OPPOSITION No B 2 528 092

La Mania Sp. z o.o., Garażowa 7, 02-651 Warsaw, Poland (opponent), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warsaw, Poland (professional representative)

a g a i n s t

Till Lindemann, Milastraße 2, 10437 Berlin, Germany (applicant), represented by Lichte Rechtsanwälte, Kaiser-Wilhelm-Str. 93, 20355 Hamburg, Germany (professional representative).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 528 092 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 13 645 288 namely against all the goods in Class 25. The opposition is based on European Union trade mark registrations No 10 865 491 and No 10 865 591. 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 and services

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

Class 25: Articles of clothing, with the exception of sportswear and athletic wear; Footwear; Headgear; Underclothing; Bathing suit; and hosiery; Shawls.

The contested goods are the following:

Class 25: Tee-shirts; Hooded sweatshirts; Hooded pullovers; Tank tops; Knitwear [clothing]; Waist belts; Shorts; Jackets [clothing]; Socks; Layettes [clothing]; Skirts.

The contested goods are all clothing items which are included in or overlap with the broad category of the opponent’s articles of clothing, with the exception of sportswear and athletic wear. Even though some of the contested goods may also include sportswear and athletic wear, the Opposition Division cannot filter these goods from the contested clothing items ex officio. Therefore, the goods are 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 are directed at the public at large. The degree of attention is considered to be average.

3. The signs

EUTM 10 865 491 LM EUTM No 10 865 591
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 signs consist of the letters ‘LM’, one of them being a word mark and the other a figurative mark depicting the letter ‘M’ in bigger size than the letter ‘L’, in a black serif typeface, partially crossing through the base of the letter ‘L’.

The contested sign consists of a square with white outline placed in a black background, including one horizontal and three vertical white lines. It cannot be excluded that part of the relevant public will also perceive the letters ‘L’ and ‘M’ in the contested sign, although given the minimalist design of the letters this may not be obvious for all. The letters are notably joined together and form a rectangle; within this rectangle there are two lines consisting of a vertical angle, for the letter ‘L’, and three vertical lines of equal length, for the letter ‘M’. The comparison will focus on the part of the public which perceives the letters ‘L’ and ‘M’ in the contested sign, because for the part of the public not identifying these letters the signs would not coincide in any aspects and would be dissimilar, thus one of the requirements of Article 8(1)(b) would not be met.

It should be noted that the letters ‘M’ and ‘L’ are, per se, devoid of distinctive character for clothing items as they are commonly used in the market to indicate sizes, notably M(edium) and L(arge). However, the combination of the two letters results in a meaningless term with a normal degree of distinctiveness.

Visually, with regard to the earlier word mark ‘LM’, the signs coincide in both of these letters, but differ in the stylisation of the contested sign, which is quite surprising and diverts significantly from the usual representation of the letters, especially as far as the letter ‘M’ is concerned.

Therefore, these signs are visually only similar to a low degree.

As far as the earlier figurative sign is concerned, the signs do not coincide visually. The stylisation of the letters is completely different, the earlier sign being depicted in a serif font, the letters partially crossing in different sizes, while the contested sign consists of simple horizontal and vertical lines outlining the letters within a single square structure. These signs are therefore visually dissimilar.

Aurally, the pronunciation of the signs coincides in the sound of both of their letters ‘LM’. Therefore the signs are aurally identical.

Conceptually, the signs are meaningless and therefore 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 marks will rest on their distinctiveness per se.

The earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, their distinctiveness must be seen as normal.

5. Global assessment, other arguments and conclusion

In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22 et seq.).

Even though the signs are aurally identical, this identity is less relevant since in the context of clothing items 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). 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.

Consequently, the considerable visual differences between the signs caused by the particular stylisation of the coinciding elements are increasingly relevant when assessing the likelihood of confusion.

The signs are visually dissimilar as far as the earlier figurative mark is concerned. Furthermore, given that the contested mark has a quite unusual design with considerable abstraction, it is visually only similar to a low degree to the opponent’s word mark.

In conclusion, the Opposition Division is of the view that the visual differences are sufficiently remarkable to allow the public to safely distinguish between the signs.

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

Cynthia DEN DEKKER

Marianna KONDAS

Cristina CRESPO

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.