OPPOSITION No B 2 734 831

Theo Henkelman Schoenen B.V., Doemesweg 10, 6004 RN Weert, The Netherlands (opponent), represented by Haagsch Octrooibureau B.V., Breitnerlaan 146, 2596 HG The Hague, The Netherlands (professional representative)

a g a i n s t

Jianying Chen, Via Quintilio Varo 33, 00174 Roma, Italy (applicant), represented by Studio Legale Avv. Francesco Zofrea, Via Principe Umberto 27-29, 00185 Roma, Italy (professional representative).

On 12/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 734 831 is upheld for all the contested goods.

2.        European Union trade mark application No 15 445 018 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 15 445 018. The opposition is based on European Union trade mark registration No 4 109 435. The opponent invoked Article 8(1)(a) and (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 25:        Shoes.

The contested goods are the following:

Class 25:        Clothing; Footwear; Headgear.

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.

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

Shoes 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 shoes in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and shoes. Finally, the goods target the same public. Therefore, the goods are similar.

Headgear and shoes are of an identical or very similar nature. They also serve the same purpose: both are used for covering and protecting parts of the human body. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement not only clothing, but also shoes. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Furthermore, the goods target the same public. Taking all these factors into account, headgear and shoes are considered 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 or similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

COOLMAN	COOL MAN
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 common elements ‘COOL’ and ‘MAN’ are not meaningful in certain territories, for example, in those countries where English is not understood, such as Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

Since those elements (and the conjoined single word of the earlier mark) have no meaning for the relevant public, they are distinctive.

Visually, the signs coincide in all their letters ‘COOLMAN’. They only differ in the presence of a space between the fourth and fifth letter in the contested sign, whereas in the earlier mark, in the absence of such a space, the letters form one single world.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘COOLMAN’, present identically in both signs. The space does not influence the pronunciation.

Therefore, the signs are identical.

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 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. The signs are visually similar to a high degree and aurally identical, whereas the conceptual aspect is not influencing this degree of similarity.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, any considerable visual difference between the signs caused by additional elements could be particularly relevant when assessing the likelihood of confusion between them.

However, this is not the case as regards the signs in conflict. The marks differ only slightly due to the presence of a space; the string of letters, however, is identical. Although not identical in the strict sense, the signs are, therefore, similar to the highest possible degree. Finally, the marks, being both word marks, have no other (figurative) elements which could help in differentiating between them.

The applicant’s observations dated 13/01/2017 have not been filed in the language of proceedings, nor have they been accompanied by a translation. Consequently, they cannot be taken into account. For the sake of completeness, the Opposition Division notes that, even taking into consideration that, in general, a withdrawal of an application can be submitted in the 1st language and, thus, does not need to be translated, the applicants reference to an ‘eventual withdrawal’ (‘l’ eventuale ritiro di marchio’), although filed in the 1st language of the application, cannot be accepted, since it is not unconditional.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 opponent’s European Union trade mark registration No 4 109 435.

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 ground of the opposition, namely Article 8(1)(a) 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

Lynn BURTCHAELL

Konstantinos MITROU

Denitza STOYANOVA-VALCHANOVA

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.