OPPOSITION No B 1 690 653

Caleres Inc., 8300 Maryland Avenue, St. Louis, Missouri 63105, United States of America (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Aspiga Limited, 2 Stable Cottage, Haven Hill, St Mary Bourne, Andover, Hampshire SP11 6AU, United Kingdom (applicant), represented by Talbot Walker LLP, 16 Bridge Street, Andover, Hampshire SP10 1BJ, United Kingdom (professional representative).

On 22/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 690 653 is upheld for all the contested goods and services.

2.        European Union trade mark application No 8 839 409 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 8 839 409. The opposition is based on European Union trade mark registrations No 6 035 422 and No 6 987 861. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registrations No 6 035 422, ‘VIA SPIGA’, and No 6 987 861, .

In the present case the contested trade mark was published on 12/04/2010.

Earlier trade mark No 6 035 422, ‘VIA SPIGA’, was registered on 26/05/2008, and earlier trade mark No 6 987 861, , was registered on 26/03/2009. Therefore, since the earlier registered marks had been registered for less than five years at the date of publication of the contested sign, the request for proof of use is inadmissible.

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 6 035 422.

1. The goods and services

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

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; sunglasses; eyeglasses; eyeglass cases; eyeglass frames.

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; wristwatches.

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; wallets; purses; handbags; leather and imitation leather bags; leather briefcases; small leather goods, namely, key cases, key fobs and card cases.

Class 25:        Clothing, footwear, headgear; swimsuit; hats; hosiery; gloves (clothing); neckties; belts (for clothing); boots; slippers; sandals; legwear, namely, knee high hose, pantyhose, stockings, tights and leggings; blouses; coats; dresses; lingerie; pants; scarves; silk scarves; shirts; shorts; skirts; sleepwear; swimwear; suits; trousers; vests; wraps; caps; head scarves; headbands.

Class 26:        Lace and embroidery, barrettes, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 35:        Advertising; business management; business administration; office functions.

The contested goods and services are the following:

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, imitation jewellery, necklaces, bracelets, earrings, watches; precious stones; horological and chronometric instruments.

Class 18:        Articles of leather and of imitation leather, baskets, bags, handbags, shopping bags, beach bags, wallets, purses and credit card holders; umbrellas.

Class 25:        Clothing, footwear, sandals, belts, kikoys, dresses, skirts, swimwear, beachwear, beach robes, wraps in the nature of clothing; hats, scarves and shorts.

Class 35:        Retail and wholesale services all relating to the sale of sandals, footwear, articles of clothing, beachwear, swimwear, bags, belts and kikoys, shorts. hats, jewellery and imitation jewellery.

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 ‘namely’, used in the opponent’s list of goods in Classes 18 and 25 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.

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

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery; precious stones; horological and chronometric instruments are identically contained in both lists of goods.

The contested imitation jewellery, necklaces, bracelets, earrings are included in the broad category of the opponent’s jewellery. Therefore, they are identical.

The contested watches include, as a broader category the opponent’s wrist watches. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 18

Articles of leather and of imitation leather, handbags, wallets, purses and credit card holders; umbrellas are identically contained in both lists of goods (including synonyms, i.e. card cases in the opponent’s list and credit card holders in the applicant’s list).

The contested baskets, bags, shopping bags, beach bags overlap with the opponent’s leather and imitation leather bags, to the extent that the contested goods can be made of leather or imitation leather. Therefore, they are identical.

Contested goods in Class 25

Clothing, footwear, sandals, belts, dresses, skirts, swimwear, hats, scarves and shorts are identically contained in both lists of goods.

The contested kikoys, beachwear, beach robes, wraps in the nature of clothing are included in the broad category of the opponent’s clothing. Therefore, they are identical.

Contested services in Class 35

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. The same principles apply to wholesaling.

Therefore, the contested retail and wholesale services all relating to the sale of sandals, footwear are similar to a low degree to the opponent’s footwear.

Using the same reasoning, the contested retail and wholesale services all relating to the sale of articles of clothing, beachwear, swimwear, bags, belts and kikoys, shorts are also similar to a low degree to the opponent’s clothing and the contested retail and wholesale services all relating to the sale of hats are similar to a low degree to the opponent’s headgear.

Moreover, the contested retail and wholesale services all relating to the sale of jewellery and imitation jewellery are similar to a low degree to the opponent’s jewellery.

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 similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise (the latter for goods in Class 35).

Contrary to the applicant’s arguments set out in its observations of 21/11/2016, the public’s degree of attention is deemed average, except for some of the goods in Class 14 (e.g. precious metals, jewellery, precious stones). In its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

3. The signs

VIA SPIGA	ASPIGA
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 marks are not meaningful in certain territories, for example where English and Italian are generally not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-, Slovakian- and Lithuanian-speaking parts of the public.

