I’MPOSSIBLE | Decision 2314626 – Mallence Bart-Williams v. MDR Group Modern Dispute Resolution ApS

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OPPOSITION No B 2 314 626

Mallence Bart-Williams, Braunschweiger Str. 26, 12055 Berlin, Germany (opponent), represented by Unverzagt von Have Rechtsanwälte Partnerschaftsgesellschaft mbB, Heimhuder Straße 71, 20148 Hamburg, Germany (professional representative)

a g a i n s t

MDR Group Modern Dispute Resolution ApS, Skolevej 4 E, 8250 Egå, Denmark (applicant), represented by Chas. Hude A/S, H. C. Andersens Boulevard 33, 1780  København V, Denmark (professional representative).

On 10/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 314 626 is partially upheld, namely for the following contested goods:

Class 25:         Suspenders; clothing, footwear, headgear; togas; dress shields; layettes [clothing]; bathing trunks; swimsuits; shower caps; bath robes; bath sandals; beach shoes; bath slippers; belts (clothing); garters; bandanas [neckerchiefs]; berets; paper clothing; clothing; trousers; leg warmers; miters [hats]; babies' pants [clothing]; boas [necklets]; brassieres; wimples; pants; gaiter straps; teddies [undergarments]; combinations [clothing]; cyclists' clothing; esparto shoes or sandals; lace boots; fishing vests; detachable collars; collar protectors; football boots; footmuffs, not electrically heated; footwear; aprons [clothing]; coats; pelisses; gabardines [clothing]; galoshes; spats; gymnastic shoes; clothing for gymnastics; bibs, not of paper; scarfs; gloves [clothing]; hats; bathing caps; hoods [clothing]; girdles; top hats; headgear for wear; caps [headwear]; jackets [clothing]; jerseys [clothing]; skull caps; masquerade costumes; smocks; bodices [lingerie]; dresses; breeches for wear;  ready-made clothing; corselets; corsets [underclothing]; short-sleeve shirts; shoulder wraps; clothing of imitations of leather; clothing of leather; leggings [trousers]; liveries; cuffs; maniples; mantillas; stuff jackets [clothing]; chasubles; motorists' clothing; mittens; muffs [clothing]; skirts; ear muffs [clothing]; topcoats; headbands [clothing]; paper hats [clothing]; parkas; pelerines; fur stoles; furs [clothing]; money belts [clothing]; ponchos; pullovers; pyjamas; sandals; saris; sarongs; shawls; ski gloves; ski boots; shirt fronts; shirts; shoes; petticoats; skorts; dressing gowns; neckties; ascots; veils (clothing); sock suspenders; socks; visors [headwear]; sleep masks; suits; jumper dresses; sports shoes; boots for sports; singlets; boots; half-boots; beach clothes; knitwear [clothing]; stocking suspenders; stockings; sweat-absorbent stockings; anti-sweat underwear; sweaters; tee-shirts; slippers; sashes for wear; wooden shoes; hosiery; tights; turbans; underpants; slips [undergarments]; underwear; camisoles; uniforms; wet suits for water-skiing; waterproof clothing; vests; outerclothing; inner soles; studs for football boots.

2.        European Union trade mark application No 12 108 941 is rejected for all the above goods. It may proceed for the remaining goods and services.

        

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 108 941 namely against all the goods in Class 25. The opposition is based on European trade mark registration No 10 648 971. The opponent invoked Article 8(1)(a) and (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: 14: Jewellery; jewellery; wristwatches, clocks; bracelets, pins, necklaces, neck bands, chains for watches, earrings, rings, cuff-links, brooches and amulets, key rings of precious metal; badges of precious metal; works of art of precious metal.

Class 18: Handbags, sports bags, briefcases, travelling bags, rucksacks, wallets, luggage boxes, suitcases, waist pouches, game bags; leather jewellery; clothing for animals; thongs, leather laces; fur.  

Class 25: Articles of clothing for men, women and children; belts, suspenders; swimwear; sleepwear; ladies' underwear; headgear; footwear; gloves; scarves, neckties.

