OPPOSITION No B 2 682 469

División Anatómicos, S.L., C/ Persianas, n° 8, 03630 Sax, Spain (opponent), represented by Valentin Justel Tejedor, Calle Lanuza, 2- 1º E, 03001 Alicante, Spain (professional representative).

a g a i n s t

Hanes France SAS, 2 rue des Martinets, 92500 Rueil-Malmaison, France (applicant), represented by Potter Clarkson LLP, The Belgrave Centre, Talbot Street, Nottingham NG1 5GG, United Kingdom (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 682 469 is upheld for all the contested goods.

2.        European Union trade mark application No 14 878 086 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 878 086. The opposition is based on, inter alia, European trade mark registration No 13 400 189. The opponent invoked Article 8(1)(a), 8(1)(b) and 8(5) 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 trade mark registration No 13 400 189.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25:        Headgear; Footwear; Clothing.

The contested goods are the following:

Class 25:        Clothing, footwear, headgear.

Contested goods in Class 25

Clothing, 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.

Contrary to the argument of the applicant, 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

	DIAM'S
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.

None of the marks have a direct meaning in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. However it should be noted that the apostrophe together with the letter ‘s’ in the contested sign will be perceived as a genitive ‘s’ making the mark possessive. The applicant claims that the earlier mark will be pronounced as the English name Diane. However, due to the fact that the mark is missing the last letter ‘e’, a majority of the relevant public will pronounce the earlier mark the same as you would pronounce the same letters in the word Arcadian and not as in the name Diane.

The earlier mark is a figurative mark containing the verbal element, ‘Dian’, in highly stylised orange characters. The end of the last letter ‘n’ is used to underline the mark.

The contested sign is a word mark, ‘DIAM’S’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the contested sign is represented in upper or lower characters

Visually, the signs coincide in the letters ‘D-I-A’ which almost constitutes the entire earlier mark. Furthermore, although the letter ‘n’ of the earlier mark and the letter ‘m’ of the contested sign are different, they still share some degree of visual similarity. However, the signs differ in the apostrophe and additional genitive ‘s’ at the end of the contested sign. The earlier mark also have stylised orange characters. Nevertheless, it has to be borne in mind that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛D-I-A’, present identically in both signs. Furthermore, although the letter ‘n’ of the earlier mark and the letter ‘m’ of the contested sign are different, their pronunciations are very similar. However, the sound of the genitive letter  ‘s’ at the end of the contested sign has no counterpart in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, although the contested sign will be perceived as possessive it will not give a clear concept or meaning as a whole. Neither will the earlier mark. Since a conceptual comparison is not possible, 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital of art. 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods are identical. The goods are directed at the public at large with an average level of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. Additionally the marks in dispute have been found visually similar to an average degree and aurally highly similar. Since the signs have no meaning the conceptual aspect does not influence the assessment of the similarity of the signs.

The applicant is of the opinion that since the signs are short, the public will be able to perceive all of their single elements. However, in the present case, the Opposition Division considers that the visual and aural similarities between the letters ‘n’ and ‘m’, both placed in the third position of the earlier mark and of the contested sign, respectively, increase the number of coincidences between them and lead to a similar overall impression. This argument must therefore be set aside. The additional genitive ‘s’ at the end of the contested sign and the differences in the graphical aspects are not sufficient to counteract the overwhelming similarities between the signs.  

In view of the foregoing, it is likely that a significant part of the relevant consumers may confuse the signs, especially bearing in mind the principle of imperfect recollection. Indeed, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In its observations, the applicant argues that it owns several registrations with the word ‘DIAM’S’ in the European Union, some of which coexists with the opponent’s earlier marks.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the English-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 trade mark registration No 13 400 189. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right, European trade mark registration No 13 400 189, 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and (5) EUTMR.

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

Sandra IBAÑEZ

Benjamin Erik WINSNER

Pedro JURADO

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.