OPPOSITION No B 2 755 240

Frame La Brands, LLC, 3621 Hayden Avenue, Culver City, CA 90232, Unites States of America (opponent), represented by Aaron Wood, 2 Ivy Court, Daventry, Northamptonshire NN11 4EP, United Kingdom (professional representative)

a g a i n s t

Christian Boszczyk, Dollmannstraße 4, 81541 München, Germany, Dusan Cvetkovic, Landsberger Str. 141, 80339 München, Germany , Paul Hintermeier, Agnes-Bernauser Str. 69, 80687 München, Germany (all the aforementioned: applicant), represented by Loschelder Leisenberg Rechtsanwälte, Maximilianstr. 29, 80539 München, Germany (professional representative).

On 23/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 755 240 is upheld for all the contested goods.

2.        European Union trade mark application No 15 414 824 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 15 414 824 for the figurative mark. The opposition is based on, inter alia, European Union trade mark registration No 13 958 665 for the word mark FRAME. The opponent invoked Article 8(1)(b), 8(5), 8(4) 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 13 958 665.

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; Articles of leather and imitations of leather; unworked or semi-worked leather and articles of unworked or semi-worked leather; animal skins; hides; trunks and travelling bags; travel cases; luggage; suitcases; handbags; shoulder bags; bags; shopping bags; beach bags; satchels; school bags; sports bags; portmanteaux; clutch bags; all-purpose carrying bags; tote bags; beach bags; overnight bags; duffel bags; cross-body bags; bags supported by internal frames; pouchettes; hold-alls; cabin bags; hands-free bags; top handle bags; trifold bags; drawstring bags; barrel bags; bumbags; bucket bags; messenger bags; minaudieres; sling bags; wristlets; knitted bags; leather goods; leather and imitation leather bags; leather cases; leather key chains; leather shopping bags; cases; artificial fur bags; vanity cases; toiletry bags; casual bags; cosmetic bags; valises; vanity cases; beauty cases; make-up bags; toilet bags; gent's handbags; music cases; briefcases; attaché bags; attaché cases; hat boxes; wallets; cases for keys; purses; luggage; suitcases; backpacks; rucksacks; athletic bags; camping bags; bags for campers; casual bags; pouches; canvas bags; slings; slings for babies; diaper bags; baby carriers; labels and tags for luggage; leather straps; shoulder straps; handbag straps; hat boxes of leather; carriers for suits, for shirts and for dresses; tie cases; notecases; document cases of leather; credit card cases and holders; leather belts; umbrellas; parasols; parts and fittings for all the aforesaid goods; clothing for pets; clothing for animals; collars for animals; leashes for animals.

 

Class 25         Clothing, footwear and headgear; women's clothing; men's clothing; children's clothing; trousers; chinos; jeans; leggings; pants; slacks; clothing made of denim; skinny, cropped, high rise, boot cut, bellbottom and flared trousers, leggings, denim, pants, slacks and jeans; spandex and stretch clothing, including spandex and stretch trousers, jeans, slacks and leggings; overalls; outer clothing; under clothing; underwear; lingerie; gaiters; gaiter straps; tights; shirts; tank tops; t-shirts; sweatshirts; sweatpants; shorts; dressing gowns; dresses; wedding dresses; blouses; vests; gowns; saris; skirts; ready-made clothes; knitwear; jumpers; play suits; sweaters; pullovers; overcoats; coats; rainwear; rain coats; waterproof clothing; parkas; jackets; suits; layettes; swimsuits; swimwear; beachwear; bikinis; mittens; gloves; muffs; scarves; girdles; belts; belts not made of leather; wraps; gloves; shower caps; hosiery; camisoles; slips; shapewear; sleep suits; hoodies; skorts; skater dresses; wrap dresses; sarongs; jumpsuits; pencil skirts; ponchos; cardigans; blazers; suits; business suits; formal suits; tuxedos; twill jackets; peplums; women's footwear; boots; boots for sports; ski boots; shoes; sports shoes; formal shoes; sandals; bath slippers; slippers; trainers; flip flops; brogues; loafers; high tops; ballet flats; boat shoes; court shoes; biker boots; lace-ups; cowboy boots; go-go boots; thigh high boots; toners; stiletto heel shoes; spike heels; socks; panty hose; stocking suspenders; stockings; headgear; caps; shower caps; hats; headbands; sun visors; sleepwear; sleep masks; sleeping eye masks; berets; beanie hats; bowler hats; bucket hats; capuchins; cloche hats; cowboy hats; newsboy caps; balaclavas. 

