OPPOSITION No B 2 736 406

J P Sá Couto SA, Rua da Guarda, 675, 4455-466 Perafita/Matosinhos, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados – Consultores LDA, Rua Castilho, 167, 2º andar, 1070-050 Lisboa, Portugal (professional representative)

a g a i n s t

Saage Team S.r.l., Viale Dalmazia 61, 51016 Montecatini Terme, Italy (applicant), represented by Enrico La Malfa, Via Santo Stefano 58, 40125 Bologna, Italy (professional representative).

On 25/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 736 406 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 327 083, namely against all the goods in Classes 18 and 25 and some of the services in Class 35. The opposition is based on Portuguese trade mark registration No 538 632. 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 and services

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

Class 18:         Frames for umbrellas or parasols; pouches; keycases; travelling sets [leatherware]; briefcases; haversacks; backpacks; wheeled rucksacks; valises; suitcases; bags and cases for sports clothing; bags for sports clothes; schoolbook bags; handbags; travelling bags; satchels.

The contested goods and services are the following:

Class 18:        Bags; traveling trunks; handbags; keycases; umbrellas; briefbags; leather wallets; wallets; leather purses; haversacks; valises; backpacks; animal skins; imitation leather; worked or semi-worked hides and other leather; faux fur.

Class 25:        Clothing; sportswear; shoes; headgear; beach clothes; bathing suits; lingerie; robes; shawls and headscarves; bandanas [neckerchiefs]; pelisses.

Class 35:        Retail services connected with the sale of clothing accessories.

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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 18

The contested handbags; keycases; haversacks; valises; backpacks; briefbags are identically contained in both lists of goods (including synonyms).

The contested leather purses overlap with the opponent’s handbags. Therefore, these goods are identical.

The contested traveling trunks overlap with the broad category of the opponent’s travelling sets [leatherware]. Therefore, they are identical.

The contested bags include, as a broader category, the opponent’s handbags. 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 leather wallets; wallets are similar to the opponent’s briefcases. They may be produced by the same undertakings. They also have the same general purpose, namely to carry things, and they are usually sold through the same distribution channels and target the same consumers.

The contested animal skins; imitation leather; worked or semi-worked hides and other leather; faux fur are dissimilar to the opponent’s goods. The mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, the raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (see, to that effect, 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43).

The contested umbrellas are dissimilar to the opponent’s goods. The opponent’s frames for umbrellas are components of finished umbrellas. They refer to a part of an umbrella, namely the internal structure, which is sold, not as a finished product to average consumers, but to companies producing umbrellas to enable them to produce the finished goods. The contested umbrellas consist of finished goods sold to the public in stores. Therefore, even though the finished goods are included in the list of goods of the applicant, the opponent’s frames and the finished goods are dissimilar. The goods under comparison do not serve the same purpose. They usually differ in their producers and they do not have the same packaging and distribution channels. They are not in competition. The opponent’s frames for parasols are not parts of umbrellas. Parasols help to block out the sun, whereas umbrellas allow one to stay dry during rainstorms. Their structure is slightly different. Therefore, apart from the above reasoning, which shall apply accordingly, the opponent’s frames for parasols and umbrellas are not complementary to each other. The rest of the opponent’s goods are various types of bags for holding different items. Although they are finished goods like umbrellas, they have a different purpose, and different distribution channels, sales outlets, producers and methods of use. In addition, these goods of the opponent and umbrellas are not in competition with each other or complementary to each other.

Contested goods in Class 25

The contested clothing; sportswear; shoes; headgear; beach clothes; bathing suits; lingerie; robes; shawls and headscarves; bandanas [neckerchiefs]; pelisses are similar to the opponent’s handbags, since the latter are related to articles of clothing, headgear and footwear in Class 25. This is because consumers are likely to consider the Class 18 goods, such as handbags, as accessories that complement articles of outer clothing, headgear and even footwear, as the former are often closely coordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing, headgear and footwear to directly produce and market related goods made of leather and imitations of leather. Moreover, these goods can be found in the same retail outlets.

