OPPOSITION No B 761 082

El Corte Ingles, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 – 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Lloyd Shoes GmbH, Hans-Hermann-Meyer-Str. 1, 27232 Sulingen, Germany (applicant), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative).

On 18/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 761 082 is partially upheld, namely for the following contested goods:

Class 3: Perfumery and cosmetics.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes.

2.        European Union trade mark application No 3 580 991 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 25: Clothing, footwear, headgear.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 3 580 991. The opposition is based on, inter alia, European Union trade mark registration No 2 957 132. In relation to this earlier right, the opponent invoked Article 8(1)(b) EUTMR. The opponent also invoked Article 8(5) EUTMR in relation to Spanish trade mark registration No 2 193 662.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

The opposition is based on, inter alia, the following earlier rights:

1. Spanish trade mark registration No 1 593 580 for the figurative mark , filed on 16/10/1990 and registered on 05/10/1994 for goods in Class 18. The last renewal was requested by the opponent in 2000 and was granted on 24/04/2001.

2. Spanish trade mark registration No 2 193 662 of the figurative mark , filed on 04/11/1998 and registered on 05/04/1999 for goods in Class 25.
3. Spanish trade mark registration No 2 193 661 of the figurative mark , filed on 04/11/1998 and registered on 05/04/1999 for goods in Class 18.
4. Spanish trade mark registration No 1 599 505 of the figurative mark , filed on 14/11/1990 and registered on 05/11/1993 for goods in Class 25. The last renewal was requested in 2000 and was granted on 18/06/2001.
5. Spanish trade mark registration No 2 193 659 of the figurative mark , filed on 04/11/1998 and registered on 30/10/2000 for goods in Class 14.

In the present case, the opponent filed evidence (extracts from the Spanish official online database, extracts from the official bulletin as well as relevant translations in English) as regards the mentioned earlier trade marks together with the notice of opposition filed on 26/11/2004.

On 12/05/2006 the opponent was given two months, commencing after the ending of the cooling-off period (30/01/2007), to submit the abovementioned material. This time limit expired on 30/03/2007. The opponent filed some evidence and observations on 29/03/2007 and did not submit any additional evidence concerning the substantiation of the Spanish trade marks. However, it was not necessary, as all the above-mentioned Spanish trade marks were valid at the time of substantiation.

During the course of the proceedings, however, all the mentioned earlier rights became due for renewal. Therefore, the Opposition Division sent a notification to the opponent on 03/02/2017, asking it to submit evidence of the renewal of all the earlier Spanish trade marks within a period of two months. This time limit expired on 08/04/2017. The opponent did not submit any evidence concerning the renewal of the mentioned earlier trade marks.

Consequently, in the absence of evidence of renewal of the earlier registrations, it is not possible for the opposition to proceed on the basis of these earlier rights. The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

The opposition will proceed in relation to the remaining earlier right on which the opposition is based, namely European Union trade mark registration No 2 957 132 for which 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.

1. The goods

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes, excluding leather used for making footwear; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

The contested goods are the following:

Class 3: Perfumery and cosmetics.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes.

Class 25: Clothing, footwear, headgear.

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.

Contested goods in Class 3

The contested perfumery and cosmetics are identically contained in both lists of goods.

Contested goods in Class 18

The contested imitations of leather, and goods made of these materials (leather and imitations of leather) and not included in other classes are identically contained in both lists of goods.

The contested leather includes, as a broader category the opponent’s leather, excluding leather used for making footwear. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 25

The contested clothing, footwear, headgear are not similar to the opponent’s goods in Classes 3, 14 and 18.

The contested clothing, headgear and footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The opponent’s goods in Class 3 are used for cleaning, beautifying, polishing, bleaching, scouring, etc. various surfaces, textiles, people, etc. The opponent’s goods in Class 14 are goods such as precious metals and their alloys, jewellery and time-measuring instruments. The opponent’s goods in Class 18 cover raw materials such as leather and imitations thereof, skins of various kinds of animals (or imitations thereof), travelling bags, umbrellas, walking sticks, saddlery, etc.

The compared sets of goods differ in nature and purpose. The relevant public and distribution channels may be quite distinct or they are sold in different (sections of) outlets. Their producers are normally different and these goods are not in competition or complementary.

For example, luxury goods such as jewellery covered by the opponent’s goods in Class 14 are considered dissimilar to the contested clothing, footwear and headgear, as their nature and main purpose are different. The main purpose of clothing is to dress the human body, whereas jewels are for personal adornment. They do not have the same distribution channels and are neither in competition, nor complementary. The same reasoning applies to luxury goods such as the opponent’s perfumes in Class 3 – the main purpose of which is to impart scent to the body, stationery, etc. – and to goods such as the opponent’s travelling bags in Class 18 which are for carrying things when travelling. Even though some fashion designers nowadays also sell perfumes, fashion accessories (such as jewellery) and travel accessories under their marks, this is not the rule; it tends to apply only to (commercially) successful designers.

Furthermore, the opponent’s leather and imitations of leather; animal skins and hides in Class 18 refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for clothing) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the contested clothing, headgear and footwear.

