OPPOSITION No B 778 367

El Corte Inglés, S.A., Hermosilla, 112 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56-1ºizda 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 24/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 778 367 is upheld for all the contested goods.

2.        European Union trade mark application No 3 605 251 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 3 605 251. The opposition is based on, inter alia, European Union trade mark registration No 2 957 132 and Spanish trade mark registration No 2 193 662. The opponent invoked Article 8(1)(b) EUTMR and, in relation to Spanish registration No 2 193 662, also Article 8(5) 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 2 957 132 and Spanish trade mark registration No 2 193 662.

1. The goods

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

European Union trade mark registration No 2 957 132

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.

Spanish trade mark registration No 2 193 662

Class 25: Clothing for men, women and children; hats; ties; scarves and wearing belts; stockings and socks, except shoes.

The contested goods are the following:

Class 3: Perfumery and cosmetics.

Class 18: Leather and imitations of leather, 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 in Class 3 are identically contained in the list of goods of the opponent’s European Union trade mark.

Contested goods in Class 18

The contested leather and imitations of leather, goods made of these materials and not included in other classes are included in leather and imitations of leather, and goods made of these materials and not included in other classes, excluding leather used for making footwear of the opponent’s European Union trade mark; therefore, they are identical.

Contested goods Class 25

The contested clothing includes, as a broader category, clothing for men, women and children of the opponent’s Spanish mark. 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 headgear includes, as a broader category, the opponent’s hats. 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 footwear is similar to the opponent’s clothing for men, women and children in Class 25, as they have the same purpose. They may also have the same producers, end users and distribution channels.

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 and similar are directed at the public at large.

For example, as regards the identical goods in Class 25, the Court has held that ‘clothing for men and women are everyday consumer items and the trade mark on which the opposition is based is registered is a Community trade mark. It follows that the relevant public by reference to which the likelihood of confusion must be assessed is composed of the general public in the European Union’ (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 25). The relevant public will display an average degree of attention.

3. The signs

1) Spanish trade mark registration No 2 193 662

2) European Union trade mark registration No 2 957 132

Earlier trade marks	Contested sign

The relevant territory is the European Union as regards earlier mark 2 and Spain as regards earlier mark 1.

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. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

Earlier mark 1 is a figurative mark composed of the word ‘LLOYD’S L’ in standard characters and surrounded by circles resembling orbits and planets. In relation to fashion clothing, the letter ‘L’ could be perceived as the size of an article (i.e. large) and therefore this element could be perceived as descriptive.

Earlier mark 2 is a figurative mark that consists of the word ‘LLOYD’S’ in orange letters and a depiction of a blue bird, which appears above the first three letters of ‘LLOYD’S’.

The contested sign is a figurative mark consisting of a figurative element depicting a fanciful heraldic shield, with the letters ‘LLOYD’ and the numbers ‘1888’ underneath. All the elements are in black and white.

Neither of the earlier marks contains any element that could be considered clearly more dominant (visually eye-catching) than other elements.

In the contested sign, the depiction of the heraldic shield has a significant position, in that it is in the centre of and covers almost two thirds of the area of the sign. The position of the word ‘LLOYD’ is also important within the mark, as it is in large stylised upper case letters in black and takes up about one third of the area of the sign. The number ‘1888’ is in a much smaller font. Therefore, the depiction of the shield and the word ‘LLOYD’ are co-dominant in the visual impression of the mark.

Earlier mark 2 does not contain any element that could be considered clearly more distinctive than other elements. However, in the contested sign, the number ‘1888’ is likely to be perceived as an indication of the year of production or of the establishment of the business start, or as a reference to a certain style or fashion associated with that year. Therefore, the element ‘1888’ is considered weak in relation to all the relevant goods. Consequently, the word ‘LLOYD’ and the figurative element are the most distinctive elements of the contested mark.

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).

Visually, the signs coincide in the sequence of letters ‘LLOYD’, present in all the marks, and which form one of the most distinctive and dominant elements in the contested sign. However, they differ in the rest of their elements.

Taking into account the similarities and the fact that the word component of a sign usually has a stronger impact on the consumer than the figurative component, the signs are visually similar to an average degree.

Aurally, earlier mark 1 will be pronounced as [yoids- ele] and earlier mark 2 as [yoids]. In the contested sign, the number ‘1888’ is likely to be perceived as a reference to the year and will not be pronounced; therefore, the contested sign will be pronounced as [yoid]. The pronunciation of the signs therefore coincides in their first verbal elements, ‘LLOYD’, and differs in the rest of their elements, namely the sound of the letter ‘L’ in earlier mark 1 and the sound of the letter ‘S’ in earlier mark 2.

Therefore, the signs are aurally highly similar.

Conceptually, the coinciding element ‘LLOYD’ has no meaning for the public in the relevant territory. The other components, that is, the figurative element depicting a bird in earlier mark 2, the letter ‘L’ of earlier mark 1, which is descriptive, and, in the contested mark, the heraldic shield and the year ‘1888’, will be perceived as such. The circles in earlier mark 1 will evoke the concept of orbits and planets. As the signs will be associated with dissimilar 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 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 Spanish mark has been extensively used and enjoys 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 these earlier marks will rest on its 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 this earlier mark must be seen as normal, despite the presence of a non-distinctive element as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

All the goods are identical, with the exception of footwear in Class 25, which is similar.

The conflicting marks are visually and aurally similar to an average and a high degree, respectively. Furthermore, the relevant public’s degree of attention is average and the earlier marks have a normal degree of distinctiveness for the relevant goods.

A relevant visual similarity has been found, since the marks have in common the verbal element ‘LLOYD’, the only verbal element of the contested mark. Therefore, even in the case of clothing, where consumers may handle the goods and make a close visual inspection before purchasing, the marks remain confusingly similar from a visual point of view. Even taking into account the different figurative elements, account should 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 light of all the foregoing, there is reason to assume that the relevant public in Spain may be misled into thinking that the identical and similar goods bearing the similar conflicting signs come from the same undertaking or, as the case may be, from undertakings that are economically linked.

The differences between the signs are insufficient to avoid a likelihood of confusion, as a result of the coincidence in the letters ‘LLOYD’ at the beginnings of their verbal elements.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier Spanish mark, there is no need to assess the enhanced degree of distinctiveness of this opposing mark due to its reputation as claimed by the opponent. The result would be the same even if this earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier rights European Union trade mark registration No 2 957 132 and Spanish trade mark registration No 2 193 662 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 ground of the opposition, namely Article 8(1)(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, 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

Cristina CRESPO MOLTÓ

José Antonio GARRIDO OTALOA

Loreto URRACA LUQUE

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.