OPPOSITION No B 2 666 777

Lyle & Scott Limited, Liddesdale Road, Hawick TD9 0ER, United Kingdom (opponent), represented by Desmond Burley, 23 Catherine Drive, Sutton Coldfield, Birmingham B73 6AX, United Kingdom (professional representative)

a g a i n s t

Durmus Avci, Leepfad 3, 53424 Remagen, Germany (applicant), represented by Burkhard Renner, Hohenstaufenring 64 Rechtsanwaltskanzlei, 50674 Köln, Germany (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 666 777 is upheld for all the contested goods, namely:

Class 18:        Luggage, bags, wallets and other carriers.

Class 25:        Clothing; headgear; footwear; hats.

2.        European Union trade mark application No 14 827 638 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 827 638 for the figurative mark , namely against all the goods in Classes 18 and 25. The opposition is based on, inter alia, European Union trade mark registrations No 16 972 and No 3 657 608, both for the word mark ‘LYLE & SCOTT’. The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) and (4) EUTMR.

PROOF OF USE

The applicant states in his observations, received on 30/11/2016, that the opponent has not proven that the earlier marks on which it relies were used as registered, because the verbal elements ‘LYLE & SCOTT’ are not used ‘in a solitary manner’ (sic) but together with a ‘stylised yellow eagle’. However, according to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

The request for proof of use must be expressed in positive wording. As use or non-use can be an issue in several respects (e.g. to invoke or deny a higher degree of distinctiveness of an earlier mark), mere observations or remarks by the applicant in respect of the (lack of) use of the opponent’s mark are not sufficiently explicit and do not constitute a valid request for proof of genuine use (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102). Since the applicant’s statement is not an explicit and unambiguous request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade marks had been put to genuine use.

In his observations, the applicant also states that ‘the opponent’s mark must be cancelled because of non-use’, referring to Article 15(1) EUTMR, which provides that ‘If, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use’. As the opponent correctly points out, the applicant’s request for cancellation is not relevant to these proceedings and must be set aside.

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:        Articles made wholly or principally of leather or of imitation leather and goods made of these materials not included in other classes; trunks and travelling bags; luggage; holdalls; handbags; key-cases, wallets, purses, briefcases; belts; carriers (luggage) for clothing; attaché cases; cheque-book holders; passport-holders; credit-card holders; umbrellas, parasols; walking sticks.

Class 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 18:        Luggage, bags, wallets and other carriers.

Class 25:        Clothing; headgear; footwear; hats.

Contested goods in Class 18

Luggage, wallets are identically contained in both lists of goods.

The contested bags include, as a broader category, the opponent’s travelling bags. 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 other carriers overlap with the opponent’s carriers (luggage) for clothing. Therefore, they are identical.

Contested goods in Class 25

Clothing; headgear; footwear are identically contained in both lists of goods.

The contested hats are included in the broad category of the opponent’s headgear. 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 considered average.

3. The signs

LYLE & SCOTT
Earlier trade marks	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.

A significant part of the relevant public will not know that ‘Lionel’ is an unusual male given name with a Latin origin, which is predominantly used in English and French and means ‘young lion’. The consumers who grasp this meaning in the root of this name could associate it with the figurative element of the contested sign depicting a lion, which is a distinctive element for the goods found to be identical. The first elements of the signs, namely ‘LYLE’ of the earlier marks and ‘LIONEL’ of the contested sign, would therefore be more easily distinguishable for those consumers. Another part of the public is more prone to being confused, namely consumers who will perceive the first verbal elements of the signs, ‘LYLE’ and ‘LIONEL’, as foreign names without identifying any other meaning relating to their roots. For example, Bulgarian-speaking consumers will not perceive any other meaning in the names ‘LYLE’ and ‘LIONEL’ because they are not common in Bulgaria. However, it cannot be excluded that a part of the Bulgarian public will perceive ‘SCOTT’ as a surname (or, less probably, as a given name) of Scottish origin. Therefore, Bulgarian-speaking consumers may believe that all the names in the signs have the same Scottish origin or at least that they are all foreign. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-speaking part of the public.

The ampersand symbol in the earlier marks merely represents the conjunction ‘and’, and is commonly used in trade; its function is only to link the two elements ‘LYLE’ and ‘SCOTT’ of the earlier marks. Therefore, its distinctiveness is limited, although it denotes the equal importance and value of these two elements, indicating that both are given names or both are surnames.

Neither of the signs has any element that could be considered clearly more dominant than others.

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). Therefore, the public would refer to the mark in the first instance by the elements ‘LIONEL SCOTT’ of the contested sign, before describing the lion or the typographical stylisation.

Visually, the signs mainly coincide in their first letter, ‘L’, and in their last verbal element, namely ‘SCOTT’. The last two letters of their first verbal elements, namely the letters ‘LE’ in the earlier marks and ‘EL’ in the contested sign, also coincide, although to a much lesser extent because they are in reverse order. The lengths of the signs are also similar, as the earlier marks contain 9 letters and an ampersand and the contested sign contains 11 letters. However, they differ in their second letters, ‘Y’ in the earlier marks and ‘I’ in the contested sign, in the order of the last two letters of their first verbal elements and in elements that have a limited impact, namely the ampersand in the earlier marks and the figurative elements of the contested sign. The signs also differ in that the earlier marks have three verbal elements and the contested sign has only two.

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

Aurally, the pronunciation of the signs coincides in the sound of their first letter, ‘L’, and in their last verbal element, namely ‘SCOTT’, present identically in the signs. Although Bulgarian does not use Latin characters, the second letters of the signs, namely ‘Y’ in the earlier marks and ‘I’ in the contested sign, will be aurally identical (and therefore the first syllables of the marks will be pronounced /LI-/). The pronunciation differs in the sound of the ampersand in the earlier marks; this will be pronounced ‘и’, which is equivalent to the sound /i/. The signs also differ in the second syllable, /LE/, of the earlier marks and in the second and third syllables, /O-NEL/, of the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs include the same name, ‘SCOTT’, the signs are conceptually similar to an average degree.

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 marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. 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 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, despite the presence of a weak element in the marks as stated above in section c) of this decision.

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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical and are directed at the public at large, whose degree of attention is average. The signs are visually, aurally and conceptually similar to an average degree.

Moreover, 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). Therefore, in the present case, the identity between the goods increases the risk of confusion between the signs.

Account must also be 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). In the present case, there is a likelihood of confusion because the differences between the signs are not sufficient to offset the similarities.

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, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In his observations, the applicant argues that the earlier trade marks have a low degree of distinctive character given that there are many trade marks that include the element ‘SCOTT’ for identical or similar goods in various classes, such as Classes 18 and 25; some of them are even composed of a first name beginning with ‘L’ and the second name ‘SCOTT’, such as ‘Laura Scott’ and ‘L’Wren Scott’. In support of his argument, the applicant refers to several trade mark registrations in Germany.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘SCOTT’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-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 registrations No 16 972 and No 3 657 608. 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 marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

As earlier European Union trade mark registrations No 16 972 and No 3 657 608 lead 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) EUTMR.

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, he 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

Boyana NAYDENOVA

Benoit VLEMINCQ

Pedro JURADO MONTEJANO

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.