OPPOSITION No B 1 959 470

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 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 959 470 is partially upheld, namely for the following contested goods and services:

Class 3: Perfumery, cosmetics.

Class 14: Jewellery, jewellery, costume jewellery, tie pins, tie clips, horological and chronometric instruments. 

Class 18: Leather and imitations of leather, and goods made of these materials (included in class 18), in particular purses, pouches and wallets (included in class 18); travelling bags and handbags; trunks and travelling bags; briefcases and attaché cases.

Class 25: Clothing, footwear, headgear.

Class 35: Wholesaling and retailing, including via the internet and through teleshopping, in the fields of jewellery, costume jewellery, tie pins, tie clips, horological and chronometric instruments, leather and imitations of leather, travel bags, trunks and travelling bags.

2.        European Union trade mark application No 10 367 721 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 367 721. The opposition is based on: European Union trade mark registration No 2 957 132 ; Spanish trade mark registrations No 2 193 659, No 2 193 661 and No 2 193 662 for the figurative mark ; Italian trade mark registration No 1 175 068 for the figurative mark .

The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested, on 12/09/2016 that the opponent submit proof of use of some of the trade marks on which the opposition is based, namely:

Spanish trade mark registrations No 2 193 659, No 2 193 661 and No 2 193 662 for the figurative mark for goods in Classes 14, 18 and 25;

Italian trade mark No 1 175 068 for the figurative mark  for goods in Classes 3, 14, 18 and 25.

The request was filed in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

On 12/11/2016, the opponent was given two months to file the requested proof of use.

The opponent did not furnish any evidence concerning the use of the earlier trade marks on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR in respect of the earlier Spanish trade mark registrations No 2 193 659, No 2 193 661 and No 2 193 662 and Italian trade mark No 1 175 068.

The examination will continue on the basis of the earlier mark which is not subject of proof of use, namely European Union trade mark registration No 2 957 132 .

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 and services

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 and services are the following:

Class 3: Perfumery, cosmetics. 

Class 14: Jewellery, Jewellery, Costume jewellery, Tie pins, Tie clips, Horological and chronometric instruments. 

Class 18: Leather and imitations of leather, and goods made of these materials (included in class 18), in particular purses, pouches and wallets (included in class 18); Travelling bags and handbags; Trunks and travelling bags; Briefcases and attaché cases. 

Class 25: Clothing, footwear, headgear. 

Class 35: Wholesaling and retailing, including via the internet and through teleshopping, in the fields of jewellery, costume jewellery, tie pins, tie clips, horological and chronometric instruments, leather and imitations of leather, and goods made of these materials (included in class 18), in particular purses, money pouches and pocket wallets (included in class 18), travel bags and handbags, trunks and travelling bags, briefcases and attaché cases, 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.

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

The term ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Class 3

Perfumery, cosmetics are identically contained in both lists of goods.

Contested goods in Class 14

Jewellery (listed twice); horological and chronometric instruments are identically contained in both lists of goods.

Costume jewellery, tie pins, tie clips are included in the broad category of the opponent’s jewellery. Therefore, they are identical.

Contested goods Class 18

Leather and imitations of leather, and goods made of these materials (included in class 18), in particular purses, pouches and wallets (included in class 18); travelling bags; trunks and travelling bags are identically contained in both lists of goods.

Briefcases and attaché cases are highly similar to the opponent´s travelling bags as the goods at issue coincide in nature and general purpose (holding things to be able to carry them around). Moreover, they can coincide in producer, end user and distribution channels.

The contested handbags are similar to the opponent´s travelling bags as they have the same purpose. They can coincide in end user and distribution channels.

Contested goods in Class 25

The contested clothing, footwear, headgear are similar to the opponent’s handbags in Class 18 since the producers of the contested goods may also produce this kind of articles as accessories. Furthermore, they can target at the same relevant public and be distributed through the same trade channels.

Contested services in Class 35

Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale).

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, ‘Castello’, paragraph 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

Therefore the contested wholesaling and retailing, including via the internet and through teleshopping, in the fields of jewellery, costume jewellery, tie pins, tie clips, horological and chronometric instruments, leather and imitations of leather, travel bags and trunks and travelling bags are similar to a low degree to the some of the opponent’s goods.

However, retail services in general are not similar to any goods that are capable of being sold by retail. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.

However, this does not apply in relation the contested wholesaling and retailing, including via the internet and through teleshopping, in the fields of goods made of these materials (included in class 18), in particular purses, money pouches and pocket wallets (included in class 18), handbags, briefcases and attaché cases, clothing, footwear, headgear. This condition is not fulfilled in the present case since the goods at issue are only similar. These services are dissimilar.

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 and services found to be identical or similar to varying degrees are directed at the public at large and business customers with specific professional knowledge or expertise.

The degree of attention is considered to vary from average to high. At least for jewellery the level of attention, depending on the price, may be high. In its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

3. The signs

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 common element ‘LLOYD’ is meaningless in a great part of the EU, 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 French-speaking part of the public.

The earlier mark 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 mark depicting the letters ‘LLOYD’ in a dark red colour over a lighter red background.

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

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 the marks. 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, 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 ‘S’ in earlier mark.

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, will be perceived as such. 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 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 and services 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 goods and services are identical, similar to different degrees and dissimilar.

The Court has set out the essential principle that 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). In the present case, the low degree of similarity between some of the services, together with the degree of visual and aural similarity between the marks, will have to be taken into account when assessing the likelihood of confusion between the marks.

The conflicting marks are visually and aurally similar to an average and a high degree, respectively. Furthermore, the earlier mark has 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. The differences in stylistic and figurative effects, although not to be ignored in the global comparison, are not sufficiently strong to prevent the finding of similarity between the signs.

Even a high level of attention for some of the goods and services would not eliminate the likelihood that the consumer will think that the contested mark is in some way economically linked to the earlier marks, because the signs have the same distinctive element and refer to strictly related products, all belonging to the same specific field. In this respect, account should be taken of the fact that even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T- 443/12, Ancotel, EU:T:2013:605, § 54), given that only rarely would they have the chance to make a direct comparison between the different marks, but will often have to place their trust in the imperfect image of them that they have retained in their minds.

In light of all the foregoing, there is reason to assume that the relevant public in the European Union may be misled into thinking that the identical and similar (to different degrees) goods and services bearing the similar conflicting signs come from the same undertaking or, as the case may be, from undertakings that are economically linked.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, such as Spanish-, Italian- and French-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 and services found to be identical and similar to different degrees to those of the earlier trade mark. This applies to the services found to be similar to a low degree. This is because the similarity between the signs is significant enough to also lead to a likelihood of confusion in relation to the services which only have a low degree of similarity.

The rest of the contested services: wholesaling and retailing, including via the internet and through teleshopping, in the fields of goods made of these materials (included in class 18), in particular purses, money pouches and pocket wallets (included in class 18), handbags, briefcases and attaché cases, clothing, footwear, headgear 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 services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DRAGOSTIN

Birgit FILTENBORG

Erkki MÜNTER

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.