OPPOSITION No B 2 604 604

Pierre-André Senizergues, 2912 Lafayette Road, Newport Beach, California 92663, United States of America (opponent), represented by Gilbey Legal, 43, Boulevard Haussmann, 75009 Paris, France (professional representative)

a g a i n s t

Nash PPH, Fabryczna 25, 90-341 Łódź, Poland (applicant), represented by Rumpel Spółka Komandytowa, Częstochowska 1 a, 93-115 Łódź, Poland (professional representative).

On 06/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 604 604 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent initially filed an opposition against all the goods of European Union trade mark application No 14 425 045 for the figurative mark  in Classes 3, 18, and 25. On 14/03/2016 the opponent limited the scope of the opposition to part of the goods in Class 18 and all the goods in Class 25. The opposition is based on European trade mark registrations No 3 807 071 for the word mark ‘ETNIES’ and No 4 432 969 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

CEASING OF EXISTENCE OF AN EARLIER RIGHT

According to Article 41(1)(a) EUTMR, within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

1. by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and 8(5);

According to Article 8(2) EUTMR, for the purposes of the aforementioned paragraph 1, ‘earlier trade mark’ means:

(i) trade marks with a date of application for registration which is earlier than the date of application of the contested mark, taking into account, where appropriate, of the priorities claimed in respect of those marks, Article 8(2)(a) EUTMR;

(ii) applications for a trade mark referred to in Article 8(2)(a) EUTMR, subject to their registration;

(iii) trade marks which are well known in a Member State.

Therefore, the legal basis of the opposition requires the existence and validity of an earlier right within the meaning of Article 8(2) EUTMR.

In the present case, the opposition is based on, inter alia, European trade mark registration No 4 432 969.

However, that trade mark registration expired on 11/05/2015 and was not renewed within the due deadline or within the further six months following the day on which protection ended. It follows that the earlier European trade mark registration No 4 432 969 has ceased to exist and is not an ‘earlier trade mark’ within the meaning of Article 8(2) EUTMR.

The examination of the opposition will continue based on the other earlier right invoked by the opponent, European trade mark registration No 3 807 071.

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 18         Goods of leather and imitations of leather, namely travelling bags, travelling sets, sport bags, backpacks, beach bags, bags for campers, handbags, shopping bags, school bags and satchels, briefcases, pocket wallets, purses not of precious metal, key cases; trunks (luggage), suitcases, valises; travel requisites namely backpacks, handbags, bags for campers, beach bags, travelling bags, sport bags, valises, pocket wallets; purses not of precious metal, key sets. 

Class 25         Clothing, footwear (except orthopaedic shoes), headgear; sports footwear, boots, sandals, beach shoes, socks, clothing made of leather and imitation of leather, skirts, undershirts, tee-shirts, sweat-shirts, jackets, pull-overs, pants, shorts, belts, caps.

The contested goods are the following:

Class 18         Luggage, bags, wallets and other carriers; Shoulder straps; Girths of leather; Leather laces.  

