OPPOSITION No B 2 761 792
Implus Footcare, LLC, 2001 TW Alexander Drive, Box 13925, Durham, North Carolina 27709-3925, United States of America (opponent), represented by J A Kemp, 14 South Square, Gray’s Inn, London WC1R 5JJ, United Kingdom (professional representative)
a g a i n s t
Zhimin Chen, VIa Raimondo Montecuccoli 13, 00176 Roma, Italy (applicant).
On 30/06/2017, the Opposition Division takes the following
1. Opposition No B 2 761 792 is partially upheld, namely for the following contested goods:
Class 3: Cleaning and fragrancing preparations; Abrasive preparations; Essential oils and aromatic extracts.
Class 25: Clothing; Footwear; Shoes.
2. European Union trade mark application No 15 473 598 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 473 598, namely against all the goods in Classes 3, 16, 18, 22, 25 and 26. The opposition is based on, inter alia, European Union trade mark registration No 9 478 686. The opponent initially invoked Article 8(1)(b) and 8(4) EUTMR. In its observations, filed on 17/01/2017, however, the opponent explicitly withdrew Article 8(4) EUTMR as a basis of the present opposition. Therefore, the opposition will not be examined insofar as that ground was claimed.
The language of the proceedings in the present opposition is English. The applicant filed its observations in reply to the notice of opposition in Italian on 29/11/2016.
If the applicant’s first reply is not in the language of the proceedings but in one of the languages of the Office, the submission will not be taken into account unless the applicant or the opponent submits a translation of these documents in the language of the proceedings within one month from the date of receipt of the original by the Office. The Office will not request the parties to send a translation; the parties have to send one on their own initiative.
Since the applicant did not file a translation within the time limit, those observations are consequently not taken into account in the examination of this opposition.
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.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 478 686.
- The goods
The goods on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; shoes deodorizers for personal use; products to scent the linen excepted : fabric softener; products for washing liquid and washing powder.
Class 5: Deodorizers absorbing the bad smells such as those of the tobacco, the kitchen, the toilets or perspiration; deodorizers for cars, deodorizers for shoes having vocation to block the proliferation of the bacteria and mushrooms and to absorb moisture; repulsive deodorizers with the lemon grass for mosquitoes.
Class 25: Clothing, footwear, headgear; Inner soles absorbing the shocks; soles; protect heels and arch of the foot; Heelpieces for boots and shoes; Non-slipping devices for boots and shoes; Belts [clothing]; Socks; Sock suspenders; Heelpieces for stockings.
Class 28: Games and playthings; gymnastic and sporting articles; decorations for Christmas trees; Shoes accessories namely system of traction to be fixed at the shoes to facilitate walk on packed snow and ice; teddy bears; Ski bindings; Ice skates; Roller skates; In-line roller skates; Fishing tackle; Snowshoes; skis; Surf skis; Sleighs [sports articles]; Climbers’ harness.
The contested goods are the following:
Class 3: Cleaning and fragrancing preparations; Abrasive preparations; Essential oils and aromatic extracts.
Class 16: Gums [adhesives] for stationery or household purposes; Paper and cardboard; Stationery and educational supplies; Decoration and art materials and media; Filtering materials of paper; Disposable paper products; Works of art and figurines of paper and cardboard, and architects’ models; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.
Class 18: Saddlery, whips and animal apparel; Umbrellas and parasols; Leather, unworked or semi-worked; Moleskin [imitation of leather]; Walking staffs; Leatherboard; Leather for shoes; Imitation leather; Valises; Trunks and suitcases.
Class 22: Raw textile fibers and substitutes; Padding and stuffing materials.
Class 25: Clothing; Footwear; Shoes.
Class 26: Accessories for apparel, sewing articles and decorative textile articles.
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 3
The contested cleaning preparations; abrasive preparations; essential oils are identically contained in both lists of goods.
The contested fragrancing preparations are included in the opponent’s broad category of perfumery and consequently these goods are found to be identical.
The contested aromatic extracts include, as a broader category, the opponent’s essential oils. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested goods in Class 16
The opponent claims that the contested filtering materials of paper and disposable paper products could encompass the opponent’s deodorizer products in Classes 3 and 5. The Opposition Division, however, fails to come to the same conclusion because the contested gums [adhesives] for stationery or household purposes; paper and cardboard; stationery and educational supplies; decoration and art materials and media; filtering materials of paper; disposable paper products; works of art and figurines of paper and cardboard, and architects’ models; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics are goods of a different nature that are produced by manufacturers in the paper and printed products industry.
They serve very different purposes and they are therefore not in competition. They are distributed through different channels and target different publics. They are not complementary to any of the opponent’s goods in Class 3, 5, 25 or 28. Therefore, they are dissimilar.
