OPPOSITION No B 2 597 295
Winners Holdings Limited, Avenida 5 de Outubro, 56 – 1º, 1050-058 Lisboa, Portugal (opponent), represented by A.G. Da Cunha Ferreira, LDA., Avenida 5 de Outubro, 146-7º, 1050-061 Lisboa, Portugal (professional representative)
a g a i n s t
Café Kraft GmbH, Gebertstraße 9, 90411 Nürnberg, Germany (applicant), represented by Wülfing Zeuner Rechel Rechtsanwälte Steuerberater, John-Brinckman-Str. 9, 18055 Rostock, Germany (professional representative).
On 29/03/2017, the Opposition Division takes the following
1. Opposition No B 2 597 295 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 710 553, namely against one of the goods in Class 25. The opposition is based on Portuguese trade mark registration No 283 582. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
Proof of use of the earlier mark was requested by the applicant. However, at this point the Opposition Division considers it appropriate to not undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.
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: Articles of clothing, including T-Shirts and sweat shirts.
The contested good is the following:
Class 25: Clothing.
The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The contested clothing includes as a broad category the opponent’s articles of clothing, including t-shirts and sweat shirts. Since the Opposition Division cannot dissect ex officio the broad category of the contested good, they are considered identical to the opponent’s 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 considered to be average.
- The signs
Earlier trade mark
The relevant territory is Portugal.
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 earlier mark is figurative mark made up of a black capital letter ‘K’ over a light grey slightly mottled rectangular background. The ‘K’ looks like it has been hand drawn with a somewhat wasted marker so that the lines are not solid and the light grey background is visible through the gaps. The entry stroke is jagged and the right side of the letter is higher than the left.
The contested sign is also a figurative mark made up of a white curvy capital letter ‘K’ on a black diamond-shaped background. The entry stroke curves from the middle of the stem.
There is no dominant feature in either of the marks as the background and the letter ‘K’ are perceived as one, and the letter ‘K’ has no meaning for the goods at hand and so is distinctive.
Visually, the signs coincide in the distinctive letter ‘K’. However, they differ significantly in their graphical representation and the visual impression of the marks is markedly distinct. The earlier mark is jagged and looks hand-drawn, black on a light background. The contested sign is a rounded curvy font, white on dark background.
The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.
Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letter ‛K’, present identically in both signs and distinctive in relation to the goods at issue.
Therefore, the signs are aurally identical.
Conceptually, both signs will be perceived as the letter ‘K’.
The Office follows the approach that single letters can have an independent conceptual meaning. The Court has confirmed this approach (judgment of 08/05/2012, T-101/11, G, EU:T:2012:223, § 56, appealed as C-341/12 P, G, EU:C:2013:206), finding conceptual identity where both trade marks can be seen as the same letter.
As this is the present case, the signs are considered conceptually identical.
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.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally taking into account all the factors relevant to the circumstances of the case (22/06/1999, C-342/97 Lloyd Schuhfabrik, EU:C:1999:323; § 18).
In the present case the goods at issue are identical. The signs are aurally and conceptually identical and visually similar to a low degree. The earlier mark has a normal distinctive character. The level of attention of the relevant public is average.
It follows from case law that in the assessment of likelihood of confusion between signs comprising the same letters, the visual comparison is in principle decisive. The aural and even conceptual identity may be overridden by sufficient visual differences. Indeed the Court made it clear that in cases of trade marks consisting of the same letter, a sufficiently different visual impression may safely rule out a likelihood of confusion even in cases when there is aural and conceptual identity (10/05/2011, T.187/10, G. EU:T:2011:202, § 60 (emphasis added).
Consequently, a likelihood of confusion can be safely excluded when two conflicting signs, albeit containing the same single letter, are stylised in a sufficiently different way so that their different overall graphical representation eclipses the common verbal element.
Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs are particularly relevant when assessing the likelihood of confusion between them.
Contrary to what the opponent claims in stating that it is the similarities and not the differences that matter, in the present case, an essential point in the assessment is that the visual differences between them are very pronounced and immediately perceptible. Even taking into consideration the imperfect recollection of the consumer who will not examine trade marks side by side but must rely on the imperfect image of them kept in mind, the Opposition Division is of the opinion that it is unlikely that such differences become blurred in the public’s mind.
Considering all the above, there is no likelihood of confusion on the part of the relevant public even for identical goods. Therefore the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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.