OPPOSITION No B 2 726 803

CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (opponent)

a g a i n s t

June 72 Llc, 5527 Green Oak Dr, Los Angeles California 90068, United States (applicant), represented by Atem Avocats, 9 rue Scribe, 75009 Paris, France (professional representative).

On 03/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 726 803 is upheld for all the contested goods.

2.        European Union trade mark application No 15 020 423 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 020 423. The opposition is based on Benelux trade mark registration No 982 721. 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; swimwear; leisurewear.

The contested goods are the following:

Class 25:         Bandanas [neckerchiefs]; boots; ankle boots; belts [clothing]; shawls; sweaters; pullovers; hats; footwear; beach shoes; shirts; short-sleeve shirts; tights; collars; suits; neckties; sports singlets; underwear; underwear; espadrilles; sashes for wear; scarves; furs [clothing]; gabardines [clothing]; gloves [clothing]; waistcoats; jumpers; skirts; skorts; petticoats; leggings [trousers]; swimming costumes; swimming costumes; coats; trousers; slippers; slippers; parkas; ponchos; gowns; wooden shoes; sandals; saris; sarongs; footwear; tee-shirts; knitwear [clothing]; turbans; jackets [clothing]; clothing; clothing; clothing; clothing of imitations of leather; leather clothing.

The contested footwear; clothing (mentioned three times) are identically contained in both lists of goods.

The contested bandanas [neckerchiefs]; belts; shawls; sweaters; pullovers; shirts; short-sleeve shirts; tights; collars; suits; neckties; sports singlets; underwear (mentioned twice); sashes for wear; scarves; furs [clothing]; gabardines [clothing]; gloves [clothing]; waistcoats; jumpers; skirts; skorts; petticoats; leggings [trousers]; coats; trousers; parkas; ponchos; gowns; saris; sarongs; tee-shirts; knitwear [clothing]; jackets [clothing]; clothing of imitations of leather; leather clothing are included in the broad category of the opponent’s clothing in Class 25. Therefore, they are identical.

The contested boots; ankle boots; slippers (mentioned twice); beach shoes; espadrilles; wooden shoes; sandals are included in the broad category of the opponent’s footwear in Class 25. Therefore, they are identical.

The contested swimming costumes (mentioned twice) are included in the broad category of the opponent’s swimwear in Class 25. Therefore, they are identical.

The contested hats; turbans are included in the broad category of the opponent’s headgear in Class 25. Therefore, they are 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 is average.

3. The signs

JUNE
Earlier trade mark	Contested sign

The relevant territories are the Benelux countries.

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 element ‘7.2’ placed in a small circle at the bottom right of the contested sign, as correctly pointed out by the opponent, is barely perceptible and thus not noticeable at first sight. Consequently, the Opposition Division concurs with the opponent’s assertions that this is a negligible element which is likely to be disregarded by the relevant public. In light of the foregoing, the said element will not be taken into consideration.

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).

The common element ‘JUNE’ will be understood as a reference to the sixth month of the year by the relevant public. Having said that, it should be pointed out that it is apparent from the case-law that the number of countries where basic English can be understood is greater than the number of countries where English is the native language (see by analogy, 06/02/2013, T-412/11, Transcedental Mediation, EU:T:2013:62, § 60). This is the case here, thus, it is reasonable to assume that the word ‘JUNE’ will be understood by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign’s figurative device made up of three red stripes, one above the other, with a sharp corner pointing downwards and placed in the middle of the verbal element ‘JUNE’ is distinctive, as it is not descriptive, allusive or otherwise weak for the relevant goods. However, its impact in the sign is reduced, 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. 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 word element ‘JUNE’ which constitutes the whole earlier mark and is one of the most distinctive elements of the contested sign. They differ in the contested sign’s graphic representation (three stripes), which will, as mentioned above, attract the consumers’ attention less than the verbal element. Furthermore, the stylization of the mentioned word is quite standard and not able to take away the attention from the verbal element.

Thus, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the term ‘JUNE’. Therefore the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs taken as a whole refer to the same month, the signs are identical.

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 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.

5. Global assessment, other arguments and conclusion

The goods have been found identical. The earlier mark has a normal degree of distinctiveness. The signs are visually similar to a high degree whereas they are aurally and conceptually identical. The relevant public is the public at large whose level of attention is average.

Account is 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).

For the sake of completeness, it should be mentioned that the applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

In light of the above, the opposition is well-founded on the basis of the opponent’s Benelux trade mark registration No 982 721. 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

Chantal VAN RIEL

Klaudia MISZTAL

Vanessa PAGE

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