OPPOSITION No B 2 666 751

J.T.Creativities – Inh. Thomas Goletz, Neuer Wall 50, 20354 Hamburg, Germany (opponent)

a g a i n s t

3D Fashion IP B.V., Celsiusstraat 2, 1704 RW Heerhugowaard, Netherlands (applicant), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 666 751 is partially upheld, namely for the following contested goods and services:

Class 14:        Alloys of precious metal; Jewellery, precious stones; Horological and chronometric instruments.

Class 18:        Leather and imitation leather; Animal skins, hides; Trunks and travelling bags; Umbrellas, big umbrellas and walking sticks; Whips, harness and saddlery.

Class 25:        Clothing, footwear, headgear.

Class 35:        Wholesaling and retailing, import and export of leather and imitations of leather, bags, handbags, backpacks, pocket wallets, umbrellas, clothing, footwear, headgear and belts.

2.        European Union trade mark application No 14 752 638 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 752 638 . The opposition is based on German trade mark registration No 302 014 062 117 for the word mark ‘Diddl’ and international trade mark registration No 1 285 335 designating European Union also for the word mark ‘Diddl’. 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 1 285 335 designating European Union.

1. The goods and services

The opposition is based, inter alia, on following goods and services:

Class 14:        Jewellery, in particular ear rings, semi-precious stones, necklaces, bracelets, rings, brooches, precious stones; horological and chronometric instruments, in particular watches, alarm clocks, electric watches, wall clocks, pocket watches; precious metals and their alloys as well as goods produced or plated thereof, included in this class, in particular key rings (trinkets or fobs), works of art, figures, boxes, key rings; musical clocks; key chains, key holders.

Class 18:        Leather and imitation leather and goods made of these materials, included in this class, in particular belts of leather, bands of leather, straps of leather, leashes; umbrellas, sunshades; walking sticks; travelling trunks and suitcases (included in this class); bags; beach bags; bags for campers; shopping bags; hand bags; sling bags for carrying infants; travelling bags; school bags; play school bags; bags for sports; wheeled shopping bags; shoulder bags; back packs; haversacks; gym bags; drawstring pouches; travelling sets of leather; vanity cases; make-up cases (not filled); purses, wallets.

Class 25:        Clothing for women, men and children; layettes; night wear; pyjamas; women's, men's and children's underwear; socks; stockings; tights; bathing wear, bathing suits, bikinis, bathing trunks, bath robes, bathing caps; outer clothing; neckties; belts; scarves; neckerchiefs; bibs, not of paper; gloves; headbands; ear muffs; coats; raincoats; jackets; frocks; trousers; sweaters; pullovers; combinations; t-shirts; sports wear, included in this class; clothing for gymnastics, cycling shorts; costumes; footwear, sport shoes; bath sandals and slippers; headgear; baseball caps; caps; bandanas.

The contested goods and services are the following:

Class 14:        Alloys of precious metal; Jewellery, precious stones; Horological and chronometric instruments.

Class 18:        Leather and imitation leather; Animal skins, hides; Trunks and travelling bags; Umbrellas, big umbrellas and walking sticks; Whips, harness and saddlery.

Class 25:        Clothing, footwear, headgear.

Class 35:        Wholesaling and retailing, import and export of leather and imitations of leather, bags, handbags, backpacks, pocket wallets, umbrellas, clothing, footwear, headgear and belts; Office functions in the technical, financial and administrative fields for retail businesses; Business and office functions in the field of franchising and operating retail businesses.

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 ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

Alloys of precious metal, jewellery, precious stones, horological and chronometric instruments are identically contained in both lists of goods.

Contested goods in Class 18

Leather and imitation leather, trunks and travelling bags, umbrellas, big umbrellas and walking sticks are identically contained in both lists of goods (including synonyms).

The contested whips, harness and saddlery are accessories made usually of leather, used for driving and riding animals, especially horses. They are included in the broad category of the opponent’s goods made of leather and imitation leather, included in this class, in particular belts of leather, bands of leather, straps of leather, leashes. Therefore, they are identical.

The contested animal skins, hides have the same distribution channels, public and producers as the opponent´s Leather and imitation leather. Therefore, they are similar.

Contested goods in Class 25

Footwear, headgear are identically contained in both lists of goods (including synonyms).

The contested clothing includes, as a broader category the opponent’s clothing for women, men and children; layettes; night wear; pyjamas; women's, men's and children's underwear; socks; stockings; tights; bathing wear, bathing suits, bikinis, bathing trunks, bath robes, bathing caps; outer clothing. 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 services in Class 35

Retail, wholesale, import and export 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.

