OPPOSITION No B 2 702 325

Charles Claire LLP, Ember House, 35-37 Creek Road, East Molesey, Surrey KT8 9BE, United Kingdom (opponent), represented by Briffa, Business Design Centre, 52 Upper Street, Islington, London N1 0QH, United Kingdom (professional representative)

a g a i n s t

Andre Deray, 16 Rue Des Hauts Guibouts, 94360 Bry Sur Marne, France (applicant).

On 10/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 702 325 is upheld for all the contested goods, namely:

Class 18:        Luggage, bags; umbrellas and parasols.

Class 25:        Clothing.

2.        European Union trade mark application No 15 064 462 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 064 462, namely against some of the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 230 375. The opponent invoked Article 8(1)(b) EUTMR.

The opponent filed an opposition initially against all of the goods of the European Union trade mark application. After a limitation by the opponent, the opposition is now directed against only some of the goods in Classes 18 and 25.

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.

1. The goods

The goods on which the opposition is based are the following:

Class 18:        Golf umbrellas.

Class 28:        Golf clubs and parts thereof, namely clubheads, shafts, grips; covers for golf heads (headcovers), golf balls, golf tees; golf bags, caddy bags; golf gloves.

The contested goods are the following:

Class 18:        Luggage, bags; umbrellas and parasols.

Class 25:        Clothing.

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.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 18

The contested umbrellas include, as a broader category, the opponent’s golf umbrellas. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested parasols have the same nature and purpose as the opponent’s golf umbrellas. They can have the same distribution channels and target the same public; they also coincide in their producers. Therefore, they are similar.

The contested luggage, bags have the same purpose (carrying things) and nature as the opponent’s golf bags, caddy bags. They can also have the same distribution channels and producers. One can buy a bag in the same store and with the same brand as a golf bag. Therefore, they are similar.

Contested goods in Class 25

Clothing includes sports clothing, which is items of apparel designed specifically to be worn when doing sport. The purpose and nature of these goods are different from those of sporting and gymnastic articles, which are articles and apparatus for all types of sports and gymnastics, such as weights, halters, tennis rackets, balls and fitness apparatus. However, undertakings that manufacture sporting and gymnastic articles may also manufacture sports clothing. In this case the distribution channels can be the same. Therefore, there is a low degree of similarity between sports clothing and sporting and gymnastic articles.

The contested clothing may have the same manufacturer and distribution channels as the opponent’s golf gloves, which are sporting articles. Therefore, they are similar to a low degree.

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 or similar are directed at the public at large.

3. The signs

TIGRESS	LILI LA TIGRESSE
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. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in the United Kingdom.

The elements ‘TIGRESS’ in the earlier mark and ‘TIGRESSE’ in the contested sign will be understood by the relevant public as meaning a female tiger. As these elements are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive. The word ‘LILI’ in the contested sign will be understood as a female name and is as distinctive as the word ‘TIGRESSE’ in that sign. The word ‘LA’ in the contested sign will be understood as an article and will therefore be weak.

Neither the earlier mark nor the contested sign has any elements that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the letters ‘TIGRESS*’, which constitute the whole of the earlier mark and are included in the contested sign. However, they differ in the words ‘LILI’ and ‘LA’ at the beginning of the contested sign and the letter ‘E’ at the end of the (coinciding) word ‘TIGRESS’ of the contested sign, which have no counterparts in the earlier mark.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as including the concept of a female tiger, the signs are conceptually highly similar. For the part of the public that will perceive ‘LILI’ in the contested sign as referring to a female name, this word will only help to reinforce the concept of a female tiger.

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 opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Initially, the opponent claimed a reputation in accordance with Article 8(5) EUTMR; this claim was later withdrawn.

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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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).

The contested goods are partly identical, partly similar and partly similar to a low degree to the opponent’s goods. The earlier mark has a normal degree of distinctiveness and the degree of attention of the public is average.

The signs are conceptually highly similar, since both marks refer to a female tiger, and they are visually and aurally similar to an average degree, since both marks contain the word ‘TIGRESS’, which forms the entirety of the earlier mark and is included in the contested sign.

As explained in section c) above, the differing elements in the contested sign, namely the additional words ‘LILI’ and ‘LA’ and the additional letter ‘E’ at the end of the coinciding word, are per se not sufficient to counteract the commonalities between the marks, and are insufficient to exclude a likelihood of confusion for similar or identical goods.

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).

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 covered are from the same or economically linked undertakings. This is also the case for the goods and services that are similar to only a low degree, because of the significant similarities between the signs.

Based on the principle of imperfect recollection, it is considered that the similarities between the signs are sufficient to make at least part of the public believe that the similar or identical goods come from the same undertaking or economically linked undertakings. Considering all of 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 230 375. It follows that the contested trade mark must be rejected for all the contested goods.

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

Claudia MARTINI

Magnus ABRAMSSON

Sigrid DICKMANNS

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.