness by a significant part of the public. It cannot be excluded that a part of the public that does not understand the meaning of the element ‘HIER GEHT MEHR!’ may also pronounce this element, notwithstanding its small size and position, as it may perceive it as the more distinctive element of the mark.

Regarding the contested sign, it will be referred to with the name of the letter ‘C’ in the respective language, repeated three times, due to the fact that the letters ‘CCC’ occupy a prominent position in the contested sign and are, for a significant part of the public, the only distinctive element of the sign functioning as the indicator of origin. The element ‘SHOES & BAGS’ due to its size and position is not noticeable at first sight in the complex sign and is barely perceptible. Moreover, it will not be perceived as an indication of origin by the part of the public that understands its meaning and will, therefore, not be used by consumers to refer to the mark orally.

The part of the public that does not understand the meaning of the English words in the contested sign is also not likely to refer to it by the words ‘SHOES & BAGS’, since for that part of the public the mark contains an additional distinctive verbal element, ‘More to go’, which, together with the element ‘CCC’, will be used as the oral reference to the mark by that part of the public. Consequently, the words ‘SHOES & BAGS’ are likely to be disregarded by the relevant public.

Therefore, it is concluded that the signs are not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The vast majority of the German-speaking part of the public will understand the meanings both of the German words ‘HIER GEHT MEHR’ and of the English words in the marks. However, contrary to the opponent’s arguments, the Opposition Division holds that the expression ‘HIER GEHT MEHR’ in the earlier mark is not the German equivalent of the expression ‘More to go’ in English, present in the contested sign, although some conceptual connection between these expressions cannot be excluded on account of the presence of the words for ‘go’ and ‘more’ in German and English, respectively. However, as seen above, these expressions will be seen as promotional slogans by the part of the public that understands their meanings. Therefore, they are not sufficient to establish any conceptual similarity between the marks, as they cannot indicate the commercial origin of any of the marks. Consequently, the attention of the relevant public will be attracted by the additional verbal elements of the marks. This finding of no conceptual link is even more obviously valid for the part of the public that does not understand the meaning of at least one of these expressions.

The marks also share the word ‘SHOES’. However, as seen above, the words ‘SHOES & BAGS’ in the contested sign will be disregarded by the relevant public due to their diminutive size and their secondary position in the mark.

Consequently, regardless of the understanding of the different parts of the public of the remaining differentiating elements of the marks and whether those elements will be perceived as meaningful or not, the marks do not coincide conceptually in any relevant aspect. Therefore, the signs are not similar conceptually.

As the signs only coincide in non-distinctive expressions or in irrelevant aspects on all of the three levels of comparison, it is concluded that they are dissimilar.

3. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

The opponent has also based its opposition on German trade mark registration No 302 010 051 326 for the figurative mark . Since this mark is identical to the one compared above and refers to the territory of Germany already taken into account in the above examination in relation to the European Union, the outcome cannot be different with respect to this earlier mark.

The opponent has also based its opposition on international trade mark registration No 1 086 305 designating Germany. The Opposition Division finds that the abovementioned designation is an obvious mistake in the notice of opposition. It is clear from the relevant documents submitted in support of the opposition (submitted in a timely manner within the substantiation period) that the territory of Germany refers to the basic registration of the international registration and not to one of the designated territories. Moreover, the territory of Germany has already been taken into account in the present decision. Consequently, the Opposition Division considers that it is unnecessary to comment on the substantiation of the designation of Germany of international trade mark registration No 1 086 305, mentioned in the notice of opposition.

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

Adriana VAN ROODEN

Boyana NAYDENOVA

Pedro JURADO MONTEJANO

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.