OPPOSITION No B 2 690 991

Adler Modemärkte AG, Industriestr. Ost 1-7, 63808 Haibach, Germany (opponent), represented by Christina Hambeck-Joh, Adler Modemärkte AG, Industriestr. Ost 1-7, 63808 Haibach, Germany (employee representative)

a g a i n s t

Fmtm Distribution Ltd, 3A and 3B Isle of Man Freeport, Ballasalla IM9 2AP, Isle of Man (applicant), represented by Ingenias, Av. Diagonal 421, 2º, 08008 Barcelona, Spain (professional representative).

On 17/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 690 991 is partially upheld, namely for the following contested goods:

Class 3: Perfumes; toilet water; eau de toilette; perfumery; toiletries; fragrances; soap; lotions for cosmetic purposes; after-shave lotions; shampoos; shower gel; hair conditioner; skin conditioners; cosmetics; cosmetic kits; flower perfumes (bases for-); essential oils; oils for perfumes and scents; scents; cosmetic oils.

Class 18: Leather shoulder belts; pocket wallets; notecases; key cases; credit card cases; travelling sets (leather ware); travelling sets; luggage; travelling trunks; travelling bags; garment bags for travel; envelopes, of leather, for packaging; umbrellas; parasols; purses; leather cases; attaché cases; briefcases; suitcases; vanity cases (not fitted); make-up cases; credit card holders; bags made of leather; handbags; shopping bags; make-up bags; beach bags; sports bags; luggage tags; bags; pouches; leather or leather-board boxes; cases of leather or leatherboard.

2.        European Union trade mark application No 14 922 041 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 922 041 for the word mark ‘BLACK EAGLE’, namely against some of the goods in Classes 3 and 18. The opposition is based on European Union trade mark registration No 11 419 942 for the figurative mark . 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

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

Class 3: Soaps; perfumery, essential oils, articles for body- and beauty-care.

Class 18: Goods of leather and imitations of leather, not included in other classes, namely bags and other containers not specifically designed for the objects being carried, and small leather goods, in particular purses, pocket wallets, key wallets; trunks and travelling bags; parasols, umbrellas, walking sticks.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 3: Perfumes; toilet water; eau de toilette; perfumery; toiletries; fragrances; soap; lotions for cosmetic purposes; after-shave lotions; shampoos; shower gel; hair conditioner; skin conditioners; cosmetics; cosmetic kits; flower perfumes (bases for-); essential oils; oils for perfumes and scents; scents; cosmetic oils.

Class 18: Leather shoulder belts; pocket wallets; notecases; key cases; credit card cases; travelling sets (leather ware); travelling sets; luggage; travelling trunks; travelling bags; garment bags for travel; envelopes, of leather, for packaging; umbrellas; parasols; purses; leather cases; attaché cases; briefcases; suitcases; vanity cases (not fitted); make-up cases; credit card holders; bags made of leather; handbags; shopping bags; make-up bags; beach bags; sports bags; luggage tags; furniture coverings of leather; bags; pouches; leather or leather-board boxes; cases of leather or leatherboard.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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 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 3

Perfumery; soap; essential oils are identically contained in both lists of goods.

The contested perfumes; toilet water; eau de toilette; fragrances; flower perfumes (bases for -); scents are included in the broad category of the opponent’s perfumery. Therefore, they are identical.

The contested toiletries; after-shave lotions include preparations for beautification and personal hygiene and therefore overlap with the opponent’s perfumery. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested shower gel is included in the broad category of, or overlaps with, the opponent’s soaps. Therefore, they are identical.

The contested lotions for cosmetic purposes; shampoos; shower gel; hair conditioner; skin conditioners; cosmetics; cosmetic kits; cosmetic oils are included in, or overlap with, the broad category of the opponent’s articles for body- and beauty-care. Therefore, they are identical.

The contested oils for perfumes and scents are highly similar to the opponent’s perfumery. These goods have the same purpose and nature, since they are fragrant liquids used for their pleasant smell. They can have the same producers, end users and distribution channels.

Contested goods in Class 18

Travelling bags; umbrellas; parasols; bags made of leather are identically contained in both lists of goods (including synonyms).

The contested pocket wallets; key cases; purses are included in, or overlap with, the broad category of the opponent’s small leather goods, in particular purses, pocket wallets, key wallets. Therefore, they are identical.

The contested travelling trunks are included in the broad category of the opponent’s trunks. Therefore, they are identical.

The contested envelopes, of leather, for packaging; leather cases; attaché cases; briefcases; vanity cases (not fitted); make-up cases; handbags; shopping bags; make-up bags; beach bags; sports bags; bags; pouches; leather or leather-board boxes; cases of leather or leatherboard are included in, or overlap with, the broad category of the opponent’s goods of leather and imitations of leather, not included in other classes, namely bags and other containers not specifically designed for the objects being carried. Therefore, they are identical.

The contested travelling sets (leather ware); travelling sets; luggage; garment bags for travel; suitcases are included in, or overlap with, the broad category of the opponent’s trunks and travelling bags. Therefore, they are identical.

The contested notecases; credit card cases; credit card holders are similar to a high degree to the opponent’s small leather goods, in particular purses, pocket wallets, as they have the same nature and purpose (to carry money and credit cards). Moreover, they target the same end users, are often produced by the same companies and are sold through the same distribution channels.