The contested goods are the following:

Class 25: Clothing, footwear, headgear; togas; dress shields; layettes [clothing]; bathing trunks; swimsuits; shower caps; bath robes; bath sandals; beach shoes; bath slippers; belts (clothing); garters; bandanas [neckerchiefs]; berets; paper clothing; clothing; trousers; leg warmers; fittings of metal for footwear; miters [hats]; babies' pants [clothing]; boas [necklets]; brassieres; wimples; pants; gaiter straps; teddies [undergarments]; combinations [clothing]; cyclists' clothing; esparto shoes or sandals; lace boots; fishing vests; detachable collars; collar protectors; football boots; footmuffs, not electrically heated; footwear; ready-made linings [parts of clothing]; aprons [clothing]; coats; pelisses; gabardines [clothing]; galoshes; spats; gymnastic shoes; clothing for gymnastics; bibs, not of paper; heels; heelpieces for footwear; scarfs; gloves [clothing]; hats; hat frames [skeletons]; bathing caps; hoods [clothing]; girdles; top hats; headgear for wear; caps [headwear]; inner soles; jackets [clothing]; jerseys [clothing]; skull caps; masquerade costumes; cap peaks; smocks; bodices [lingerie]; dresses; breeches for wear; studs for football boots; ready-made clothing; corselets; corsets [underclothing]; short-sleeve shirts; shoulder wraps; clothing of imitations of leather; clothing of leather; leggings [trousers]; liveries; pockets for clothing; cuffs; maniples; mantillas; stuff jackets [clothing]; chasubles; motorists' clothing; mittens; muffs [clothing]; skirts; ear muffs [clothing]; topcoats; footwear uppers; headbands [clothing]; paper hats [clothing]; parkas; pelerines; fur stoles; furs [clothing]; money belts [clothing]; ponchos; pullovers; pyjamas; pocket squares; welts for footwear; soles for footwear; sandals; saris; sarongs; suspenders; shawls; ski gloves; ski boots; shirt fronts; shirts; shoes; petticoats; skorts; non-slipping devices for footwear; shirt yokes; dressing gowns; neckties; ascots; veils (clothing); sock suspenders; socks; visors [headwear]; sleep masks; suits; jumper dresses; sports shoes; boots for sports; singlets; tips for footwear; boots; boot uppers; half-boots; beach clothes; knitwear [clothing]; heelpieces for stockings; stocking suspenders; stockings; sweat-absorbent stockings; anti-sweat underwear; sweaters; tee-shirts; slippers; sashes for wear; wooden shoes; hosiery; tights; turbans; underpants; slips [undergarments]; underwear; camisoles; uniforms; wet suits for water-skiing; waterproof clothing; vests; outerclothing.

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.

The contested suspenders; headgear, footwear (mentioned twice); belts (clothing); headgear for wear; clothing (mentioned twice) are identically contained in both lists of goods (including synonyms).

The contested togas; layettes [clothing]; bathing trunks; swimsuits; bath robes; garters; bandanas [neckerchiefs]; paper clothing; trousers; leg warmers; babies' pants [clothing]; boas [necklets]; brassieres; pants; gaiter straps; teddies [undergarments]; combinations [clothing]; cyclists' clothing; fishing vests; detachable collars; collar protectors; aprons [clothing]; coats; pelisses; gabardines [clothing]; clothing for gymnastics; bibs, not of paper; scarfs; gloves [clothing]; hoods [clothing];

girdles; jackets [clothing]; jerseys [clothing]; masquerade costumes; smocks; bodices [lingerie]; dresses; breeches for wear; ready-made clothing; corselets; corsets [underclothing]; short-sleeve shirts; shoulder wraps; clothing of imitations of leather; clothing of leather; leggings [trousers]; liveries; cuffs; maniples; mantillas; stuff jackets [clothing]; chasubles; motorists' clothing; mittens; muffs [clothing]; skirts; ear muffs [clothing]; topcoats; headbands [clothing]; paper hats [clothing]; parkas; pelerines; fur stoles; furs [clothing]; money belts [clothing]; ponchos; pullovers; pyjamas; saris; sarongs; shawls; ski gloves; shirt fronts; shirts; petticoats; skorts; dressing gowns; neckties; ascots; veils (clothing); sock suspenders; socks; sleep masks; suits; jumper dresses; singlets; beach clothes; knitwear [clothing]; stocking suspenders; stockings; sweat-absorbent stockings; anti-sweat underwear; sweaters; tee-shirts; sashes for wear; hosiery; tights; turbans; underpants; slips [undergarments]; underwear; camisoles; uniforms; wet suits for water-skiing; waterproof clothing; vests; outerclothing are included in the broad category of the opponent’s articles of clothing for men, women and children in Class 25. Therefore, these are identical.

The contested shower caps; berets; miters [hats]; wimples; hats; bathing caps; top hats; caps [headwear]; skull caps; visors [headwear] are included in the broad category of the opponent’s headgear in Class 25. Therefore, these are identical.

