OPPOSITION No B 2 621 947

 

M. Lange & Co. GmbH, Lindberghstr. 3, 80939 Munich, Germany and s.Oliver Bernd Freier GmbH & Co. KG, s.Oliver Str.1, 97228 Rottendorf (opponents), represented by Klinger & Kollegen, Bavariaring 20, 80336 Munich, Germany (professional representative)

 

a g a i n s t

 

La Rena Piotr Treliński, Bugaj 90/17, 95-200 Pabianice, Poland (applicant), represented by Rumpel Spółka Komandytowa, Częstochowska 1 a, 93-115 Łódź, Poland (professional representative).

 

On 13/01/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 621 947 is upheld for all the contested goods.

 

2.        European Union trade mark application No 14 548 598 is rejected in its entirety.

 

3.        The applicant bears the costs, fixed at EUR 650.

 

 

REASONS:

 

The opponents filed an opposition against all the goods of European Union trade mark application No 14 548 598. The opposition is based on, inter alia, European Union trade mark registration No 12 674 917. The opponents 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 674 917.

 

 

1. The goods

 

The goods on which the opposition is based are (among others) the following:

 

Class 25: Clothing, footwear, headgear; clothing for men, women and children; trousers, jackets (clothing), costumes, coats, dresses, blouses, shirts, skirts, t-shirts, sports jerseys, sweatshirts; bathing suits, bikinis, bathing trunks, bath robes, bathing caps; underclothing, underwear; corsets; tights, stockings, socks; accessories for clothing; belts, scarves, gloves, braces for clothing (suspenders), shawls, headbands; layettes [clothing]; ties; men’s, women’s and children’s footwear.

 

Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers; styling accessories (hair ornaments, hair bands, hairslides); ornaments novelty badges (buttons); buttons; belt buckles, belt clasps; badges for wear, not of precious metal; brassards; expanding bands for holding sleeves; ribbons for clothing; lace for edgings; trimmings for clothing; brooches (clothing accessories); binding needles, chenille (passementerie); heat adhesive patches for decoration of textile articles (haberdashery); buttons; bodkins (awls); tapes for curtain headings; feathers (clothing accessory); festoons [embroidery]; sewing thimbles; whalebones for corsets; heat adhesive patches for repairing textile articles, orsedew [trimmings for clothing]; fringes; artificial garlands; mica spangles; gold embroidery; hair slides; hair pins; hair nets; bows for the hair; tresses of hair; binding needles; fastenings for suspenders; hat ornaments, not of precious metal; frills [lacework]; thread of metal for embroidery; edgings for clothing; eyelets for clothing; frills for clothing; fastenings for clothing; skirt flounces; hook and pile fastening tapes; corset busks; collar supports; wreaths of artificial flowers; artificial fruit; haberdashery, except thread; boxes for needles; boxes for needles; needle cushions; needles; needles for wool combing machines; sewing boxes; sewing needles; false hems; hair curling pins; spangles for clothing; wigs; hair extensions; picot [lace]; lace trimmings; prize ribbons; top-knots [pompoms]; zip fasteners; zippers for bags; rosettes [haberdashery]; saddlers’ needles; cords for rimming, for clothing; shuttles for making fishing nets; dress body fasteners; fastenings for clothing; bodkins; shoe laces; shoe laces and hooks; shoemakers’ needles; shoe eyelets; shoe fasteners; shoe fasteners; shoe ornaments, not of precious metal; shoulder pads for clothing; silver embroidery; pin cushions; pins, other than jewellery [jewelry (am.)]; embroidery; embroidering crochet hooks; hair extensions; braids; tassels [haberdashery]; birds’ feathers [clothing accessories]; monogram tabs for marking linen; monogram tabs for marking linen; woollen laces.

 

The contested goods are the following:

 