Class 35         Advertising and marketing services; advertising and promotional services; business management; business administration and management services, namely, managing office functions for the conduct of retail and online clothing sales for others; retail of leather and imitations of leather and goods made of these materials and not included in other classes, articles of leather and imitations of leather, unworked or semi-worked leather and articles of unworked or semi-worked leather, animal skins, hides; retail of trunks and travelling bags, travel cases, luggage, suitcases, handbags, shoulder bags, bags, shopping bags, beach bags, satchels, school bags, sports bags, portmanteaux, clutch bags, all-purpose carrying bags, tote bags, beach bags, overnight bags, duffel bags, cross-body bags, bags supported by internal frames; retail of pouchettes, hold-alls, cabin bags, hands-free bags, top handle bags, trifold bags, drawstring bags, barrel bags, bumbags, bucket bags, messenger bags, minaudieres, sling bags, wristlets, knitted bags, leather goods, leather and imitation leather bags, leather cases, leather key chains, leather shopping bags, cases, artificial fur bags, vanity cases, toiletry bags, casual bags, cosmetic bags, valises, vanity cases, beauty cases, make-up bags, toilet bags, gent's handbags; retail of music cases, briefcases, attaché bags, attaché cases; retail of hat boxes, wallets, cases for keys, purses, luggage, suitcases, backpacks, rucksacks, athletic bags, camping bags, bags for campers, casual bags, pouches, canvas bags, slings, slings for babies, diaper bags, baby carriers, labels and tags for luggage, leather straps, shoulder straps, handbag straps, hat boxes of leather, carriers for suits, for shirts and for dresses; retail of tie cases, notecases, document cases of leather, credit card cases and holders, leather belts, umbrellas, parasols, parts and fittings for all the aforesaid goods; retail of clothing for pets, clothing for animals, collars for animals, leashes for animals, clothing, footwear and headgear, women's clothing, men's clothing, children's clothing, trousers, chinos, jeans, leggings, pants, slacks, clothing made of denim, skinny, cropped, high rise, boot cut; retail of bellbottom and flared trousers, leggings, denim, pants, slacks and jeans, spandex and stretch clothing, including spandex and stretch trousers, jeans, slacks and leggings, overalls, outer clothing, under clothing, underwear, lingerie, gaiters, gaiter straps; retail of tights, shirts, tank tops, t-shirts, sweatshirts, sweatpants, shorts, dressing gowns, dresses, wedding dresses, blouses, vests, gowns, saris, skirts, ready-made clothes, knitwear, jumpers, play suits, sweaters, pullovers, overcoats, coats, rainwear, rain coats, waterproof clothing, parkas, jackets, suits, layettes, swimsuits, swimwear, beachwear, bikinis, mittens, gloves, muffs; retail of scarves, girdles, belts, belts not made of leather, wraps, gloves, shower caps, hosiery, camisoles, slips, shapewear, sleep suits, hoodies, skorts, skater dresses, wrap dresses, sarongs, jumpsuits, pencil skirts, ponchos, cardigans, blazers, suits, business suits, formal suits, tuxedos, twill jackets, peplums, women's footwear, boots, boots for sports, ski boots, shoes, sports shoes, formal shoes; retail of sandals, bath slippers, slippers, trainers, flip flops, brogues, loafers, high tops, ballet flats, boat shoes, court shoes, biker boots, lace-ups, cowboy boots, go-go boots, thigh high boots, toners, stiletto heel shoes, spike heels, socks, panty hose, stocking suspenders, stockings, headgear, caps, shower caps, hats, headbands, sun visors, sleepwear, sleep masks, sleeping eye masks; retail of berets, beanie hats, bowler hats, bucket hats, capuchins, cloche hats, cowboy hats, newsboy caps, balaclavas, retail of eyewear, jewellery, watches, cosmetics and make-up, eyewear, eyeglasses, eyeglass frames, eyewear and eyeglass cases, sunglasses; retail of cases and containers for electronic devices, cell phones, laptops, tablets, and personal digital assistants; Retail and wholesale services in relation to all of the goods listed above; retail and wholesale services whether in store, by mail order catalogues, telephone, or via the internet in relation to all of the goods listed above; presentation of goods on communication media for retail purposes; demonstration of goods; provision of information, advisory and consultancy services in relation to the aforementioned services.

The contested goods are the following:

Class 14         Jewellery; Chains [jewelry]; Necklaces [jewellery, jewelry (Am.)]; Bracelets [jewellery, jewelry (Am.)]; Key chains as jewellery [trinkets or fobs].  

Class 18         Holdalls; Handbags; Shoulder bags; Shopping bags; Grips [bags]; Backpacks; Wallets; Leather cases; Card wallets [leatherware]; Keycases; Leather bags and wallets; Handbags, purses and wallets; Wallets for attachment to belts. 