Class 25         Hats; Footwear; Clothing; Berets; Top hats; Caps [headwear]; Baseball caps; Knitted caps; Fur hats; Ski hats; Sports caps; Bonnets [headwear]; Bonnets; Bathing caps; Visors; Sun visors [headwear]; Fezzes; Beach hats; Rain hats; Flat caps; Wimples; Fashion hats; Peaked headwear; Nightcaps; Leather headwear; Toques [hats]; Turbans; Non-slipping devices for footwear; Pumps [footwear]; Ballet slippers; Boots; Ladies' boots; Booties; Dance shoes; Mountaineering boots; Gym boots; Riding shoes; Boots for motorcycling; Flat shoes; High-heeled shoes; Shoes with hook and pile fastening tapes; Ski boots; Canvas shoes; Work boots; Boots for sports; Leather shoes; Lace boots; Slip-on shoes; Half-boots; Winter boots; Boot uppers; Tongues for shoes and boots; Galoshes; Leather slippers; Studs for football boots; Metal fittings for Japanese style wooden clogs; Heels; Sports shoes; Work shoes; Leisure shoes; Sandals; Pedicure sandals; Insoles; Neckerchiefs; Leisurewear; Maternity lingerie; Lingerie; Babies' undergarments; Disposable underwear; Bikinis; Boleros; Head scarves; Long jackets; Denim jeans; Dress pants; Evening suits; Turtlenecks; Corsets; Leather waistcoats; Hunting vests; Paper hats [clothing]; Trunks; Snow suits; Balaclavas; Shirts and slips; Jogging sets [clothing]; Short sets [clothing]; Leather suits; Collars; Casual shirts; Dress shirts; Nighties; Polo shirts; Sports jerseys and breeches for sports; Short-sleeved or long-sleeved t-shirts; Neckties; Reversible jackets; Denim jackets; Leggings [trousers]; Sundresses; Shift dresses; Body warmers; Maternity clothing; Leg warmers; Children's wear; Girls' clothing; Denims [clothing]; Clothing made of fur; Gym suits; Ready-made clothing; Silk clothing; Cashmere clothing; Menswear; Clothing for skiing; Baby clothes; Waist belts; Belts [clothing]; Pajamas (Am.); Coats; Ski gloves; Gloves [clothing]; Ankle socks; Skirts; Over-trousers; Beach clothes; Formalwear; Shorts; Scarfs. 

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

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 18

The contested luggage, bags, wallets and other carriers include, as a broader category, the opponent’s travelling bags; trunks (luggage); pocket wallets; backpacks. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Shoulder straps; girths of leather; leather laces are parts and fittings for e.g. bags. Unlike the opponent´s goods in Classes 18 and 25 they are not directed at the end consumer but at business consumers who may further process and use them in the manufacture or repair of goods. They differ in their nature, purpose, method of use, relevant public and distribution channels from the goods of the earlier mark.  Therefore, they are dissimilar to all the opponent’s goods in Class 18 and 25

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

The contested footwear includes, as a broader category, the opponent’s footwear (except orthopaedic 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.

The contested hats; berets; top hats; caps [headwear]; baseball caps; knitted caps; fur hats; ski hats; sports caps; bonnets [headwear]; bonnets; bathing caps; visors; sun visors [headwear]; fezzes; beach hats; rain hats; flat caps; wimples; fashion hats; peaked headwear; nightcaps; leather headwear; toques [hats]; turbans; balaclavas are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested neckerchiefs; leisurewear; maternity lingerie; lingerie; babies' undergarments; disposable underwear; bikinis; boleros; head scarves; long jackets; denim jeans; dress pants; evening suits; turtlenecks; corsets; leather waistcoats; hunting vests; paper hats [clothing]; trunks; snow suits; shirts and slips; jogging sets [clothing]; short sets [clothing]; leather suits; collars; casual shirts; dress shirts; nighties; polo shirts; sports jerseys and breeches for sports; short-sleeved or long-sleeved t-shirts; neckties; reversible jackets; denim jackets; leggings [trousers]; sundresses; shift dresses; body warmers; maternity clothing; leg warmers; children's wear; girls' clothing; denims [clothing]; clothing made of fur; gym suits; ready-made clothing; silk clothing; cashmere clothing; menswear; clothing for skiing; baby clothes; waist belts; belts [clothing]; pajamas (am.); coats; ski gloves; gloves [clothing]; ankle socks; skirts; over-trousers; beach clothes; formalwear; shorts; scarfs are included in the broad category of the opponent’s clothing. Therefore, they are identical.

Pumps [footwear]; Ballet slippers; Boots; Ladies' boots; Booties; Dance shoes; Mountaineering boots; Gym boots; Riding shoes; Boots for motorcycling; Flat shoes; High-heeled shoes; Shoes with hook and pile fastening tapes; Ski boots; Canvas shoes; Work boots; Boots for sports; Leather shoes; Lace boots; Slip-on shoes; Half-boots; Winter boots; Boot uppers; Galoshes; Leather slippers; Sports shoes; Work shoes; Leisure shoes; Sandals; Pedicure sandals are included in the broad category of the opponent’s footwear (except orthopaedic shoes). Therefore, they are identical.