Class 25: Clothing; twin sets; kerchiefs [clothing]; gym suits; clothing for gymnastics; clothing made of fur; tops [clothing]; muffs [clothing]; clothing for skiing; baby clothes; children’s wear; belts [clothing]; maternity clothing; menswear; roll necks [clothing]; loungewear; sportswear; evening wear; leisurewear; knitwear [clothing]; jackets [clothing]; jerseys [clothing]; gloves [clothing]; linen clothing; silk clothing; surfwear; girls’ clothing; dance clothing; woolen clothing; plush clothing; weatherproof clothing; ear muffs [clothing]; shorts; ready-made clothing; combinations [clothing]; furs [clothing]; mufflers [clothing]; denims [clothing]; slips [undergarments]; leather clothing; running suits; playsuits [clothing]; quilted jackets [clothing]; nightwear; boys’ clothing; three piece suits [clothing]; layettes [clothing]; leather belts [clothing]; formal evening wear; outerclothing; boas [necklets]; veils [clothing]; babies’ pants [clothing]; gussets [parts of clothing]; jogging sets [clothing]; corsets; outerclothing for girls; womens’ outerclothing; bottoms [clothing]; slipovers [clothing]; shoulder wraps [clothing]; bandeaux [clothing]; clothing of imitations of leather; outerclothing for men; arm warmers [clothing]; short sets [clothing]; bra straps; articles of clothing for theatrical use; sports clothing [other than golf gloves]; underwear; long johns; disposable underwear; lingerie; thermal underwear; boy shorts [underwear]; babies’ undergarments; ladies’ underwear; teddies [undergarments]; foundation garments; camiknickers; body stockings; trousers; tracksuit bottoms; over-trousers; corduroy trousers; trousers for children; culotte skirts; short trousers; jodhpurs; pajama bottoms; stretch pants; golf pants, shirts and skirts; men’s and women’s jackets, coats, trousers, vests; skirts; sundresses; maternity smocks; women’s ceremonial dresses; footwear; slip-on shoes; canvas shoes; boots for sports; leather shoes; footwear for women; dance shoes; running shoes; dress shoes; ladies’ boots; shoes with hook and pile fastening tapes; bath shoes; half-boots; tap shoes; booties; high-heeled shoes; flat shoes; sandals and beach shoes; gaiters; walking shoes; shirts; dress shirts; casual shirts; nighties; shirts for suits; polo shirts; printed t-shirts; tank tops; baby tops; sports jerseys and breeches for sports; hats; miters [hats]; visors [headwear]; thermal headgear; caps [headwear]; leather headwear; children’s headwear; bonnets [headwear]; casualwear; leotards; dress pants; suits; women’s suits; men’s suits; suit coats; morning coats; knit jackets; millinery; shawls; head scarves; bathing suits; dance costumes; skirt suits; bathing costumes for women; bathing suits for men; fitted swimming costumes with bra cups; pantsuits; ponchos; stockings; hosiery; stocking suspenders; blousons; hooded tops.

 

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or 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.

 

Clothing and footwear are identically contained in both lists of goods.

 

The contested hats; miters [hats]; visors [headwear]; thermal headgear; caps [headwear]; leather headwear; children’s headwear; bonnets [headwear]; millinery; head scarves are included in the broad category of the opponents’ headgear. Therefore, they are identical.

 

The contested slip-on shoes; canvas shoes; boots for sports; leather shoes; footwear for women; dance shoes; running shoes; dress shoes; ladies’ boots; shoes with hook and pile fastening tapes; bath shoes; half-boots; tap shoes; booties; high-heeled shoes; flat shoes; sandals and beach shoes; walking shoes  are included in the broad category of the opponents’ footwear. Therefore, they are identical.

 

the contested twin sets; kerchiefs [clothing]; gym suits; clothing for gymnastics; clothing made of fur; tops [clothing]; muffs [clothing]; clothing for skiing; baby clothes; children’s wear; belts [clothing]; maternity clothing; menswear; roll necks [clothing]; loungewear; sportswear; evening wear; leisurewear; knitwear [clothing]; jackets [clothing]; jerseys [clothing]; gloves [clothing]; linen clothing; silk clothing; surfwear; girls’ clothing; dance clothing; woolen clothing; plush clothing; weatherproof clothing; ear muffs [clothing]; shorts; ready-made clothing; combinations [clothing]; furs [clothing]; mufflers [clothing]; denims [clothing]; slips [undergarments]; leather clothing; running suits; playsuits [clothing]; quilted jackets [clothing]; nightwear; boys’ clothing; three piece suits [clothing]; layettes [clothing]; leather belts [clothing]; formal evening wear; outerclothing; boas [necklets]; veils [clothing]; babies’ pants [clothing]; jogging sets [clothing]; corsets; outerclothing for girls; womens’ outerclothing; bottoms [clothing]; slipovers [clothing]; shoulder wraps [clothing]; bandeaux [clothing]; clothing of imitations of leather; outerclothing for men; arm warmers [clothing]; short sets [clothing]; articles of clothing for theatrical use; sports clothing [other than golf gloves]; underwear; long johns; disposable underwear; lingerie; thermal underwear; boy shorts [underwear]; babies’ undergarments; ladies’ underwear; teddies [undergarments]; foundation garments; camiknickers; body stockings; trousers; tracksuit bottoms; over-trousers; corduroy trousers; trousers for children; culotte skirts; short trousers; jodhpurs; pajama bottoms; stretch pants; golf pants, shirts and skirts; men’s and women’s jackets, coats, trousers, vests; skirts; sundresses; maternity smocks; women’s ceremonial dresses; gaiters; shirts; dress shirts; casual shirts; nighties; shirts for suits; polo shirts; printed t-shirts; tank tops; baby tops; sports jerseys and breeches for sports; casualwear; leotards; dress pants; suits; women’s suits; men’s suits; suit coats; morning coats; knit jackets; shawls; bathing suits; dance costumes; skirt suits; bathing costumes for women; bathing suits for men; fitted swimming costumes with bra cups; pantsuits; ponchos; stockings; hosiery; stocking suspenders; blousons; hooded tops are included in the broad category of the opponents’ clothing. Therefore, they are identical.