Contested services in Class 35

The contested retail services connected with the sale of clothing accessories are dissimilar to the opponent’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not 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 or similar are directed at the public at large with an average degree of attention.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 earlier mark is a figurative mark containing a figurative element that depicts a letter ‘M’ and the verbal element ‘mymaga’, with the latter being depicted in a stylised manner resembling hand-written characters.

The contested sign is a figurative mark consisting of two words, namely ‘MAGA’ and ‘MILANO’. The word ‘MAGA’ is depicted in a stylised manner, as it includes a slightly curved line that crosses the first letter ‘A’, the letter ‘G’ and the last letter ‘A’. The word ‘MAGA’ is much larger than the word ‘MILANO’. Both elements are depicted in upper case letters.

The word ‘MAGA’ of the contested sign will be understood in Portuguese as ‘enchantress’ (‘mágica, feiticeira’; information extracted from Priberam Dicionario on 08/05/2017 at www.priberam.pt/dlpo/maga). As this meaning has no relation to the relevant goods, it has a normal degree of distinctiveness.

The other element of the contested sign, that is, ‘MILANO’, in the perception of the relevant public, will be understood as the Italian name of the city of Milan, which is well known as a global capital of fashion. Bearing in mind that the relevant goods are various types of bags, as well as clothing, footwear and headgear, this element is non-distinctive for the goods in Classes 18 and 25.

The earlier mark ‘mymaga’ will be perceived as either an invented word with no meaning or a word of foreign origin, as the word ‘my’ does not exist in Portuguese. In addition, the letter ‘y’ appears very seldom in Portuguese and the word ‘maga’ is not very common. Therefore, it is highly unlikely that the relevant public will dissect the word ‘maga’ from the earlier mark. The earlier mark has, therefore, no elements that could be considered more distinctive than others.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The element ‘MAGA’ in the contested sign is the dominant element as it is the most eye-catching. This element is also more distinctive than the word ‘MILANO’.

Visually, the signs coincide in ‘maga’, which is a separate word in the contested sign and part of the verbal element ‘mymaga’ of the earlier mark, which will, however, not be dissected by the relevant public, as explained above. They differ in the component ‘my’ and the figurative element depicting a letter ‘M’. The signs differ in their beginnings, have different figurative elements and are depicted in different typefaces.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ma-ga’, present in both signs. The pronunciation differs in the sound of the element ‛my’, which precedes the letters ‛ma-ga’ of the earlier sign. Furthermore, the signs differ in the weak element ‘MILANO’ of the contested sign, if pronounced. The figurative element in the form of a letter ‘M’ will not be pronounced by the majority of the relevant public, as it will be perceived as a repetition of the initial letter of the word ‘mymaga’.

The signs have different lengths (numbers of syllables), rhythms and intonations, and they differ in their beginnings.

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

Conceptually, although the public in the relevant territory will perceive the meanings of the elements of the contested sign, as explained above, the other sign has no meaning in that territory. 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 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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the contested goods and services are identical, similar and dissimilar to the opponent’s goods, whereas the conflicting marks have only a low degree of visual similarity and at most an average degree of aural similarity. Moreover, they are not conceptually similar. The relevant public, as explained above, will have an average degree of attention. In addition, the distinctiveness of the earlier marks is average.

The Opposition Division is of the opinion that the differences between the marks are clearly perceptible and outweigh the similarities in the present case. These differences are, therefore, sufficient to exclude any likelihood of confusion between the marks.

The goods themselves are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). The visual aspect of the comparison has therefore more weight in the assessment of likelihood of confusion.

Considering all the above, even in relation to the goods found to be identical, there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected under Article 8(1)(b) 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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Natascha GALPERIN

Michal KRUK

Ana MUÑIZ RODRÍGUEZ

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.