OPPOSITION No B 2 725 664

Siemes Schuhcenter GmbH & Co. KG, Krefelder Str. 310, 41066 Mönchengladbach, Germany (opponent), represented by Leifert & Steffan, Burgplatz 21-22, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

Lek Och Rörelse Holding i Luleå AB, Köpmagatan 46, 97233 Luleå, Sweden (applicant), represented by Ports Group AB, Kalkylvägen 3, 435 33 Mölnlycke, Sweden (professional representative).

On 17/10/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 725 664 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against part of the goods and services of European Union trade mark application No 15 273 741, namely against all the goods in Class 25, which now constitute all the goods of the application following the limitation of the initial list of goods and services. The opposition is based on, inter alia, German trade mark registration No 302 012 030 994 for the word mark ‘LEONE’ and the Benelux trade mark registration No 910 475 for the word mark ‘LEONE’. 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 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 German trade mark registration No 302 012 030 994 and the Benelux trade mark registration No 910 475.

1. The goods

The goods on which the opposition is, inter alia, based are the following:

German trade mark registration No 302 012 030 994

Class 25: Heels, heelpieces for boots and shoes, suits, bath sandals, bath slippers, berets, motorists’ clothing, clothing, frocks, inner soles, pocket squares, mittens, football shoes, belts (clothing), gymnastic shoes, half-boots, cravats, gloves (clothing), slippers, blouses, shirts, slips (undergarments), wooden shoes, trousers, suspenders, hats, jackets (clothing), jerseys (clothing), stuff jackets (clothing), skull caps, hoods (clothing), pockets for clothing, ready-made clothing, headgear for wear, headscarves, neckties, ascots, clothing of leather, coats, pelisses, dressing gowns, muffs (clothing), caps (headwear), outer clothing, ear muffs (clothing), combinations (clothing), parkas, pelerines, furs (clothing), petticoats, pullovers, waterproof clothing, skirts, sandals, saris, scarves, sashes for wear, lace boots, fittings of metal for shoes and boots, shoes, footwear, dress shields, ski boots, underpants, socks, boots for sports, sports shoes, boots, headbands (clothing), esparto shoes or sandals, fur stoles, studs for football boots (shoes), beach clothes, beach shoes, stockings, stockings (sweat-absorbent), tights, sweaters, handkerchiefs of textile, togas, knitwear (clothing), singlets, tee-shirts, neckerchiefs in particular breast-pocket handkerchiefs; overcoats, pants, underwear, waistcoats, hosiery.

Benelux trade mark registration No 910 475

Class 25: Heels; heelpieces for boots and shoes; suits; bath sandals; bath slippers; berets; motorists’ clothing; clothing; frocks; inner soles; pocket squares; mittens; football shoes; belts (clothing); gymnastic shoes; half-boots; cravats; gloves (clothing); slippers; blouses; shirts; slips (undergarments); wooden shoes; trousers; suspenders; hats; jackets (clothing); jerseys (clothing); stuff jackets (clothing); skull caps; hoods (clothing); pockets for clothing; ready-made clothing; headgear for wear; headscarves; neckties; ascots; clothing of leather; coats; pelisses; dressing gowns; muffs (clothing); caps (headwear); outer clothing; ear muffs (clothing); combinations (clothing); parkas; pelerines; furs (clothing); petticoats; pullovers; waterproof clothing; skirts; sandals; saris; scarves; sashes for wear; lace boots; fittings of metal for shoes and boots; shoes; footwear; dress shields; ski boots; underpants; socks; boots for sports; sports shoes; boots; headbands (clothing); esparto shoes or sandals; fur stoles; studs for football boots (shoes); beach clothes; beach shoes; stockings; stockings (sweat-absorbent); tights; sweaters; handkerchiefs of textile; togas; knitwear (clothing); singlets; tee-shirts; neckerchiefs in particular breastpocket handkerchiefs; overcoats; pants; underwear; waistcoats; hosiery.

The contested goods are the following:

Class 25: Clothing; children's wear; headgear; pants; vests; jogging sets [clothing]; headgear; stockings; gowns; skirts; jackets [clothing]; mufflers [clothing]; shifts; tee-shirts.

Contested goods in Class 25

The contested clothing; tee-shirts; headgear are identically included in the opponent’s lists of goods covered by both earlier marks (including synonyms).

Children's wear; pants; vests; jogging sets [clothing]; stockings; gowns; skirts; jackets [clothing]; mufflers [clothing]; shifts are included in the broad category of the opponent’s clothing covered by both earlier marks. 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

LEONE	LEO’S
Earlier trade marks	Contested sign

The relevant territories are Germany and the Benelux.

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).

For the German and Dutch speaking public the element ‘LEONE’ of the earlier mark has no meaning and is, therefore, distinctive. The French speaking public will perceive the element ‘LEONE’ of the earlier mark as a female first name; ‘Léone’. Therefore, it has no meaning in relation to the goods in question and has an average degree of distinctiveness.

The element ‘LEO’ of the contested sign will be understood by the relevant public as male first name and part of the public, at least, will perceive the apostrophe together with the letter ‘S’ as a genitive, thus indicating the possessive form. The signs and its components have an average degree of distinctiveness in relation to the goods.

Visually, the signs coincide in the first three letters ‘LEO’. However, they differ in ‘NE’ of the earlier marks and the apostrophe and the letter ‘S’ placed at the end of the contested sign. In this respect the Opposition Division notes that the shorter a sign, the more easily the public is able to perceive all of its single elements, and even small differences can lead to a different overall impression.

Therefore, the signs are similar to a low degree as the signs in question are relatively short.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LEO’, present identically in both signs. The pronunciation differs in the sound of the letters ‛NE’ in German and Dutch and ‘N’ in French (as the final letter ‘E’ will be mute) of the earlier sign and in the sound of letter ‘S’ of the contested mark.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, as they refer to different first names, in case of the French speaking public, the signs are conceptually not similar.

With regard to the Dutch and German speaking public although this part of the public will perceive the meaning of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the contested goods are identical to the opponent’s goods and they target the public at large whose degree of attention is average.

The signs are relatively short. They are visually and aurally similar to the extent that they have the letters ‘LEO’ in common but they differ for the remainder. For the Dutch and German-speaking public, the earlier sign does not convey any concept and will be perceived as a fanciful word whereas the contested sign will be perceived as a name declined in the possessive form. The French speaking public will associate the signs with different names. Therefore, the marks have no concept in common that would lead the public to associate one with the other. In this respect, it must be taken into account that the existence of conceptual differences between signs can counteract the visual and phonetic similarities between them when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping immediately (14/10/2003, T-292/01, ‘Bass’, § 54). In view of the foregoing, it is considered that the contested sign is not likely to bring the earlier sign to the minds of the consumers, even in relation to identical goods.

The opponent 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 its submissions the opponent refers to the following earlier Office decisions: B 1 805 194 (‘ZYPOS’ versus ‘ZYPRO’), B 1 782 666 (‘JOBIS’ versus ‘JOBBY’), B 1 150 186 (‘KANZI’ versus ‘KANIT’) and R 2303/2010-1 (‘NOKIA’ versus ‘NOKAS’).

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings as in all the previous cases the conceptual comparison bore no influence the assessment of similarity of the signs.

Considering all the above, there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark: German trade mark registration No 30 453 917 for the word mark ‘LEONE’. Since this mark is identical to the ones that have been compared and covers the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Steve HAUSER

Katarzyna ZANIECKA

Martina GALLE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.