OPPOSITION No B 2 729 427
V.I.N.U.M., 64 Kammenstraat, 2000 Antwerpen, Belgium (opponent), represented by Gevers, Brussels Airport Business Park, 5 Holidaystraat, 1831 Diegem, Belgium (professional representative)
a g a i n s t
Holzer y Cia, S.A. de C.V., 345 Campos Elíseos, Piso 10, Colonia Chapultepec Polanco, 11560 México D.F., Mexico (applicant), represented by Cuatrecasas Gonçalves Pereira Propiedad Industrial, S.R.L., 9 C/ Almagro, 28010 Madrid, Spain (professional representative).
On 12/06/2017, the Opposition Division takes the following
1. Opposition No B 2 729 427 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 166 028 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 166 028 (word mark ‘KUDETA’), namely against all the goods and services in Classes 14, 25 and 35. The opposition is based on European Union trade mark registration No 13 168 117 (figurative mark). 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 and services
The goods and services on which the opposition is based are the following:
Class 18: Leather and imitations of leather, and goods made of these materials, namely trunks and travelling bags, backpacks, sports bags, handbags, holdalls, briefcases, shopping bags, beach bags and pocket wallets; Animal skins, hides; Trunks and travelling bags; Rucksacks, Gym bags, handbags and tote bags, Briefcases, Shopping bags, Beach bags; Umbrellas, big umbrellas and walking sticks; Baggage.
Class 25: Clothing, footwear, headgear.
Class 35: Advertising; Business management; Business administration; Office functions; Retail services, Including online, Clothing, Footwear, Headgear, Fashion accessories, jewellery findings, Timepieces, Sunglasses, Leather and imitations of leather, Belts, Animal skins, Trunks and travelling bags, Rucksacks, Bags for sports, Handbags and Tote bags, Stationery portfolios, shopping bags, Beach bags, Umbrellas, Parasols, Walking sticks and Wallets.
The contested goods and services are the following:
Class 14: Jewellery and watches.
Class 25: Clothing; Footwear; Headgear.
Class 35: Advertising; Business management; Business administration; Office functions; Marketing (business brokerage) of jewellery, watches and clocks, clothing, footwear and headgear.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
According to Article 120(3) EUTMR, if the application was filed in an official language of the European Union other than one of the languages of the Office, the text in the second language indicated by the applicant shall be authentic.
In the present case, the earlier mark was filed in Dutch, indicating French as the second language; therefore, if there is a discrepancy, the French version prevails.
From the wording of the French version, namely ‘services de vente au détail, également en ligne, de vêtements, chaussures, chapellerie, accessoires de mode, bijoux, horlogerie (…)’, it is evident that the retail services registered in Class 35 are correct in English as ‘retail services, including online, of clothing, footwear, headgear, fashion accessories, jewellery, timepieces (…)’.
The relevant factors relating to the comparison of the goods and services include, inter alia, the nature and purpose of the goods and 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 14
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
The contested watches are included in the broader category of timepieces; therefore, they are identical.
Therefore, the contested jewellery and watches are similar to a low degree to the opponent’s retail services, including online, of jewellery, timepieces.
Contested goods in Class 25
Clothing, footwear, headgear are identically contained in both lists of goods.
Contested services in Class 35
Advertising; business management; business administration; office functions are identically contained in both lists of services.
The contested marketing (business brokerage) of jewellery, watches and clocks, clothing, footwear and headgear overlaps with the opponent’s advertising. Therefore, they 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.
The relevant goods and services found to be identical or similar are directed partly at the public at large including professionals (e.g. the relevant goods) and partly at business customers with specific professional knowledge or expertise only (e.g. some of the relevant services).
The degree of attention may vary from average (in relation to the relatively inexpensive goods, such as clothing and footwear) to high (in relation to the more expensive goods, such as jewellery, or the business services in Class 35, because the latter can have serious implications for a client’s business).
- 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 earlier mark is a figurative mark consisting of six upper case letters in either black or beige forming the word ‘KUDETA’. The letters ‘K’, ‘U’, ‘D’ and ‘T’ are in a standard font, while the letters ‘E’ and ‘A’ are stylised, since the vertical line of the letter ‘E’ and the horizontal line of the letter ‘A’ are omitted. The contested mark is a word mark consisting of one element, namely ‘KUDETA’.
Both marks consist of the word ‘KUDETA’, which has no meaning for the relevant public and is, therefore, distinctive.
Visually, the signs coincide in the distinctive verbal element ‘KUDETA’. The signs differ only in the stylisation of this element, as the contested sign is a word mark, while the earlier mark is figurative. The degree of stylisation of the earlier mark is, however, not sufficient to render the verbal element unrecognisable. On the contrary, the verbal element is easily recognisable and legible in the earlier mark. Therefore, the signs are visually highly similar.
Aurally, as the marks have their only verbal element in common, they are identical.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 and 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.
- 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; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
In the present case, the goods and services are partly identical and partly similar to a low degree, and the signs are visually highly similar and aurally identical.
Given the high degree of similarity between the signs, a likelihood of confusion exists, even for the services that are similar to only a low degree.
The likelihood of confusion exists even with respect to the goods and services for which the degree of attention is rather high. This is because of the high degree of similarity between the signs and the fact that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 168 117. It follows that the contested trade mark must be rejected for all the contested goods and services.
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
Adriana VAN ROODEN
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.