OPPOSITION No B 2 626 524

Adolf Riedl GmbH & Co. KG, Ottostr. 2, 95448 Bayreuth, Germany (opponent), represented by Rau, Schneck & Hubner Patentanwalte Rechtsanwalte PartgmbB, Königstraße 2, 90402 Nürnberg, Germany (professional representative)

a g a i n s t

Olympia Le –Tan IP, 58, rue Charles Martel, Luxembourg (applicant), represented by Wilson & Berthelot, 22 rue Bergère, 75009 Paris, France (professional representative).

On 18/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 626 524 is upheld for all the contested goods, namely:

Class 18:         Wallets; purses; credit card cases [wallets]; trunks and travelling bags; luggage; casual bags; handbags; backpacks; holdalls; sport bags; net bags for shopping; vanity cases (not fitted); cosmetic purses; make-up bags sold empty; vanity cases (not fitted).

Class 24:         Fabrics; elastic woven material; linens; bath linen (except clothing).

Class 25:         Clothing; footwear; headgear; shirts; clothing of leather with guards; belts (clothing); furs (clothing); gloves [clothing]; scarves; neckties; hosiery; socks; slippers; beach shoes, skiing or sports shoes; underwear.

2.        European Union trade mark application No 14 403 174 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 403 174, namely against some of the goods in Classes 18 and 24 and all of the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 11 956 455. 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 European Union trade mark registration No 11 956 455.

1. The goods

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

Class 18:         Sport bags, cosmetics, cosmetic purses, travel kits bags sold empty, leisure bags, bag backs, beach bags, the foregoing goods specifically for swim wear or beach wear or beach utensils or poolside utensils to be used in water. 

Class 24:         Towels made of textile fabrics, bath towels, fabrics made of synthetic fibres (other than for insulation purposes) for the manufacture of swimwear.

Class 25:         Clothing; swimwear; beachware; headgear for wear; footwear.

The contested goods are the following:

Class 18:         Wallets; purses; credit card cases [wallets]; trunks and travelling bags; luggage; casual bags; handbags; backpacks; holdalls; sport bags; net bags for shopping; vanity cases (not fitted); cosmetic purses; make-up bags sold empty; vanity cases (not fitted).

Class 24:         Fabrics; elastic woven material; linens; bath linen (except clothing).

Class 25:         Clothing; footwear; headgear; shirts; clothing of leather with guards; belts (clothing); furs (clothing); gloves [clothing]; scarves; neckties; hosiery; socks; slippers; beach shoes, skiing or sports shoes; underwear.

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 18

The contested casual bags; handbags are included in, or overlap with, the broader category of the opponent’s leisure bags. They are, therefore, identical.

Sport bags, backpacks, cosmetic purses are identically included in both lists of goods.

The contested vanity cases (not fitted); make-up bags sold empty; vanity cases (not fitted) are included in the broader category of the opponent’s cosmetic purses and they are, therefore, identical.

The contested wallets; purses; credit card cases [wallets]; trunks and travelling bags; luggage; holdalls; net bags for shopping are similar to the opponent’s leisure bags, as they have the same purpose and can have the same distribution channels and relevant public.

Contested goods in Class 24

The contested fabrics; elastic woven material include or overlap with, as broader categories, the opponent’s fabrics made of synthetic fibres (other than for insulation purposes) for the manufacture of swimwear. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The same applies to the contested bath linen (except clothing), which includes, as a broader category, the opponent’s towels made of textile fabrics. Therefore, they are identical.

The contested linens are similar to a low degree to the opponent’s fabrics made of synthetic fibres (other than for insulation purposes) for the manufacture of swimwear, as they have the same nature and can have the same distribution channels and end users.

Contested goods in Class 25

The contested clothing; footwear; headgear appear identically in both lists of goods (despite slightly different wording in the case of headgear).

The contested shirts; clothing of leather with guards; belts (clothing); furs (clothing); gloves [clothing]; scarves; neckties; hosiery; socks; underwear are included in the broader category of the opponent’s clothing and they are, therefore, identical.

The contested slippers; beach shoes, skiing or sports shoes are included in the broader category of the opponent’s footwear and they are, therefore, identical.

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 and similar are directed at the public at large and professionals, for instance in the case of fabrics made of synthetic fibres (other than for insulation purposes) for the manufacture of swimwear. The degree of attention is considered average.

3. The signs

OLYMPIA	OLYMPIA LE-TAN
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The word ‘LE-TAN’ placed in second position in the contested mark, on its own or together with the word ‘OLYMPIA’ (which will be perceived as a first name or a sanctuary of ancient Greece, as explained below), will not be associated with any meaning by the relevant public. At most, it might be perceived by a part of the public as a surname. In any case, the element ‘LE-TAN’ is not descriptive, allusive or otherwise weak for the goods in question and will be considered distinctive.

The word ‘OLYMPIA’, which constitutes the entire earlier mark and is the first word of the contested sign, will be understood as having the same meaning as the corresponding Spanish word ‘Olimpia’, referring to a sanctuary of ancient Greece known for having been the site of the Olympic Games in classical times and as an uncommon female first name. Considering the relevant goods, this element is distinctive to an average degree.

Visually, the signs coincide in seven letters, ‘OLYMPIA’. They differ in the element ‘LE-TAN’ of the contested mark. Indeed, the earlier mark is entirely reproduced in the contested sign and plays an independent and distinctive role therein. The fact that, in the contested sign, the distinctive element ‘LE-TAN’ is included next to the word ‘OLYMPIA’ does not mean that the signs will not be perceived as similar. In fact, even considering the differing elements, the signs are, overall, visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘O-LYM-PIA’, present identically in both signs. The pronunciation differs in the syllables ‘LE-TAN’ of the contested mark, which have no counterparts in the earlier sign. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the meaningful and distinctive word ‘OLYMPIA’. It follows that the signs are conceptually similar to an average degree if ‘LE-TAN’ is perceived as a surname. If not, ‘Olympia’ being the only concept in the contested sign, the signs are conceptually highly 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 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

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).

As follows from the analysis in section a) above, the goods are identical or similar (to various degrees).

The signs coincide visually, aurally and conceptually in the component ‘OLYMPIA’, which constitutes the entirety of the earlier mark and is reproduced as an independent and distinctive element in the contested sign.

Applying the principle of interdependence, the relevant public is likely to perceive the contested sign as a sub-brand or variant of the earlier mark, configured in a different way according to the type of goods or services that it designates, and believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings (see, by analogy, 23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 956 455. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right EUTM No 11 956 455 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Martin MITURA

Inés GARCIA LLEDO

Saida CRABBE

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.