OPPOSITION No B 2 732 983

CKL Holdings N.V., Amersfoortsestraatweg 33b, 1401 CV Bussum, the Netherlands (opponent)

a g a i n s t

MI-U d.o.o., Usnjarska cesta 8, 1241 Kamnik, Slovenia (applicant), represented by Tadej Černivec, Regentova cesta 40, 1000 Ljubljana, Slovenia (professional representative).

On 25/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 732 983 is partially upheld, namely for the following contested goods:

Class 25:        Clothing, footwear; hats; children’s wear; children’s footwear; children’s headwear; ready-to-wear clothing; sportswear; underwear; outerclothing; knitwear [clothing]; baby clothes.

Class 26:        Shoe laces (listed twice).

2.        European Union trade mark application No 15 219 926 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 219 926, , namely against all the goods in Classes 25 and 26. The opposition is based on Benelux trade mark registration No 980 426, ‘Kiddo’. 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 25:        Clothing; footwear and headgear; swimwear; sportswear and leisurewear.

The contested goods are the following:

Class 25:        Clothing, footwear; hats; children’s wear; children’s footwear; children’s headwear; ready-to-wear clothing; sportswear; underwear; outerclothing; knitwear [clothing]; baby clothes.

Class 26:        Lace and embroideries; ribbons; shoe laces; buttons; hooksand eyes; badges and pins; artificial flowers; edgings for clothing; laces for clothing; trimmings for clothing; braids; frills for clothing; patches for clothing; clasps for clothing; embroidery for garments; haberdashery, except thread; zippers; brooches (clothing accessories); buckles [clothing accessories]; hat ornaments; shoe laces; metal fasteners for footwear.

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 25

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

The contested children’s wear; ready-to-wear clothing; underwear; outerclothing; knitwear [clothing]; baby clothes are included in the broad category of the opponent’s clothing. Therefore, they are considered identical.

The contested hats; children’s headwear are included in the broad category of the opponent’s headgear. Therefore, they are considered identical.

The contested children’s footwear is included in the broad category of the opponent’s footwear. Therefore, they are considered identical.

Contested goods in Class 26

The contested shoe laces (listed twice) are cords or leather strings drawn through holes or eyelets or around hooks to fasten shoes. Therefore, they are complementary to the opponent’s footwear in Class 25. These goods target the same relevant public and have the same distribution channels. They are considered similar to a low degree.

The contested lace and embroideries; ribbons; badges and pins; artificial flowers; edgings for clothing; laces for clothing; trimmings for clothing; braids; frills for clothing; patches for clothing; embroidery for garments; haberdashery, except thread; brooches (clothing accessories); buckles [clothing accessories]; hat ornaments are accessories for apparel, sewing articles and decorative textile articles. These goods serve a different purpose and have a different nature and method of use from the opponent’s goods in Class 25. Although some of the contested goods may target the same relevant public as, and can be used as an accessory for or in the manufacturing process of, the opponent’s clothing, footwear and headgear, this is not sufficient for a finding of similarity between these goods. The goods are neither complementary nor in competition and they do not usually have the same commercial origin or distribution channels. Therefore, they are considered dissimilar.

The remaining contested goods, namely buttons; hooks and eyes; clasps for clothing; zippers; metal fasteners for footwear, are mainly tailor’s or cobbler’s articles that are normally available in haberdasheries or in shoe repair shops and serve as parts and components for clothes or other textile goods or are used in making clothes and/or footwear. The opponent in its observations argues that some of the contested goods are complementary to the opponent’s clothing and footwear and thus these goods are similar. In this regard, the Opposition Division notes that the mere fact that a particular good is used as a part, element or component of another does not suffice in itself to show that the finished goods containing those components are similar (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). The contested goods usually target undertakings that produce the end product and not the general public. Furthermore, consumers would not expect the contested goods to be manufactured by the same undertakings as the opponent’s goods. Given their clearly different natures, methods of use and distribution channels, the contested goods are considered dissimilar to the opponent’s goods in Class 25.

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 to a low degree are directed at the public at large. The degree of attention is considered average.

3. The signs

Kiddo
Earlier trade mark	Contested sign

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C-108/05, Europolis, EU:C:2006:530).

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public, for which the signs are conceptually neutral, for the reasons given below.

The earlier mark is a word mark, ‘Kiddo’, which, as such, lacks any dominant element. In addition, in the case of word marks, it is the word as such that is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof. The verbal element ‘Kiddo’ has no meaning for the French-speaking part of the relevant public and is therefore distinctive.

