OPPOSITION No B 2 654 849
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
Janni Richter, Bøllegård Alle 21 2.th, 2400 København, Denmark (applicant)
On 20/01/2017, the Opposition Division takes the following
1. Opposition No B 2 654 849 is upheld for all the contested goods, namely:
Class 25: Clothing; Footwear; Millinery.
2. European Union trade mark application No 14 826 151 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 350.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 826 151, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 11 419 942. 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.
- 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; Millinery.
Contested goods in Class 25
Since the contested millinery refers to women’s hats and headgear, it is included in the broad category of the opponent’s headgear. Therefore, they are identical.
Clothing, footwear are identically contained in both lists of goods.
- 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 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). 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 earlier mark is a figurative mark consisting of the word ‘Eagle’ written in title case letters and an italic typeface and placed within a thin rectangular frame. The frame is a banal label that has a purely decorative nature and lacks distinctiveness.
The English word ‘EAGLE’ means ‘any of various birds of prey of the genera Aquila, Harpia, etc, having large broad wings and strong soaring flight: family Accipitridae (hawks, etc)’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/eagle). Therefore, it is considered a distinctive element, since it is neither descriptive nor allusive in relation to the relevant goods. Therefore, the verbal element is more distinctive than the figurative element.
The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.
The contested sign is a word mark composed of two words, ‘JEN’ and ‘EAGLE’. The relevant public will perceive the first element, ‘JEN’, of the contested sign as the diminutive of the female first name ‘JENNIFER’. Therefore, it is very likely that the second element, ‘EAGLE’, of the contested sign, following the first name, will be understood as a surname, although ‘Eagle’ is quite uncommon as an English surname. Given that the element ‘EAGLE’ will be perceived as a surname only on account of its combination with the female first name ‘JEN’, it will still be associated by the relevant public with the meaningful English word referring to a bird of prey.
The contested mark has no elements that could be considered clearly more distinctive or dominant (visually more eye-catching) than other elements.
Visually, the signs are similar to the extent that they coincide in the distinctive word ‘EAGLE’, which is the sole verbal element of the earlier mark and which is fully included in the contested sign. On the other hand, they differ in the rectangular frame and the stylisation of the verbal element of the earlier mark as well as in the additional word ‘JEN’ of the contested sign, which has no counterpart in the earlier mark.
The rectangular frame of the earlier mark is merely decorative, so it has a very limited impact on consumers, if at all. Moreover, the graphic stylisation of the verbal element of the earlier mark is not very elaborate and, in any case, it is not so striking that consumers would not perceive the word as such. In this regard, it must also be emphasised that, as consumers are well accustomed to verbal elements being stylised in marks, they will perceive the stylisation as merely embellishing the verbal element. Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the marks coincides in the sound of the letters ‘EAGLE’, present identically in both signs. The pronunciation differs in the sound of the letters ‘JEN’ of the contested sign, which have no counterparts in the earlier mark. Therefore, the signs are aurally similar to an average degree.
Conceptually, both marks relate to the concept associated with the word ‘EAGLE’. The fact that ‘EAGLE’ in the contested trade mark will be perceived as a surname will not impede the public from associating this verbal element with a bird of prey. Indeed, as explained above, ‘EAGLE’ is not a common English surname and it will be perceived in this way by the public only on account of its position in relation to the name ‘JEN’. However, it remains a meaningful word with a precise concept that will be immediately recognised by the relevant public. However, the marks differ in the verbal element ‘JEN’ of the contested sign, which will lead the public to perceive the binomial ‘JEN EAGLE’ as a first name and a surname, and in the rectangular frame of the earlier mark, which, however, does not introduce any concept that could alter the conceptual perception of the sign.
Therefore, the signs are conceptually 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.
- 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 services 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 non-distinctive element in the mark, as explained in section c) above.
- Global assessment, other arguments and conclusion
The goods at issue are identical and the degree of attention is average. The trade marks are visually, aurally and conceptually similar to an average degree to the extent that they have the element ‘EAGLE’ in common, which constitutes the only verbal element of the earlier mark and which is entirely included as the second element in the contested sign.
Although the difference in the element ‘JEN’ of the contested sign has an impact when assessing the likelihood of confusion, it is not sufficient to counteract the similarities arising from the coinciding word ‘EAGLE’, which significantly influences the overall impression of the signs, particularly as this element has a normal degree of distinctiveness for the relevant goods and occupies an independent role in the contested sign.
Furthermore, account must also be taken of the principle that a likelihood of confusion implies some interdependence between the relevant factors, and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, the contested goods are all identical to the opponent’s goods.
Consequently, the relevant public, when encountering the signs in relation to identical goods, might be led by the coincidence in the word ‘EAGLE’ to believe that they come from the same undertaking or economically linked undertakings. For example, the public might be led to believe that the contested sign, with its additional word ‘JEN’, designates a new line or a parallel line of the opponent’s products, which would not be unusual in the world of fashion.
In view of the foregoing, and taking into account all the relevant circumstances of the case, the Opposition Division concludes that 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 11 419 942. It follows that the contested trade mark must be rejected for all the contested goods.
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, she 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
Angela DI BLASIO
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.