OPPOSITION No B 2 664 319
Johanna Gasser, Rigistrasse 8, 8330 Pfäffikon ZH, Switzerland, and David Tomaschitz, Fischbach, 8335 Hittnau, Switzerland (opponents), represented by Hoefer & Partner Patentanwälte mbB, Pilgersheimer Str. 20, 81543 München, Germany (professional representative)
a g a i n s t
Coniston Water Ltd., 20-22 Bedford Row, London WC1R, United Kingdom (applicant), represented by GT. de Propiedad Industrial S.L., c/Capitán Haya núm. 38-7º-izda., 28020 Madrid, Spain (professional representative).
On 15/03/2017, the Opposition Division takes the following
1. Opposition No B 2 664 319 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 834 691 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponents filed an opposition against all the goods and services of European Union trade mark application No 14 834 691. The opposition is based on international trade mark registration No 1 175 630 designating the European Union. The opponents 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 goods and services
The goods on which the opposition is based are, inter alia, the following:
Class 25: Polo shirts, blouse, trousers, suits for men, summer dresses, evening dresses, underwear, ties, cravat cloth, scarves, ponchos, jackets, coats, rain clothing, swim wear, pyjamas, shoes for women and men, headgear, all the aforementioned goods except knitted goods.
The contested goods and services are the following:
Class 25: Clothing; Footwear; Headgear.
Class 35: Wholesale services in relation to clothing; Wholesale services in relation to headgear; Wholesale services in relation to footwear.
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 25
The contested clothing includes, as a broader category, the opponents’ polo shirts, blouse, trousers, suits for men, summer dresses, evening dresses, underwear, ties, cravat cloth, scarves, ponchos, jackets, coats, rain clothing, swim wear, pyjama all the aforementioned goods except knitted goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponents’ goods.
The contested footwear includes, as a broader category, the opponents’ shoes for women and men, all the aforementioned goods except knitted goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponents’ goods.
The contested headgear includes, as a broader category, the opponents’ headgear, all the aforementioned goods except knitted goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponents’ goods.
Contested services in Class 35
Retail services and wholesale 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.
Therefore, the contested wholesale services in relation to clothing; wholesale services in relation to headgear; wholesale services in relation to footwear are similar to a low degree to the opponents’ goods in Class 25.
- 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 degree of attention is average.
- The signs
Earlier trade mark
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). This applies by analogy to international registrations designating the European Union. 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 elements of the contested sign are 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 earlier mark is a figurative sign consisting of a stylised black seahorse. In relation to the goods and services, this element has no meaning and is, therefore, distinctive.
The contested sign is also a figurative mark consisting of the following elements: a stylised blue seahorse that contains some dots in different shades of blue (light blue, dark blue and turquoise), a yellow starfish, an orange spot and the expression ‘Beach & Colonial’, which is below the figurative elements.
In relation to the relevant goods and services (clothing, footwear, headgear and wholesale services of these goods), the word ‘Beach’ is descriptive of the type of goods provided (beach wear) and the word ‘Colonial’ refers to the colonial style of the goods. Therefore, these elements are non-distinctive or weak. The starfish and the orange spot will be perceived as ornamental elements. In addition, they reinforce the ‘beach’ concept, since they allude to the sea and the sun. Consequently, the stylised seahorse is the most distinctive element of the contested sign.
Visually, the signs coincide in the depiction of a distinctive stylised seahorse, which is in profile, looking to the left. The seahorses in both signs have long noses, big bellies and long tails. They differ in that the seahorse of the earlier sign has a visible eye and its head is tilted downwards, whereas the seahorse’s head in the contested sign is in an upright position. Furthermore, the seahorse of the contested sign has a more visible dorsal fin and it is depicted in colours, whereas the seahorse in the earlier sign is black. The signs also differ in the additional figurative and verbal elements of the contested sign, as described above. Taking into account these considerations about the distinctive elements of the signs, the signs are visually similar to an average degree.
Aurally, purely figurative signs are not subject to a phonetic aural assessment. As the earlier sign is purely figurative, it is not possible to compare the signs aurally.
Conceptually, both signs will be perceived as depictions of a stylised seahorse (a type of small fish that swims in a vertical position and has a head that is similar to that of a horse). The expression ‘BEACH & COLONIAL’ of the contested sign refers to the specific style of the goods (beach wear and colonial style). The contested sign also includes the depiction of a yellow starfish and an orange spot; these will be perceived as decorative elements that reinforce the ‘beach’ concept. Since these elements do not significantly differentiate the signs in question because of their non-distinctive or weak character, the signs are conceptually similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 opponents did not explicitly claim that their 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.
- 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).
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.
In the present case, the goods are identical and the services are similar to a low degree. The earlier mark has an average degree of distinctiveness.
The signs are visually similar to an average degree and conceptually similar to a high degree to the extent that they have in common the depiction of a stylised seahorse.
The differences between the seahorses are likely to be noticed only during a direct and very detailed visual examination of the signs, looking at one sign next to the other one. However, 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). Therefore, the Opposition Division considers that the differences in the depictions of the seahorses are not sufficiently noticeable to be remembered by the consumer and to safely differentiate the signs.
Furthermore, the additional figurative and verbal elements of the contested sign are non-distinctive or weak and will not be considered indicators of trade mark origin, in comparison with the coinciding distinctive element that depicts a stylised seahorse.
With regard to the conditions in which the products in question are marketed, it is common in the clothing sector for the same mark to be configured in various different ways according to the type of product which it designates. It is also common for the same clothing manufacturer to use sub-brands in order to distinguish his various lines from one another (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In such circumstances, it is conceivable that the public may regard the goods (and the services in relation to those goods) as belonging, admittedly, to two distinct ranges of products, nonetheless from the same manufacturer (the contested sign distinguishing a line for beach and colonial wear).
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 opponents’ international trade mark registration designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods and services.
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 opponents 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 opponents 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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.