The contested leather shoulder belts; luggage tags are accessories that may be produced by the same undertakings as the opponent’s goods of leather and imitations of leather, not included in other classes, namely bags and other containers not specifically designed for the objects being carried and trunks and travelling bags. They are usually sold through the same distribution channels and target the same consumers. Moreover, leather shoulder belts also have the same general purpose as the opponent’s bags, namely to carry things. Therefore, they are considered similar.

The contested furniture coverings of leather do not have anything in common with the opponent’s goods in Classes 3, 18 and 25, as they have clearly different natures and purposes. All these goods target different end users, are sold through different sales outlets and are not normally produced by the same undertakings. Moreover, these goods are not in competition with each other or complementary. Consequently, the contested goods are dissimilar to all of the opponent’s 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.

In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is considered average.

3. The signs

	BLACK EAGLE
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 mark is a figurative mark consisting of the verbal element ‘Eagle’ written in slightly stylised black title case letters and placed in the middle of a white rectangle with a black outline.

The contested sign is the word mark ‘BLACK EAGLE’. In word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the contested sign is depicted in upper case letters whereas the earlier mark is depicted in title case letters.

Neither of the marks under comparison has any element that could be considered more dominant (visually eye-catching) than other elements.

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.

In the present case, the verbal elements of the signs are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to first focus the comparison of the signs on the English-speaking part of the relevant public.

The coinciding verbal element ‘EAGLE’ will be perceived by the relevant public as referring to ‘a large bird of prey with a massive hooked bill and long broad wings, known for its keen sight and powerful soaring flight’ (information extracted from Oxford Dictionaries on 04/08/2017 at https://en.oxforddictionaries.com/definition/us/eagle). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The figurative element of the earlier mark has a purely decorative nature and is therefore considered weak.

The word ‘BLACK’, present at the beginning of the contested sign, will be understood by the relevant public as an adjective meaning ‘of the very darkest colour owing to the absence of or complete absorption of light’ (information extracted from Oxford Dictionaries on 04/08/2017 at https://en.oxforddictionaries.com/definition/us/black). When considered individually, the word ‘BLACK’ may be perceived as describing the colour of the goods at issue. However, consumers normally perceive a mark as a whole and do not proceed to analyse its various elements. Therefore, account should be taken of the fact that the words ‘BLACK’ and ‘EAGLE’ will be perceived as a logical and conceptual unit, in which the adjective ‘BLACK’ qualifies the noun following it, namely ‘EAGLE’. As a result, the element ‘BLACK’ in the contested sign will be perceived as a secondary element with less trade mark significance.

Visually, the signs coincide in the verbal element ‘EAGLE’, which is the sole verbal element of the earlier mark and the most distinctive element of the contested sign. However, they differ in the slight stylisation of the typeface and the additional figurative element of the earlier mark, and in the verbal element ‘BLACK’, placed at the beginning of the contested sign, which has no counterpart in the earlier mark. However, contrary to the applicant’s argument that ‘BLACK’ has a greater impact because it is the first part of the contested sign, for the reasons outlined above, it will be perceived as subordinate to the word ‘EAGLE’, which the signs have in common. Therefore, although the verbal difference between the signs is at the beginning of the contested sign, the signs are visually similar to an average degree.

Aurally, the signs coincide in the pronunciation of the word ‘EAGLE’ but differ in the pronunciation of the word ‘BLACK’ in the contested sign. Taking into account the role of the word ‘BLACK’ in relation to the element that the marks have in common, the signs are aurally similar to, at least, an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to the same concept, of an eagle, and the additional word in the contested sign will be perceived as simply qualifying its colour or otherwise denoting a specific type of eagle, 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.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include the element ‘EAGLE’ for goods in the classes concerned. In support of its argument, the applicant included a list from TMView of several trade mark applications and registrations in different EU Member States, as well as EUTM applications and registrations, containing the element ‘EAGLE’.

The Opposition Division notes that the existence of several trade mark applications and registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘EAGLE’. Under these circumstances, the applicant’s claims must be set aside and the distinctiveness of the element ‘EAGLE’ must be seen as normal as explained above.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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 contested goods are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods. The degree of attention of the relevant public is average. The signs in dispute are visually similar to an average degree, aurally similar to, at least, an average degree and conceptually highly similar, since they coincide in the verbal element ‘EAGLE’, which constitutes the entire earlier mark and the most distinctive part of the contested sign. The signs differ in the additional verbal element, ‘BLACK’, the figurative element and the font of the earlier mark.

The main difference between the signs resides in the word ‘BLACK’. The remaining differences are secondary, given that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

As mentioned above, the word ‘BLACK’ is an adjective and, as such, it qualifies a noun. The adjective ‘BLACK’ preceding the noun ‘EAGLE’ will be interpreted by the public as describing a particular characteristic of an eagle; more particularly, ‘BLACK EAGLE’ will be perceived as a dark-coloured or specific species of eagle.

As a consequence, the word ‘EAGLE’ will have a stronger role within the contested sign than the word ‘BLACK’. It is likely that on being exposed to the use of both signs for identical or similar goods, consumers will believe that they originated from the same or economically linked undertakings. Indeed, 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 that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public in the relevant territory and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sam GYLLING

Begoña URIARTE VALIENTE

Adriana VAN ROODEN

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.