Both the earlier mark and the contested sign are word marks formed of words that have no meaning for the general public in the relevant territory. Therefore, the distinctiveness of both ‘VIA SPIGA’ and ‘ASPIGA’ is average.

Visually and aurally, the signs coincide in the letters/sounds ‘*ASPIGA’, while they differ only in the letters/sounds ‘VI’ of the contested sign and in the fact that the contested sign is composed of two words, while the earlier mark has only one verbal element. Despite these differences and bearing in mind that the earlier mark is entirely included in the contested sign, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.

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 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

The goods are partly identical and partly similar to a low degree. The earlier mark has an average degree of distinctiveness and the degree of attention of the relevant public is average, except for some of the goods in Class 14, in relation to which it is relatively high.

The signs are visually and aurally similar to a high degree because the contested sign is entirely included in the earlier mark. Since neither of the signs has a meaning, there are no conceptual aspects that influence the comparison of the signs. Admittedly, the earlier mark also includes the letters ‘VI’ and consists of two words, unlike the one-word contested sign. However, also bearing in mind that consumers perceive marks as a whole, this differing element is not deemed sufficient to outweigh the similarities arising from the coinciding six-letter string ‘ASPIGA’.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

In its observations of 21/11/2016, the applicant argues that:

1. The earlier mark differs from the contested sign in its beginning, that is, the most important part. Previous decisions of the Office and of the General Court are referred to (e.g. 01/06/2016, T-292/12, MAGNET 4/MAGNEXT, EU:T:2016:329).

2. The opponent did not demonstrate an actual likelihood of confusion; on the contrary, there is no likelihood of confusion. The marks are used on different products (see Annexes 1 and 2, showing how the opponent uses its mark, and Annex 4, showing how the applicant uses its mark) and target different consumers; they coexist on the market. A search report regarding the contested sign which does not display the earlier mark is attached (Annex 5).

3. The contested mark has a reputation, as allegedly shown by the sale figures and documentation attached (Annex 3).

Concerning the applicant’s first argument relating to the importance of the beginning of signs, the Opposition Division acknowledges that, in word marks or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention; therefore, in general, the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30). Nonetheless, this mostly depends on the circumstances of the case (the length of the sign, syllabic distribution, the typeface used, etc.) and it is not a set rule. In the present case, the difference in the beginning of the signs is outweighed by the fact that the contested sign is entirely included in the earlier mark, constituting six of the eight letters/phonemes of the earlier mark.

The applicant refers to previous decisions of the Office to support its argument. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. However, the Opposition Division observes that it was not possible to identify the decisions referred to by the applicant. Therefore, the Opposition Division could not assess the reasoning in those decisions.

Unlike the decisions of the Office, the judgments of the General Court are legally binding on the Opposition Division. Nevertheless, the judgment of 01/06/2016, T-292/12, MAGNET 4/MAGNEXT, EU:T:2016:329, is not relevant to the present proceedings. In that case, the marks at issue had the same beginning, unlike in the present case, where the beginnings differ. Moreover, the Court observed additional and more evident differences between the abovementioned judgment and the present case (e.g. the signs were conceptually not similar in the judgment referred to). Consequently, the abovementioned judgment cannot be taken into account in the present assessment.

Concerning the applicant’s second argument regarding the lack of evidence of an actual likelihood of confusion between the marks, the Opposition Division observes that a likelihood of confusion involves a probability of confusion on the part of the relevant consumer and does not require actual confusion. As expressly confirmed by case-law, it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion’ (24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 69). Consequently, the present assessment is based only on the relevant law (mainly the EUTMR) and the General Court and Court of Justice case-law, and the facts put forward by the applicant cannot be taken into consideration. Therefore, the fact that the opponent did not prove an actual likelihood of confusion, the evidence of the use on the market of the marks at issue and the results of the search report, which did not display the earlier mark, cannot be considered relevant in the present assessment.

Regarding, in particular, the coexistence of the 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). Such coexistence must be proven; however, the applicant relied on the fact that the opponent did not file any evidence of actual confusion and only submitted documentation showing how the marks were used on the market, a search report and some sale figures of the earlier mark (see above). Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market on a national or 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.

As regards the applicant’s third argument, regarding the reputation of the contested sign prior to the date of registration, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Under these circumstances, all the applicant’s arguments shall be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-, Slovakian- and Lithuanian-speaking parts 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 6 035 422. It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark. This conclusion also stands for the contested goods found to be similar to a low degree to those of the earlier mark. 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 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). In the present case, the similarity between the signs is sufficient to lead to a likelihood of confusion, even in relation to the goods that are similar to only a low degree.

As the earlier right European Union trade mark registration No 6 035 422, ‘VIA SPIGA’, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent, namely European Union trade mark registration No 6 987 861,  (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

Andrea VALISA

Orsola LAMBERTI

Michele M. BENEDETTI-ALOISI

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.