The contested non-slipping devices for footwear; studs for football boots; insoles are accessories for footwear, that can be bought by the same end consumer to complement or improve its function. They are often sold in the same shops alongside with footwear. These goods are similar to a low degree to the opponent´s footwear (except orthopaedic shoes) as they can coincide in relevant public and sales outlets and can be complementary.

Tongues for shoes and boots; metal fittings for japanese style wooden clogs; heels are parts and fittings for footwear. Unlike the opponent´s goods in Class 18 and 25 they are not directed at the end consumer but at business consumers who may further process and use them in the manufacture or repair of footwear. They differ in their nature, purpose, method of use, relevant public and distribution channels from the goods of the earlier mark. Therefore, they are dissimilar to all the opponent’s goods in Class 18 and 25.

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 a low degree are directed at the public at large. The degree of attention will be average.

3. The signs

ETNIES
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 word mark The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

The word ‘etnee’ of the contested sign has a meaning in Italian (female plural form of ‘etneo’, meaning ‘of/pertaining to the mountain Etna’). In other languages it is meaningless. The earlier mark ETNIES has no meaning in any of the official languages of the member states.

The Opposition Division will examine the opposition in relation to the English-speaking part of the public for which the words ‘ETNIES’ and ‘etnee’ have no meaning and have a normal degree of distinctiveness. For this part of the public the absence of any concept within the signs to help them differentiate between them will make the likelihood of confusion the greatest. Furthermore, for English-speakers the aural similarity between the signs will be the highest (see below). Accordingly, this is the best scenario under which the opponent´s case can be considered

The typeface of the contested sign is only marginally stylized and therefore non-distinctive. The black background is merely decorative and therefore non-distinctive as well. The further graphical elements, namely the lines below the letters ‘tne’ and above the second letter ‘e’ rather serve to emphasize these letters. Therefore, their distinctiveness is low at most.

Visually, the signs coincide in the string of letters ‘etn’ in the beginning. They differ in their ending, namely the strings of letters ‘ies’ in case of the earlier mark and ‘ee’ in case of the contested sign. Even though the endings share another letter (e) they differ in their visual impression as the double letter ‘ee’ is visually very distinct. The signs further differ in the stylisation and the graphical elements of the contested sign, which however are non-distinctive or of low distinctiveness at most, as set out above.

Therefore, the visual similarity between the signs is slightly lower than average.

Aurally, the pronunciation of the signs coincides in the letters ‘etn’ and it is highly similar regarding the following letters ‘ie’ of the earlier mark versus ‘ee’ of the contested sign. It differs in the additional letter ‘s’ of the earlier mark which has no counterpart in the contested mark.  

Therefore, the signs are aurally highly similar.

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

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).

The goods are identical, lowly similar and dissimilar. The visual similarity between the signs is slightly lower than average and the aural similarity is high. The attention of the relevant public will be average and the distinctiveness of the earlier mark is normal.

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). The same is true regarding the contested goods in Class 18, which are usually also chosen visually and will allow the customer to see the marks prior to the purchase.

Given that the visual aspect plays a greater role, the Opposition Division considers that the relevant public will remember the visually characteristic double letter ‘ee’ in the ending of the contested sign and, therefore, neither confuse the marks nor associate them with a common commercial origin. Even if the consumer was to ask for items sold under the marks in a shop first, the high aural similarity would be offset by the aforementioned visual difference, as the consumer would still be able to visually perceive the marks before making a purchasing decision.

Considering all the above, there is no likelihood of confusion on the English-speaking part of the public.

For the remaining part of the public there is no likelihood of confusion either, as for them the signs will be even less similar due to aural and/or conceptual differences, as already set out above under section c) of this decision.

Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lars HELBERT

Tobias KLEE

Begoña URIARTE VALIENTE

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.