 

The contested bra straps are included in the broad category of the opponents’ accessories for clothing, since the contested goods can be bought independently as accessories, e.g. transparent bra straps. Therefore, they are identical.

 

The contested gussets [parts of clothing] are pieces of fabric inserted into a seam for added breadth and/or less stress from tight-fitting clothes, e.g. at the underarms of shirts. They are similar to the opponents’ fastenings for clothing in Class 26. The goods can serve a similar purpose of adjusting tight-fitting clothing to the human body and they are directed at the same public of professionals in the clothing industry. Furthermore, the distribution channels can coincide and the goods can be in competition with each other.

 

 

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, while the goods found to be similar are directed at business customers with specific professional knowledge or expertise. The degree of attention is considered to be average.

 

 

3. The signs

 

 

 

RENA LANGE
Earlier trade mark	Contested sign

 

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 Italian-speaking part of the relevant public.

 

The earlier mark is a word mark. In the case of word marks it is the word as such that is protected and not its written form. Therefore, it is immaterial if a word mark is written in upper- or lower-case letters.

 

The contested sign is a figurative mark. It consists of the verbal element ‘LaRena’ in white standard letters on a black rectangle.

 

The earlier mark has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

 

As regards the contested sign, it is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature (black rectangle). Therefore, the verbal element is more distinctive than the figurative element.

 

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

 

Visually, the signs coincide in the string of letters ‘Rena’. However, they differ in the second verbal element ‘LANGE’ in the earlier mark and the letters ‘La’ as well as the black rectangle in the contested sign.

 

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

 

Therefore, the signs are similar to an average degree.

 

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛RENA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛LANGE’ of the earlier sign and ‘LA’ of the contested mark. While the sounds of the letters ‘LA’ are present in both signs, they are placed in different positions. While the earlier mark consists of four syllables, the contested mark has three syllables.

 

Therefore, the signs are similar to an average degree.

 

Conceptually, the public in the relevant territory will perceive the contested sign as ‘The Sand’ and the meaning of ‘sand’ is equally contained in the first verbal element of the earlier mark. This concept is distinctive for the relevant goods. The second verbal element of the earlier mark has no meaning for the relevant public. As the signs will be associated with a very similar meaning, the signs are conceptually highly similar.

 

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 opponents did not explicitly claim that their 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

 

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).

 

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.

 

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).

 

The goods under comparison are identical or similar. The relevant Italian-speaking public has a normal degree of attention when purchasing these goods.

 

The signs are visually and aurally similar to an average degree and conceptually they are highly similar. Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the coinciding element ‘Rena’ plays an independent distinctive role in both signs. In fact, in the contested sign the coinciding element is only preceded by the Italian definite article ‘La’, which does not have much of an impact on the conceptual perception of the mark. Likewise, the impact of the figurative element of the contested sign is very limited. Therefore, the major difference between the signs is the second verbal element ‘LANGE’ of the earlier mark. However, this element is in second position following the coinciding element ‘RENA’ which attracts the consumer’s attention due to its position at the beginning of the sign.

 

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).

 

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

 

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings because the signs are not comparable. In case T-385/09 ‘ANN TAYLOR LOFT’/’LOFT’ the differing elements ‘ANN TAYLOR’ are deemed to be the most distinctive elements for the relevant French public. In case T-222/09 ‘ALPHAREN’/’ALPHA D3’ the coinciding element ‘ALPHA’ did not constitute a separate element in the contested sign, whereas in the case at hand the coinciding element ‘Rena’ (meaning ‘sand’) was merely combined with the corresponding Italian definite article ‘La’ to form the contested sign ‘LaRena’. Finally, in case T-194/09 ‘LINEAS AEREAS DEL MEDITERRANEO LAM’/’LAN’ the similar elements ‘LAM’ and ‘LAN’ are very short elements where even rather small differences are easily perceived and one of the marks has four additional verbal elements.

 

Furthermore, the applicant argues that the opposition is not substantiated. However, with regard to the European Union trade mark registration No 12 674 917 the opponents did not have to file any supporting documents, as the Opposition Division has all the relevant information in the Office’s database (see Guidelines for Examination in the Office, Part C, Opposition, p.34).

 

Finally, the applicant refers to the total transfer of the European Union trade mark registration No 12 674 917 and claims that the opponent is no longer the proprietor of this mark. According to the Office’s guidelines, when an opposition is based on more than one earlier European Union trade mark and only one earlier European Union trade mark is transferred, the new proprietor will be added as the second opponent (see Guidelines for Examination in the Office, Part C, Opposition, p.81).

 

Considering all the above, there is a likelihood of confusion on the part of the Italian-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 12 674 917. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the earlier European Union trade mark registration leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier mark invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

 

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.

 

 

 

 

The Opposition Division

 

 

Francesca CANGERI SERRANO

Beatrix STELTER

Begoña URIARTE VALIENTE

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.