OPPOSITION No B 2 623 802

Adler Modemärkte AG, Industriestr. Ost 1-7, 63808 Haibach, Germany (opponent), represented by Christina Hambeck-Joh (Adler Modemärkte AG), Industriestr. Ost 1-7, 63808 Haibach, Germany (employee representative)

a g a i n s t

Thea Cutting, The Ale House, Frostenden Corner, Beccles NR34 7JA, United Kingdom (applicant), represented by Wright Hassall LLP, Olympus Avenue, Leamington Spa, Warwickshire CV34 6BF, United Kingdom (professional representative).

On 17/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 623 802 is upheld for all the contested goods, namely:

Class 25:        Clothing; footwear; headgear; aprons; nightwear; nighties; pajamas; rainwear; scarves; socks; T-shirts; waterproof clothing; wellingtons; wellington boots.

2.        European Union trade mark application No 14 560 056 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 560 056, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 12 339 636. 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

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

Class 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 25:        Clothing; footwear; headgear; aprons; nightwear; nighties; pajamas; rainwear; scarves; socks; T-shirts; waterproof clothing; wellingtons; wellington boots.

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

The contested wellingtons and wellington boots are included in the broader category of the opponent’s footwear. Therefore, they are identical.

The contested nightwear; nighties; pajamas; rainwear; scarves; socks; T-shirts; and waterproof clothing are included in the broader category of the opponent’s clothing. Therefore, they are identical.

Contrary to the applicant’s arguments, the same conclusion applies to aprons, which, even if worn with a view to protecting clothes from becoming dirty, still refer to a piece of clothing. They are also considered to be included in the broad category of the opponent’s clothing, and are therefore identical.

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 are directed at the public at large. The degree of attention of the relevant public is considered to be average.

3. The signs

THEA	GALLERY THEA
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.

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 both marks are word marks, neither of them has an element that could be considered clearly more dominant (visually eye-catching) than other elements.

The element ‘THEA’ in the earlier mark and the contested sign will be understood by the relevant English-speaking public as a given name of Greek origin, or a short form of the names Dorothea, Anthea and Theodora; considering the relevant goods, this element is considered distinctive to an average degree.

The English word ‘GALLERY’ contained in the contested sign will be perceived by the public in the relevant territory as meaning, inter alia, ‘a room or building for exhibiting works of art’ or ‘a covered passageway open on one side or on two sides’ (information extracted from Collins English Dictionary on 27/02/2017 at https://www.collinsdictionary.com/dictionary/english/gallery). The distinctiveness of this element is also considered normal, since on its own it does not allude to the goods or their characteristics in a manner that would affect the distinctive character in a material way. For the sake of completeness, it must be noted that the contested trade mark as a whole will be perceived as a gallery named ‘Thea’.

Visually, the signs coincide in the element ‘THEA’. However, they differ in the element ‘GALLERY’, contained in the contested mark.

The applicant claims that the visual coincidence in the word ‘THEA’ is significantly outweighed by the presence of the word ‘GALLERY’ in the contested sign, due to the fact that the differentiating element is positioned at the beginning and is longer than the coinciding component. The Opposition Division does not share this view. While, generally, the beginning of words has a greater impact on the consumer, the specific circumstances of the case may allow a different conclusion to be drawn (07/05/2009, T-185/07, CK Creaciones Kennya, EU:T:2009:147, § 45). In the present case, it is true that ‘GALLERY’ is the first element of the contested sign, nevertheless, that does not mean that ‘THEA’ will be disregarded. Indeed, given that the earlier mark is entirely reproduced in the contested sign and plays an independent and distinctive role therein, the differentiating element is not sufficient to significantly influence the overall impression of the contested sign and to counterbalance the similarity resulting from the shared component ‘THEA’. It follows that overall the signs are similar to an average degree.

Aurally, the signs are similar to the extent that they coincide in the phonetically identical elements ‘THE-A’. The pronunciation differs in the component ‘GALLERY’ in the contested sign, which will be pronounced as ‘GAL-LE-RY’ (three syllables), and has no counterpart in the earlier mark. Therefore, the signs are aurally similar to an average degree.

With reference to the conceptual comparison, the applicant claims that as ‘THEA’, is a common name, it is not a strong indicator of origin for the relevant goods, which in consequence will lead to low conceptual similarity. However, the applicant did not submit any evidence to support this claim. In fact, as explained above, the English-speaking public will most likely perceive the word as an unusual name of foreign origin. Therefore, the Opposition Division maintains that the distinctiveness of the element ‘THEA’ must be assessed as average. Against this background and bearing in mind the above considerations concerning the semantic content conveyed by the marks, it is concluded that they are similar to the extent of ‘THEA’ and the overall conceptual similarity between the signs is average.

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 of 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

As follows from the analysis in section a) above, the goods have been found identical.

There is an average degree of visual, aural and conceptual similarity of the marks stemming from the shared component ‘THEA’, which constitutes the entirety of the earlier mark and is reproduced as an independent and distinctive element in the contested sign.

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 covered are from the same or economically linked undertakings.

Indeed, in the present case 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 that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In consequence, the relevant public will consider that the relevant identical goods come from the same undertaking or at least economically linked undertakings.

Taking into account all the relevant circumstances of the case and in particular the identity of the goods and the overall average degree of similarity between the signs, the Opposition Division considers that there is a likelihood of confusion on the part of the English-speaking 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 12 339 636. It follows that the contested trade mark must be rejected for all the contested goods.

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Carlos MATEO-PÉREZ

Anna MAKOWSKA

Oana-Alina STURZA

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.