Class 25         Knitted caps; Caps [headwear]; Baseball caps; Hats; Clothing; Children's wear; Beach clothes; Sportswear; Boys' clothing; Shorts; Weatherproof clothing; Denims [clothing]; Leather clothing; Rainproof clothing; Belts [clothing]; Hoods [clothing]; Knitwear [clothing]; Jerseys [clothing]; Gloves [clothing]; Jackets [clothing]; Combinations [clothing]; Cuffs; Headbands [clothing]; Leather belts [clothing]; Pocket squares; Stuff jackets [clothing]; Money belts [clothing]; Sweatpants; Jogging sets [clothing]; Roll necks [clothing]; Clothing for skiing; Paper hats [clothing]; Ready-made clothing; Three piece suits [clothing]; Leisurewear; Clothing of imitations of leather; Nightwear; Underwear. 

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 14

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested jewellery; chains [jewelry]; necklaces [jewellery, jewelry (am.)]; bracelets [jewellery, jewelry (am.)]; key chains as jewellery [trinkets or fobs]  are similar to a low degree to the opponent’s retail of jewellery.

Contested goods in Class 18

Holdalls; Handbags; Shoulder bags; Shopping bags; Wallets; Backpacks; Keycases; Leather cases; Leather bags; Handbags, purses and wallets are identically contained in both lists of goods (including synonyms).

Card wallets [leatherware]; leather wallets; wallets for attachment to belts are included in the broad category of the opponent’s wallets. Therefore, they are identical.

Grips [bags] are included in the broad category of the opponent’s bags. Therefore, they are identical.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

Knitted caps; caps [headwear]; baseball caps; hats are included in the broad category of the opponent’s headwear. Therefore, they are identical.

Children's wear; beach clothes; sportswear; boys' clothing; shorts; weatherproof clothing; denims [clothing]; leather clothing; rainproof clothing; belts [clothing]; hoods [clothing]; knitwear [clothing]; jerseys [clothing]; gloves [clothing]; jackets [clothing]; combinations [clothing]; cuffs; headbands [clothing]; leather belts [clothing]; pocket squares; stuff jackets [clothing]; money belts [clothing]; sweatpants; jogging sets [clothing]; roll necks [clothing]; clothing for skiing; paper hats [clothing]; ready-made clothing; three piece suits [clothing]; leisurewear; clothing of imitations of leather; nightwear; underwear are included in the broad category of the opponent’s clothing. Therefore, they 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 and services found to be identical or lowly similar are directed at the public at large. The degree of attention may vary from average to higher than average, given that part of the goods (jewellery in Class 14) are not bought frequently and may be higher in price.

3. The signs

FRAME
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 verbal element FRAME in both signs is meaningful 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.

The element FRAME can be understood as an open structure that gives shape and support to something (e.g. the transversal ribs within a ship’s hull) or as an enclosing case into which something is fitted (e.g. the frame of a picture). As in any case it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The verbal element ’A’ of the contested sign will be associated with the concept of said letter and, due to the following hyphen, not be seen as the indefinite English article ‘a’; as it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The contested sign A-FRAME, as a whole, may be associated with a certain type or model of a frame (namely a type/model ‘A’ of a frame).

The figurative elements of the contested sign are confined to a merely decorative stylization of its letters, which is non-distinctive.

Visually, the signs coincide in the string of letters FRAME present in both signs, forming the entirety of the earlier mark and five out of six letters of the contested sign. They differ in the additional letter A and the hyphen of the contested sign, which have no counterpart in the earlier mark. Furthermore, they differ in the non-distinctive visual stylization of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters F-R-A-M-E, present identically in both signs. The pronunciation differs in the sound of the additional letter A of the contested sign. The hyphen and the figurative elements of the contested sign have no impact on the aural comparison.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the above statements concerning the semantic content of the signs. The common element FRAME will be associated with the meaning as explained above. Therefore, 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.

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 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

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).

The contested goods are identical and lowly similar. The signs are visually, aurally and conceptually highly similar. The distinctiveness of the earlier mark is normal and the degree of attention of the relevant public may vary from average to higher than average.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Taking into account that the contested mark incorporates the entire verbal element of the earlier mark as an independent distinctive element, whereas the differences are confined to the addition of a single letter and a hyphen and the non-distinctive stylization of the contested sign, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (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 English-speaking part of the public, also for lowly similar goods and for consumers that display a higher than average level of attention due to the similarities of the signs. 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 13 958 665. 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 reputation 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 European Union trade mark registration No 13 958 665 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(4), (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

Lars HELBERT

Tobias KLEE

Martin EBERL

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.