The contested sign is a figurative sign composed of the verbal elements ‘LUCKY’ and ‘K!DDO’, written in a bold font in blue upper case letters. Even though, in the verbal element ‘K!DDO’, the second grapheme is depicted as an exclamation mark (‘!’), it is likely to be perceived by the relevant consumer as the letter ‘i’ turned upside down. Indeed, taking into account that this grapheme is the same size and in the same font as the other letters, it is reasonable to assume that a part of the public will see it as forming one component together with the letters ‘K*DDO’. Moreover, consumers tend to recognise a letter in a sequence even when it is altered, as trade marks often distort letters or replace them with figurative elements, such as punctuation marks, with a shape similar to that of a letter, intentionally looking for effect or impact (21/11/2014, 9 237 C).

Consequently, a part of the relevant public will perceive the second verbal element of the contested sign as ‘KIDDO’ and the Opposition Division will continue the analysis of this decision based on this assessment. The verbal elements ‘LUCKY’ and ‘KIDDO’ (as mentioned above) have no meanings for the French-speaking part of the relevant public and are therefore equally distinctive. Moreover, the contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘KIDDO’, which constitutes the sole verbal element of the earlier mark. As outlined above, despite the fact that the second grapheme of the verbal element of the contested sign is depicted as an exclamation mark, it will be perceived by the relevant consumer as an upside down ‘i’. The signs differ in the additional verbal element ‘LUCKY’ and the graphic depiction of the contested sign. 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; 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). Therefore, the weight of the contested sign’s stylisation in the present case will be secondary.

It follows that, since the entire earlier mark is included in the contested sign as an independent and distinctive element and as one of the only two verbal elements of the sign, the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the verbal element ‘KIDDO’ and differs in the additional verbal element ‘LUCKY’ of the contested sign. Since the only verbal element of the earlier mark, which is distinctive, is included as an independent element in the contested mark, albeit at the second position, the marks are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical, partly similar to a low degree and partly dissimilar. The signs are visually and aurally similar to an average degree. The conceptual aspect does not influence the similarity between the signs. The degree of attention of the relevant public is average and the earlier mark has an average degree of distinctive character.

The verbal element forming the entire earlier mark is included in the contested sign, where it retains a distinctive and independent role. Even though the verbal element ‘K!DDO’ in the contested sign contains an exclamation mark instead of the vowel ‘i’, a part of the French-speaking public is likely to pronounce and perceive the element ‘K!DDO’ as ‘KIDDO’ for the reasons outlined above in section c) of this decision. Taking into account all the above, and especially the fact that the earlier mark is fully contained in the contested sign, it is considered that the additional term ‘LUCKY’ and the graphic depiction of the contested sign cannot counteract the visual and aural similarities between the signs sufficiently to exclude a likelihood of confusion.

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. Particularly in the clothing sector, it is common for the same mark to be configured in various different ways according to the type of product that it designates. It is also common for the same clothing manufacturer to use sub-brands, that is to say signs that derive from a principal mark and which share with it a common element, in order to distinguish his various lines from one another (women’s, men’s, children’s). In such circumstances it is conceivable that the targeted public may regard the clothing designated by the conflicting marks as belonging, admittedly, to two distinct ranges of products but as coming, none the less, from the same manufacturer (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49; 17/02/2011, T-385/09, Ann Taylor Loft, EU:T:2011:49, § 45).

Consequently, in the present case, the relevant consumers may think that the goods that are identical or similar to a low degree come from the same company or from economically-related companies. Those consumers are likely to notice the repetition of the distinctive element ‘KIDDO’ in the contested sign when remembering the marks, based on their imperfect recollection, and are likely to make an association between the trade marks based on the coinciding element ‘KIDDO’; therefore, these consumers will assume that the contested sign is a sub-brand of goods connected to the earlier mark. Regarding the applicant’s observations that a sub-brand is normally used after the main mark and not vice versa, the Opposition Division notes that a sub-brand can be used in commerce both after and before the parent brand; in both scenarios, the outcome of this decision would not be different.

In addition, as regards the contested goods in Class 26 that are similar to a low degree to the opponent’s goods, account must be taken of the well-established 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 similarity between the signs outweighs the low degree of similarity between the opponent’s goods and the contested goods in Class 26, and therefore a risk of confusion also exists in relation to those goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Benelux trade mark registration No 980 426. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of Benelux 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 or similar to a low degree to those of the earlier trade mark.

The rest of the contested goods in Class 26 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

Pierluigi M. VILLANI

Birgit FILTENBORG

Francesca CANGERI SERRANO

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.