OPPOSITION No B 2 701 186

Fashion Days Shopping S.R.L., Swan Office Park, Cladirea Windsor, Sos. București Nord, Nr. 15-23, Et. 2, Voluntari, 077190 Ilfov county, Romania (opponent), represented by Ruxandra Raluca Ardeleanu, Str. Baia de Arama nr. 1, bloc B, tronson 3, etaj 6, ap. 117, sector 2, 022204 Bucharest, Romania (professional representative)

a g a i n s t

Dr Denim AB, Kungsgatan 7ª 4tr, 411 19 Göteborg, Sweden (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 701 186 is partially upheld, namely for the following contested goods and services:

Class 9:         Cases for mobile phones, cases for computers.

Class 18:         Bags of leather, bags of cloth, rucksacks, toilet bags, wallets, key covers, umbrellas.

Class 25:         Clothing, footwear, headgear, belts (clothing).

Class 35:         Retail services regarding bags, umbrellas, clothing, footwear, headgear, belts (clothing).

2.        European Union trade mark application No 14 990 221 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 14 990 221. The opposition is based on European Union trade mark registration No 12 054 359. 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 and services

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

Class 3:        Bleaching preparations and other substances for laundry use; polishing preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; calculating machines, data processing hardware, computers; computer software.

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 16:        Paper, cardboard and goods made from these materials, not included in other classes; printed matter; photographs; stationery; artists’ materials; paint brushes; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes).

Class 18:         Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.

Class 24:         Textiles and textile goods, not included in other classes; bed covers; table covers.

Class 25:         Clothing, footwear, headgear.

Class 35:         Business management; business administration; office functions.

Class 39:         Transport, in particular delivery of mail-order goods, packaging and storage of goods; travel arrangement.

After the restriction of the goods and services requested by the applicant on 17/08/2016, which was accepted by the Office on 18/08/2016 and duly communicated to the opponent, the contested goods and services are the following:

Class 9:        Cases for mobile phones, cases for computers.

Class 18:        Bags of leather, bags of cloth, rucksacks, toilet bags, wallets, key covers, umbrellas.

Class 25:        Clothing, footwear, headgear, belts (clothing).

Class 35:        Retail services regarding cases for mobile phones and computers, bags, rucksacks, toilet bags, wallets, key covers, umbrellas, clothing, footwear, headgear, belts (clothing).

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 9

The contested cases for mobile phones and the opponent’s apparatus for transmission of sound have the same producers and distribution channels, since the latter encompasses mobile phones. Furthermore, they are complementary. Therefore, they are similar to a low degree.

The contested cases for computers and the opponent’s computers are complementary goods, and they have the same relevant public and distribution channels. Therefore, they are similar to a low degree.

Contested goods in Class 18

In its observations, the opponent argues that the goods in Class 18 are identical, since the list of the opponent’s goods contains the class heading and the applicant’s goods are entirely included in the opponent’s list of goods. However, according to Article 28(5) EUTMR the use of general terms, including the general indications of the class heading of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services that cannot be so understood.

Umbrellas are identically contained in both lists of goods.

The contested bags of leather, bags of cloth overlap with the opponent’s travelling bags, because the latter can be made of leather or cloth. Therefore, they are identical.

The contested rucksacks and the opponent’s travelling bags are two types of bags. They have the same nature and purpose, since both are used for carrying belongings and rucksacks are commonly also used for travelling. Therefore, they may also be in competition. They can have the same producers, relevant public and distribution channels. Therefore, they are similar to a high degree.

The contested toilet bags are portable containers for holding body hygiene and toiletry supplies while travelling. They can be sold in a set with travelling bags. Therefore, the contested toilet bags and the opponent’s travelling bags can be complementary and may have the same producers. They have the same relevant public and may be distributed through the same distribution channels. Therefore, they are similar to a high degree.

The opponent’s goods made of leather and not included in other classes and the contested wallets, key covers have the same nature. Their purpose, in the broadest sense, may also be the same in that they are for carrying something. The purpose of wallets is to carry such personal items as cash, credit cards, identification documents, business cards, etc., and the purpose of key covers is to carry keys. To that extent, the goods are similar to a low degree. However, in the absence of an express limitation by the opponent to clarify the scope of its goods, it cannot be assumed that they coincide in other criteria. Therefore, the contested wallets, key covers and the opponent’s goods made of leather and not included in other classes are similar to a low degree.

Contested goods in Class 25

Clothing, footwear, headgear are identically contained in both lists of goods.

The contested belts (clothing) are included in the broad category of the opponent’s clothing. Therefore, they are identical.

Contested services in Class 35

Retail 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 retail services regarding bags, umbrellas, clothing, footwear, headgear, belts (clothing) are similar to a low degree to the opponent’s travelling bags, umbrellas, clothing, footwear, headgear.

The remaining contested services, namely retail services regarding cases for mobile phones and computers, rucksacks, toilet bags, wallets, key covers, and the opponent’s goods in Classes 3, 9, 14, 16, 18, 24 and 25 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods to which the abovementioned contested retail services relate are not identical to any of the opponent’s goods.

