OPPOSITION No B 2 770 439

Dosenbach-Ochsner AG Schuhe und Sport, Allmendstr 25, 8953 Dietikon, Switzerland (opponent), represented by Klaka, Delpstr 4, 81679 Munich, Germany (professional representative)

a g a i n s t

Xiaobi Shan, No. 63, WenHuaBu, Wenxi Town, Qingtian County, Zhejiang Province, People’s Republic of China (applicant), represented by Beetz & Partner, Steinsdorfstr. 10, 80538 Munich, Germany (professional representative).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 770 439 is upheld for all the contested goods.

2.        European Union trade mark application No 15 595 663 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 15 595 663 . The opposition is based on, inter alia, international trade mark registration No 1 039 854 designating the European Union for the word mark ‘Catwalk’. 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.

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 international trade mark registration No 1 039 854 designating the European Union.

1. The goods

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

Class 25:        Clothing, headgear.

The contested goods are the following:

Class 25:        Clothing; gloves [clothing]; ready-made clothing; bathing suits; shoes; boots; hosiery; hats; scarfs; girdles.

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.

Clothing is identically contained in both lists of goods.

The contested gloves [clothing]; ready-made clothing; bathing suits; hosiery; scarfs; girdles are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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

The contested shoes; boots serve the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar.

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 and similar are directed at the public at large. The degree of attention is considered average.

3. The signs

Catwalk
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). 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 coinciding element ‘catwalk’ will be understood by the English-speaking public as a ‘platform extending into an auditorium, along which models walk to display clothes in fashion shows’ (information extracted from Oxford English Dictionary on 10/08/2017 at https://en.oxforddictionaries.com/definition/catwalk). Bearing in mind that the relevant goods are related to clothing, footwear and headgear, this element is deemed weak. It is suggestive, for example, of clothing that has been modelled or is part of a designer collection. However, although the word ‘catwalk’ is associated with clothing, it is not descriptive, and the mark, as registered, has a reasonable degree of inherent distinctive character.

On the other hand, this element is meaningless in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the Italian- and Spanish-speaking parts.

The earlier mark is a word mark. It consists of the word ‘Catwalk’. As this word has no meaning for the relevant public, it is distinctive. Word marks are protected as such, independent of the typeface used, and by definition they have no elements that could be regarded as more dominant than others.

The contested sign is a figurative mark consisting of the meaningless and hence distinctive word ‘Catwalk’ in stylised black letters. The letter ‘C’ of the word ‘Catwalk’ is depicted as a silhouette of a feline and it is reasonable to assume that consumers will perceive it as a cat. The two letters ‘a’ have two horizontal lines reminiscent of a cat’s whiskers.

As regards the contested sign, it is composed of a distinctive verbal element and less distinctive figurative elements (the silhouette of a feline and the whiskers) of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative elements. The sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘Catwalk’, which constitutes the entire earlier mark, and differ in the contested sign’s additional figurative elements.

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).

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛Catwalk’, present identically in each sign as the only verbal element. As a result, the signs are aurally identical.

Conceptually, as discussed above, the verbal element of the signs has no meaning for the public in the relevant territory. However, a part of the public will perceive the figurative element in the contested sign either as a feline or, more specifically, as a cat. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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.

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.

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 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).

The goods covered by the trade marks in dispute are identical or similar. They target the public at large, and the degree of attention is average. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually highly similar and aurally identical. The signs consist of the same word and differ in only the contested sign’s figurative elements (the stylised ‘C’ that depicts a feline and the whiskers on the letters ‘a’), which have a rather decorative nature. In any event, consumers generally refer to signs by their verbal elements, and the signs’ verbal elements are the same in the present case.

Therefore, it is highly likely that the relevant public will confuse them and believe that they come from the same undertaking or from 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 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 Italian- and Spanish-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 international trade mark registration No 1 039 854 designating the European Union. It follows that the contested sign must be rejected for all the contested goods.

As earlier international trade mark registration No 1 039 854 designating the European Union 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).

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

Birgit FILTENBORG

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.