OPPOSITION DIVISION
OPPOSITION No B 2 790 148
José Megías Verdú, Ctra de Agost, 83-85 nave A, 03690 San Vicente del Raspeig,
Spain (opponent), represented by Alberto Paz Espuche, Muelle de Poniente s/n
(Antigua Casa del Mar), 03001 Alicante, Spain (professional representative).
a g a i n s t
Patrick Creemers, Mechelsesteenweg 132, 2640 Mortsel, Belgium (applicant).
On 02/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 790 148 is upheld for all the contested goods.
2. European Union trade mark application No 15 662 927 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 662 927 for the figurative mark, . The opposition is
based on European Union trade mark registration No 14 201 081 for the figurative
mark, . 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
Decision on Opposition No B 2 790 148 page: 2 of 6
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
a) The goods
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear, clothing, footwear and headgear for
motorcycling.
The contested goods are the following:
Class 25: Shoes.
As a preliminary remark the Opposition Division notes that the applicant argues that
the opponent and the applicant commercialize different products and therefore there
is no similarity between the goods at hand. However, these arguments are irrelevant
because the task of the Opposition Division is to compare the goods as registered
(unless proof of use has been requested and submitted, which is not the case here)
and the goods as applied for and not any other goods for which either of the signs
may be actually used. Consequently, the fact that the applicant only sells flip-flops
under the contested sign is irrelevant as the contested application does cover the
broader term shoes. Therefore, this can have no bearing on the comparison of the
goods concerned in the present proceedings or any likelihood of confusion in relation
to the same.
Contested goods in Class 25
The contested shoes are included in the broad category of the opponent’s footwear.
Therefore, they are identical.
b) 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 is considered to be average.
Decision on Opposition No B 2 790 148 page: 3 of 6
c) The signs
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 verbal elements ‘Custom’ ,‘CLOTHES’ and ‘Iguana/s’ are meaningful in certain
territories, for example in those countries where English is understood. Consequently,
the Opposition Division finds it appropriate to focus the comparison of the signs on
the English-speaking part of the public.
The earlier mark is a figurative mark with the verbal elements ‘Iguana’ and ‘Custom’
in slightly stylised grey letters and ‘CLOTHES’ in grey capital letters. The words are
surrounded by a grey figure that looks like an iguana. The mark has a black
background. The verbal elements will be understood by the relevant public in their
lexical meaning. As a result and considering the relevant goods, the verbal element
‘Custom’ is considered to be non-distinctive as it only describes the character of the
relevant goods while the verbal element ‘CLOTHES’ is considered to be weak as the
word refers to goods that are closely connected to the relevant goods i.e. goods that
you wear. The verbal element ‘Iguana’ refers to a type of lizard and has no meaning
in relation to the relevant goods and is therefore distinctive as is the figurative
element.
The contested sign is a figurative mark with the verbal element ‘IGUANAS’ in green
colour. As with the earlier mark this verbal element will be perceived in its lexical
meaning although in plural and is therefore distinctive. Located above the verbal
element is a simple stylised figure, in various shades of blue, green and purple, of
Decision on Opposition No B 2 790 148 page: 4 of 6
what looks like a curled up iguana. As with the earlier mark it has no meaning in
relation to the relevant goods and is therefore distinctive.
Both signs have no elements that could be considered clearly more dominant or eye-
catching than other elements.
When signs consist of both verbal and figurative components, in principle, the verbal
component of the sign usually has a stronger impact on the consumer than the
figurative component. This is because the public does not tend to analyse signs and
will more easily refer to the signs in question by their verbal element than by
describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace,
EU:T:2005:289, § 37).
Visually, the signs coincide in the verbal element ‘IGUANA*’. They also contain a
depiction of an iguana however in quite a different manner with different colouring.
Furthermore, they differ in the other verbal elements of the earlier mark ‘Custom’ and
‘CLOTHES’ however these words are non-distinctive or weak and in somewhat
smaller letters and will therefore have a limited impact on the comparison.
Furthermore, the contested sign has an additional letter in its verbal element, ‘S’.
Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛IGUANA’,
present identically in both signs. The pronunciation differs in the sound of the letter ‛S’
of the contested sign, which has no counterpart in the earlier mark and the sound of
the verbal elements ‘Custom’ and ‘CLOTHES’ of the earlier mark, which have no
counterparts in the contested sign. However, as stated above these words are non-
distinctive and weak and it is therefore highly likely that the earlier mark will only be
referred to as ‛IGUANA’.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with the same type of
animal due to its verbal element, which furthermore is reinforced by their figurative
elements and that the rest of the verbal elements of the earlier mark are non-
distinctive or weak, the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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, despite the presence of some non-distinctive or weak elements in the mark,
as stated above in section c) of this decision.
Decision on Opposition No B 2 790 148 page: 5 of 6
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous factors and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, the degree of
similarity between the marks and between the goods or services identified (recital 11
of the EUTMR). It must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’,
EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence
between the relevant factors, and in particular, similarity between the trade marks
and between the goods or services. Accordingly, a greater degree of similarity
between the goods may be offset by a lower degree of similarity between the marks,
and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20;
11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’,
EU:C:1998:442, § 17).
As has been concluded above, the contested goods are identical. The goods are
directed at the public at large with an average degree of attention. Furthermore, the
earlier mark is considered to enjoy an average degree of distinctiveness. Additionally,
the marks in dispute have been found visually similar to a low degree and aurally and
conceptual similar to a high degree.
The signs coincide in the distinctive verbal element ‛IGUANA’ (although the contested
sign has the additional plural s). Both marks also contain figurative elements that,
although in different stylisation, share the same concept of an iguana. They also
differ in the non-distinctive and weak verbal elements ‘Custom’ and ‘CLOTHES’ of the
earlier mark.
These differences between the signs are not sufficient to exclude the overall similarity
between the marks resulting from the coinciding verbal element ‘IGUANA’ and similar
figurative elements, especially from the aural and conceptual perspective.
Account is also 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).
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 European
Union trade mark registration No 14 201 081. It follows that the contested trade mark
must be rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Decision on Opposition No B 2 790 148 page: 6 of 6
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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Begoña URIARTE
VALIENTE
Benjamin Erik WINSNER Boyana NAYDENOVA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.