The opponent’s trunks in Class 18 are large packing cases or boxes that clasp shut, used as luggage or for storage; umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; walking sticks are canes or other staffs used as aids for walking; whips are instruments used for driving animals; harnesses are the gear or tackle with which a draft animal pulls a vehicle or implement; and saddlery is equipment for horses, such as saddles and harnesses. The nature of these goods is very different from that of the contested clothing, headgear and footwear in Class 25. They serve very different purposes (storage, protection from rain/sun, assistance with walking, aid in the control and/or riding of animals versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers.

Finally, as regards the opponent’s term goods made of these materials [leather and imitations of leather] and not included in other classes in Class 18, in light of the need for clarity and precision, this term does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and therefore relate to different market sectors. Consequently, although one can vaguely try to describe the meaning of the goods, in the present case their natural meaning cannot be sufficiently identified. As stated in the Guidelines on Comparison of Goods and Services, where the Office is unable to clearly determine the exact scope of protection of vague terms, the vagueness of the wording is not a sufficient basis in itself for arguing in support of identity or similarity.  

When comparing goods made of these materials [leather and imitations of leather] and not included in other classes to the contested clothing, footwear, headgear, their nature cannot be considered the same in the absence of an express limitation by the opponent clarifying the vague term. As such, it cannot be considered that they are produced by the same companies, that they share the same distribution channels, that they are in competition, have the same method of use or that they could target  the same consumers. Consequently, these goods are considered dissimilar. 

Therefore, for all of the above reasons, it is considered that the opponent’s goods in Classes 3, 14 and 18 are dissimilar to the contested goods in this class.

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 (for example, cosmetics, perfumery, etc.) and at professionals with specific knowledge or expertise (for example, in relation to raw materials such as leather and imitations of leather). The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

	LLOYD 1888
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘LLOYD’ is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the Spanish-, Italian- and Bulgarian-speaking part of the public.  

The earlier mark is a figurative mark and consists of a blue bird placed above the left part of the word ‘LLOYD’S’, which is written in rather standard red uppercase letters, the first letter ‘L’ and the fourth letter, ‘Y’ being slightly higher than the remaining letters. The contested sign is a word mark and consists of the word and number combination ‘LLOYD 1888’.

The verbal elements ‘LLOYD’ and ‘LLOYD’S’ included in the signs have no meaning in the relevant territories and their inherent distinctiveness in normal in relation to the goods. Likewise, since the bird depiction of the earlier mark has no specific descriptive or otherwise weak meaning in relation to the relevant goods, its inherent distinctive character is normal. The number ‘1888’ of the contested sign will be perceived as a year, and as such could be seen as an indication of the year of establishment of the business, or as a reference to a certain style associated with that year. Therefore, this element is weak for the relevant goods.

As regards the figurative elements of the earlier mark (such as the slight stylisation of the letters, colours and the bird device), account must be taken that 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).

The signs have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the distinctive element ‘LLOYD’, which represents the initial and most distinctive element of the contested sign and nearly the entirety of the verbal element of the earlier mark. The differences in the signs are in the second and weak element ‘1888’ of the contested sign and, as regards the earlier mark, in the apostrophe and the final letter ‘S’, which are however visually separated from ‘LLOYD’ that precedes them. In addition, the signs differ in the figurative elements of the earlier mark (the font, the bird device and the colours). Consequently, taking into account the fact that the coincidences between the signs are in their beginning and in a distinctive element, as well as the certain visual differences and their respective weight, it is concluded that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive verbal element ‘LLOYD’ and differs in the sound of the final letter ‘S’ in the earlier mark and the sound of ‘1888’ of the contested sign. However, bearing in mind that the element ‘1888’ is weak and will be attributed less weight by the public, it is considered that the signs are aurally similar to a high degree.

The concepts of the signs have been defined above. As mentioned, the earlier sign will be associated with the concept of a bird and the contested sign with the concept of a year. Therefore, since the signs will be associated with different meanings, they 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 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 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

The contested goods are partly identical and partly dissimilar to the opponent’s goods. The relevant goods are directed at the public at large and at professional consumers, whose degree of attention may vary from average to high.

The similarities between the signs are on account of the common and normally distinctive element ‘LLOYD’, which constitutes the first five letters (out of six) of the only verbal element of the earlier mark and the most distinctive and first verbal element of the contested sign.

While it is indeed true that the signs differ in certain aspects, especially from a conceptual point of view, this difference is not of decisive importance. As follows from case law, two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (judgment of 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (judgment of 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

Bearing in mind that the 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), it is considered that there is a risk of likelihood of confusion/association between the marks even in relation to identical goods.

This is because the coincidence between the signs is in a distinctive element and the differences are in less important or less noticeable elements (such as the ‘S at the end of the earlier mark, the device of a bird and the remaining figurative elements of the earlier mark that are normally paid less attention as compared to verbal elements, or the weak ‘1888’ of the contested sign).

It is conceivable that the relevant consumer will perceive the mark applied for 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). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-, Italian- and Bulgarian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Anna MAKOWSKA

Liliya YORDANOVA

Gueorgui IVANOV

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.