The contested bath sandals; beach shoes; bath slippers; esparto shoes or sandals; lace boots; football boots; footmuffs, not electrically heated; galoshes; spats; gymnastic shoes; sandals; ski boots; shoes; sports shoes; boots for sports; boots; half-boots; slippers; wooden shoes are included in the broad category of the opponents footwear in Class 25. Therefore, these are identical.

The contested inner soles; studs for football boots are similar to the opponent’s footwear. They are complementary goods, have the same distribution channels, target the same public and are normally manufactured by the same kind of undertakings.

The contested dress shields; fittings of metal for footwear; ready-made linings [parts of clothing]; heels; heelpieces for footwear; hat frames [skeletons]; cap peaks; pockets for clothing; footwear uppers; pocket squares; welts for footwear; soles for footwear; boot uppers; shirt yokes; tips for footwear; heelpieces for stockings; non-slipping devices for footwear are specific components of some clothing, footwear and headgear articles. The nature of these products is very different from that of the opponent’s goods in Class 25, but also of those in Classes, 18, which include mainly leather or leather imitations goods, travel goods and saddlery, and 14, which include mainly precious metals, goods in precious metals not included in other classes, in general jewellery, clocks and watches. Indeed, the goods under comparison serve very different purposes and are not found in the same retail outlets. Furthermore, it is very unlikely that they are manufactured by the same undertaking which manufactures the opponent’s, not only in Class 25, but also in Classes 14 and 18. Therefore, these goods are dissimilar.

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

  1. The signs

I’M POSSIBLE

I’MPOSSIBLE

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.

The marks are word marks consisting of the words ‘I’M POSSIBLE’ in the earlier mark and ‘I’MPOSSIBLE’ in the contested sign.

The marks have no elements that could be considered clearly more distinctive or more dominant, (visually) eye-catching.

The earlier mark ‘I’M POSSIBLE’ will be understood as such by the part of the relevant public which will also read the contested sign in the same manner, since the apostrophe is clearly showing that the way it is written is a play on words between the words ‘impossible’ and ‘I’m possible’. In any event, these words have no significance in relation to the goods in question.

Visually and aurally, the signs coincide in the letters ‘IMPOSSIBLE’ that almost constitute the earlier mark in its entirety. They also coincide in the presence of an apostrophe after the letter ‘I’. The only visual difference is the space placed after the letter ‘M’ in the earlier mark which will, in any case, not affect the overall impression of the sign. The lack of a space in the contested sign will force the consumer to find the better way to pronounce the rest of the letters. Part of the public will make a natural break after the letter ‘M’, rendering the pronunciation of the signs identical. Another part of the public might read the word ‘IMPOSSIBLE’. In such a case, the signs are aurally similar to a high degree.

Therefore, the signs are visually highly similar and aurally identical.

Conceptually, the contested sign, written as such has no meaning, however, as explained above, the public in the relevant territory will naturally find the better way to read it and pronounce it. Therefore, since part of the consumers will clearly recognize the expression ‘I’M POSSIBLE’, with the meaning as mentioned above, which fully coincides with the earlier mark, the signs are conceptually identical for this part of the public.

For the part of the public that will read the word ‘IMPOSSIBLE’ in the contested sign, the signs will be associated with dissimilar meanings. Therefore, they are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

  1. 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, and contrary to the applicant’s argument, 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.

  1. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (see judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

In the present case, the contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods. The comparison of the signs has established that they are visually highly similar and aurally and conceptually identical for a part of the public and aurally highly similar and conceptually not similar for the rest of the public. The only difference between the signs is the absence of a space in the contested sign. Indeed, since the letter ‘I’ is followed by an apostrophe, the Opposition Division considers that a significant part of the consumers will be forced to try to find the better way to read the rest of the letters and read the expression ‘I’M POSSIBLE’. For the part of the public that will read the word ‘IMPOSSIBLE’ the visual and aural coincidences are overwhelming and enough to create confusion in consumer’s mind.

Indeed, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (see judgment of 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, the differences already established may go unnoticed by consumers.

In its observations, the applicant argues that the marks have a low distinctive character given that there are many trade marks that include the element ‘IMPOSSIBLE’.

Although this argument was not supported by any evidence, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. Under these circumstances, the applicant’s claim must be set aside.

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 10 648 971. 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 found to be identical and similar to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are not identical.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Chantal VAN RIEL

Sandra IBAÑEZ

Benoit VLEMINCQ

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.

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