Therefore, the contested wholesaling and retailing, import and export of leather and imitations of leather, bags, handbags, backpacks, pocket wallets, umbrellas, clothing, footwear, headgear and belts are similar to a low degree to the opponent’s goods in Classes 18 and 25.

The opponent also based its opposition on goods and services in Classes 6, 9, 16, 21, 28 and 38 for the international trade mark registration No 1 285 335 designating European Union; as well as goods and services in Classes 3, 5, 6, 8, 9, 11, 12, 14, 15, 16, 18, 20, 21, 24, 25, 26, 27, 28, 29, 30, 32, 38 and 41 for the German trade mark registration No 302 014 062 117. However, the contested services in Class  35 – office functions in the technical, financial and administrative fields for retail businesses; business and office functions in the field of franchising and operating retail businesses – are office services and do not share any criteria with any of the opponent’s goods and services. Apart from being different in nature, since for example services are intangible whereas goods are tangible, they serve different needs. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. Therefore, the remaining services in Class 35 are considered dissimilar.

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 at issue are directed at the public at large, as well as at a professional public with expertise for example in the fields of jewellery and precious stones. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

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 articles made of precious stones such as jewellery and watches. 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

Diddl
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public to take into consideration the potential impact of the meaning of the verbal elements in the marks in relation to the contested goods and services for this part of the public.

The earlier mark is a word mark consisting of the sole element ‘DIDDL’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant if word marks are depicted in upper or lower case letters, or in a combination thereof. The word ‘DIDDL’ is not descriptive, allusive or otherwise weak in relation to the relevant goods and services; and it will be perceived by the relevant public as a fanciful term with an average degree of distinctiveness.

As regards the contested sign, it is composed of the words ‘DIDI’ and ‘girls’ that appear on a pink square with elaborated fringes around it. The word element ‘DIDI’ in the contested sign is the dominant element as it stands out by its size and the rigid letter font. The word element ‘girls’ appears underneath in a cursive, significantly thinner typeface.

The word element ‘DIDI’ has no meaning for the English-speaking public and does not relate in any way to the goods and services in question. Therefore, its distinctiveness has to be seen as normal. On the other hand, the word element ‘girls’ will be understood by the English-speaking part of the public as referring to young females. In relation to the relevant goods and services (e.g. jewellery, umbrellas, travelling bags, clothing), this element is non-distinctive as it implies their intended users. Finally, the figurative elements of the contested sign are of a rather decorative character and consequently less trade mark significance will be attributed to these elements.

Visually, the signs coincide in the initial three letters ‘DID’ of the earlier mark and the dominant element of the contested sign. They differ in the letters ‘DL’ of the earlier mark, the letter ‘I’, the word element ‘girls’ and the figurative elements of the contested sign which have no counterparts in the earlier mark. However, as noted above, the differentiating elements are either non-distinctive or have a rather decorative character. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DID’, present identically in both signs. The pronunciation differs in the sound of the letters ‛DL’ of the earlier sign as well as in the sound of the letter ‘I’ and the word element ‘girls’ of the contested sign which have no counterparts in the earlier mark. However, it should be noted that the final letters ‘D’ and ‘L’ of the earlier mark will usually be pronounced by the relevant public with a shwa-sound /ə/, which renders the pronunciation pattern between the dominant element of the contested sign and the earlier mark quite similar. Considering also the non-distinctive character of the word element ‘girls’ of the contested mark, they signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the word element ‘girls’ of the contested mark will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin of the goods and services in question. The attention of the relevant public will therefore be attracted by the additional fanciful verbal elements, which have no meaning.

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

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

In the present case, the contested goods and services are either identical or similar to varying degrees with an exception of some services in Class 35 which are dissimilar. The signs are visually and aurally similar to an average degree. As stated above in section c) of this decision, the visual differences result mainly from the non-distinctive or rather decorative elements of the contested sign which will not take the consumers’ attention away from the notable resemblance of the earlier mark and the dominant element of the contested sign. A similar conclusion has also been drawn for the aural comparison. The conceptual aspect does not influence the assessment of the similarity of the signs.

Although the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, 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). Consequently, it is likely that the differences between the signs may go unnoticed to consumers.

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 opponent’s international trade mark registration No 1 285 335 designating European Union. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

Some of the contested services in Class 35 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 services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Loreto URRACA LUQUE

Arkadiusz GORNY

Judit NÉMETH

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.