The opponent’s services in Classes 35 and 39 have nothing relevant in common with the remaining contested services. The opponent’s business management; business administration; office functions are essentially support services, rendered for others by specialised agencies or consultants, to help other undertakings to run and improve their business. The opponent’s transport, in particular delivery of mail-order goods, packaging and storage of goods; travel arrangement, again, are provided by specialised transport companies, logistics companies, warehouses or travel agencies. The differences in the natures and purposes of the opponent’s services and those of the remaining contested retail services are vast. They do not have the same usual origin or distribution channels. Furthermore, they are neither complementary nor in competition. The mere fact that they can be provided to the same public is insufficient in itself for a finding of similarity.

Consequently, the contested retail services regarding cases for mobile phones and computers, rucksacks, toilet bags, wallets, key covers are dissimilar to all of the opponent’s goods and services.

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 found to be identical or similar to various degrees are directed at the public at large.

The degree of attention is considered average.

3. The signs

Every day is a fashion day	EVERY DAY IS A DENIM DAY
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.

Both the earlier trade mark and the contested sign are slogans in English and will be understood by the English-speaking part of the relevant public. 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, since the coinciding elements, ‘EVERY DAY IS A * DAY’, and the differentiating elements, namely ‘fashion’ and ‘denim’, are meaningful in English; this approach will take into account the potential impact of the meaning of those elements on their distinctiveness.

The expressions of which the signs under comparison consist will be understood as referring to the fulfilment of the consumer’s desire to be always in fashion, insofar as the earlier mark is concerned, or to be always in the hip casual-wear style associated with denim, insofar as the contested sign is concerned and as put forward by the applicant. It follows that the expression ‘EVERY DAY IS A * DAY’ is weak.

The contested sign’s element ‘DENIM’ refers to a hard-wearing cotton twill fabric, typically blue and used for jeans and other wardrobe staples. On the other hand, the earlier mark’s element ‘FASHION’ means a style in clothes, cosmetics, behaviour, etc., especially the latest or most admired style. Both ‘DENIM’ and ‘FASHION’ are commonly used words, in trade and marketing language, not only for clothing and other fashion articles but also in relation to so-called fashion accessories, which encompass bags and other carriers, umbrellas and even mobile phones and computers, as such devices are increasingly seen by the public as lifestyle statements. The same considerations apply to the contested retail services. Therefore, these individual elements are non-distinctive for the relevant goods and services.

Conceptually, the concept of the contested sign’s element ‘DENIM’ is closely related to the concept of the element ‘FASHION’, which is present in the earlier mark, for the reasons given above, and given that the differentiating elements are non-distinctive on their own. Therefore, the signs are similar to an average degree.

Visually and aurally, the signs coincide in five words, or the sounds corresponding to the words, ‘EVERY DAY IS A * DAY’, appearing in the same order in both signs. Although the signs differ in the word ‘DENIM’ in the contested sign and the word ‘fashion’ in the earlier mark, it has to be borne in mind that the differentiating elements are non-distinctive, as stated above.

Both signs are word marks without any specific graphic element. Although the earlier mark is depicted in lower case and the contested sign in upper case, this difference is irrelevant, since in word marks the protection applies to the words and not to their graphic or stylistic characteristics.

The signs coincide in five out of six words, they have the same structure and the first half of the signs is the same. Therefore, the signs are similar to an average 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low.

5. Global assessment, other arguments and conclusion

Some of the goods and services are identical or similar to various degrees. They target the public at large. The public’s degree of attention is average.

Admittedly, the distinctiveness of the earlier mark is low. In this regard, account must be taken of the fact that a finding that an element that the marks have in common has a low degree of distinctive character does not automatically prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark and of the elements that the marks have in common must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark or a coinciding element with a low degree of distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, the signs are visually, aurally and conceptually similar to an average degree. As stated in section c) of this decision, the only difference between the signs is the non-distinctive words ‘fashion’ and ‘DENIM’. Although this difference will not go unnoticed by the relevant public, it is still not sufficient to rule out the possibility that the consumers will confuse the signs and assume that the goods and services come from the same source of origin.

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.

When encountering the signs in question, a significant part of the public may think that the contested sign denotes a denim product line sold under a variation of the earlier mark. 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, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 054 359. 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 and services found to be identical or similar to those of the earlier trade mark.

As regards the goods and services that are similar to a low degree only, it must be kept in mind that 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).

In the present case, the strong similarity between the signs is clearly sufficient to offset the low degree of similarity between some of the goods and services at issue. Therefore, the opposition is successful, and the contested trade mark must also be rejected in relation to those goods and services.

The rest of the contested services, namely retail services regarding cases for mobile phones and computers, rucksacks, toilet bags, wallets, key covers in Class 35, are dissimilar to all of the opponent’s goods and services. 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

Solveiga BIEZA

Biruté SATAITE-GONZALEZ

Zuzanna STOJKOWICZ

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.