OPPOSITION No B 2 717 794
Med Kataskevi Endymaton-Esoroychon-Magio Emporoviomichaniki Anonymi Etairia, diakritikos titlos Med Aeve, 9, Acheloou str., 54628 Thessaloniki, Greece (opponent), represented by Konstantinos Kyriakou, 15, Komninon & Tsimiski str., 54626 Thessaloniki, Greece (professional representative)
a g a i n s t
Brand s.c. A.A.Ł. Broniarczyk, Łąkowa 3/5, 90-562 Łódź, Poland (applicant), represented by Kancelaria Patentowa Sójka & Wróblewski S.C., Lechonia 8/24, 95-100 Zgierz, Poland (professional representative).
On 29/06/2017, the Opposition Division takes the following
1. Opposition No B 2 717 794 is upheld for all the contested goods.
2. European Union trade mark application No 15 025 125 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 025 125. The opposition is based on European Union trade mark registration No 3 264 009. The opponent invoked Articles 8(1)(b) and 8(5) 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 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Class 25: Clothing, shoes, headgear.
The contested goods are the following:
Class 25: Children's wear.
The contested children's wear is included in the broad category of the opponent’s clothing. Therefore, these goods are identical.
- 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.
The verbal elements of the marks are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the United Kingdom, Ireland and Malta.
The earlier mark is a figurative mark consisting of the word ‘MED’ in slightly stylised black upper case letters. The word ‘MED’ stays for ‘medical’ or ‘media’ for the English-speaking part of the public. Such component of the mark has no connection with the relevant goods, which are clothing items; therefore it has a normal distinctive character.
The contested mark is a figurative mark that includes the words ‘KIDS’ in red upper case bold letters and ‘MED’ in green bold upper case characters. These words will be perceived separately not only because the relevant public will have an immediate understanding of the both of them, but also because of the slightly bigger dimension of their first letters and of the different colours used in their depiction. The word ‘KIDS’ will be understood as ‘child’ and it is descriptive of the nature of the relevant goods, which are children's wear; therefore the element has no distinctive character, hence less relevance in the present comparison. The word ‘MED’ will be understood as seen above and is distinctive for the reasons already explained.
The mark also includes a figurative element consisting of a red circle containing an off-centre white cross. Not having any connection with the relevant goods, this element is distinctive. However, due to its figurative nature, it has lesser importance in the present comparison. Indeed, 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).
Neither of the signs has any element that is more dominant (eye catching) than other elements.
Visually, the signs coincide in the word ‘MED’ contained identically in both signs. They differ in less relevant elements of the contested sign, namely the non-distinctive word ‘KIDS’ of the contested sign and in its figurative element and stylisation. In view of the above and considering that the earlier mark is entirely included in the contested sign, the signs are considered visually similar to an average degree.
Admittedly, the marks differ in their initial and (usually) most important portion, as observed by the applicant in its observations of 20/01/2017. The Opposition Division acknowledges that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, this is only one of the factors to be taken into account when defining the level of similarity between the signs and cannot be decisive alone. Moreover it shall be considered that the differing element in the beginning of the contested sign has a weak distinctive character, thus secondary importance in the present assessment.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘MED’, present identically in both signs; while it differs in the in the sound of the letters of the less relevant element ‛KIDS’ of the contested mark, which has no counterpart in the earlier sign. In view of the foregoing and of the fact that the figurative element of the contested sign is not subject to aural assessment, the signs are aurally highly similar.
Conceptually, the signs are similar to the extent that they coincide in the distinctive word ‘MED’. They differ in the concept conveyed by the additional word of the contested sign ‘KIDS’; however such element is not sufficient to establish any conceptual dissimilarity, as it is non-distinctive and cannot indicate the commercial origin of the contested sign. The attention of the relevant public will be attracted by the other distinctive verbal element of the sign. The figurative element of the contested sign will be perceived as a cross in a circle; nevertheless such difference shall be considered in the light of the secondary relevance of the element.
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.
According to the opponent, the earlier mark has reputation. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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 goods covered by the trade marks in dispute are identical and they target the public at large, whose degree of attention is considered to be average. The earlier mark has been deemed to enjoy a normal degree of distinctive character in connection with the relevant goods.
The signs are visually similar to an average degree and aurally similar to a high degree, as well as conceptually similar to the extent that the second element of the contested sign fully reproduces the earlier mark ‘MED’ and despite the visual difference due to the less relevant figurative element of the contested sign. Admittedly, the contested sign also includes the word ‘KIDS’. Nonetheless, considering its lack of distinctive character and also bearing in mind the principle of imperfect recollection (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), this differing element of the contested mark, even if considered together with the abovementioned graphic device, is not deemed sufficient to outweigh the commonalities observed and to give a different overall impression to the relevant consumers.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, the difference in the element ‘KIDS’, of the contested sign makes it highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark for goods designed for children (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, 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 3 264 009. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark and on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to the reputation claimed by the opponent and the other ground of the opposition, namely Article 8(5) EUTMR. The result would be the same even if the earlier mark enjoyed reputation.
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.
The Opposition Division
Francesca CANGERI SERRANO
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.