Contested goods in Class 18
The contested saddlery, whips and animal apparel are types of equipment for horses, such as saddles and harnesses, and clothing for pets in general; umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; leather unworked or semi-worked; moleskin [imitation of leather]; leatherboard; leather for shoes; imitation leather are raw or semi-worked durable materials used in, for example, the leather manufacturing industry; walking staffs are devices used to facilitate walking; valises; trunks and suitcases are large packing cases or boxes that clasp shut, used as luggage or for storage; and whips are instruments used for driving animals.
These goods clearly serve very different purposes from the opponent’s goods in Classes 3, 5, 25 and 28. They do not usually have the same retail outlets and are not usually made by the same manufacturers. Although, for example, shoes can be made out of leather, the mere fact that one product is used for the manufacture of another is not sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51).
According to case-law, the raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (see, to that effect, 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary, since one is manufactured with the other, and raw materials are in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43).
Therefore, these goods are considered dissimilar to all the opponent’s goods.
Contested goods in Class 22
The same reasoning, regarding raw materials being essentially different from finished products, applies equally to the contested raw textile fibers and substitutes; padding and stuffing materials, which are mainly used in the manufacture of various types of finished textile products and upholstery for, for example, padding and covering chairs or sofas.
In terms of their nature, aim and intended purpose, these goods are also different from the opponent’s goods in Classes 3, 5, 25 and 28. In addition, they are not complementary. For these reasons, these goods are considered dissimilar.
Contested goods in Class 25
The contested clothing; footwear are identically contained in both lists of goods and the contested shoes are covered by the opponent’s broader category footwear. Therefore, these goods are identical.
Contested goods in Class 26
The contested accessories for apparel, sewing articles and decorative textile articles are items related to embellishments of textile articles and/or clothing and its manufacture.
An accessory is something extra that improves or completes the product it is added to. An accessory does not constitute an integral part of the main product, although it is usually used in close connection with it. An accessory usually fulfils a useful technical or decorative purpose.
The mere fact that a certain product is used in combination with or for the manufacture of another is not necessarily sufficient for a finding of similarity when, for example, the goods themselves do not have the same producers or distribution channels, which is true in the present case. Consequently, these goods are dissimilar.
- 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.
- The signs
Earlier trade mark
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public.
Even if a large part of the Italian-speaking public will perceive the Latin word ‘PLUS’ in both marks, given that this word will be understood and perceived as being laudatory or augmentative in nature, to the extent that, in general, it indicates increased quality or quantity (26/11/2007, R 435/2007-1, PLUS; 16/11/2015, R 2187/2013-2, FILM PLUS / CINE+ et al., § 50; 07/07/2016, R 1685/2015-1, MobiPlus / Plus, § 41), the verbal elements of both signs, ‘IMPLUS’ and ‘INPLUS’, taken as a whole, are not likely to be perceived as meaningful words. Therefore, in all likelihood, the relevant public will not dissect the marks into elements and will rather regard them as fanciful terms in their entirety.
However, the element ‘EU’, which is clearly separated from the element ‘IMPLUS’, will be recognised as an abbreviation for the European Union and understood as referring to the territory where the goods are manufactured or sold or to the fact that they comply with EU standards, for example. Consequently, hardly any attention will be given to this element, which, moreover, is placed at the end of the earlier mark and may, for these reasons, not even be pronounced when referring to the mark. The earlier sign also contains a simple figurative element (a wave-like element) of a purely decorative nature.
The marks have no elements that are visually more eye-catching than others.
Visually and aurally, the signs coincide in the letters ‘I*PLUS’ occurring in the same sequence. However, they differ in the simple wave-like figurative element (which will not be pronounced) and the element ‘EU’ of the earlier mark, which are considered weak. They also differ in their second letters, ‘M’ and ‘N’, although the difference between these letters is visually and aurally minimal.
As regards the figurative element of the contested sign, its impact in the evaluation of the visual similarity is less important than the verbal element, since, 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, since 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are visually and aurally highly similar.
Conceptually, although the public in the relevant territory will perceive the meaning of the weak element ‘EU’ of the earlier mark, as explained above, the other sign – as a whole – has no meaning in the relevant territory. Since one of the signs will not be associated with any meaning, the signs 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.
- 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 a weak element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements 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 8 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).
The goods are partly identical and partly dissimilar. The earlier mark enjoys a normal degree of distinctiveness.
Account must be 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).
Taking into account the abovementioned similarities between the signs in question, the Opposition Division considers that those similarities might lead at least part of the relevant public to think that the contested goods and the opponent’s goods come from the same undertaking or from economically linked undertakings. Considering all the above, there is a likelihood of confusion on the part of the Italian-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 and there is no need to analyse the perception of the remaining part of the public.
Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 478 686. It follows from the above that the contested trade mark must be rejected for the goods found to be identical 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.
The opponent has also based its opposition on European Union trade mark registration No 3 030 715 for the word mark ‘IMPLUS’.
Since this mark covers a narrower scope of goods, since it covers only impact absorbing footwear insoles in Class 25, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Cynthia DEN DEKKER
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.