OPPOSITION DIVISION
OPPOSITION No B 2 472 523
Adler Modemärkte AG, Industriestr. Ost 1-7, 63808 Haibach, Germany (opponent),
represented by Christina Hambeck-Joh, Adler Modemärkte AG, Industriestr. Ost 1-
7, 63808 Haibach, Germany (employee representative)
a g a i n s t
Mersigo sp. z o.o., Domaniewska 41, 02672 Warszawa, Poland (applicant),
represented by Drzewiecki Tomaszek & Wspólnicy, Belvedere Plaza,
Ul. Belwederska 23, 00-761 Warszawa, Poland (professional representative).
On 18/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 472 523 is partially upheld, namely for the following
contested goods:
Class 25: Bandanas [neckerchiefs]; underwear; boas [necklets]; scarves;
swimming caps; aprons [clothing]; ascots; furs [clothing]; corsets;
petticoats; galoshes; shoulder wraps; detachable collars;
combinations [clothing]; maniples; sleep masks; uniforms; ear
muffs [clothing]; motorists’ clothing; cyclists’ clothing; clothing for
gymnastics; ready-to-wear clothing; weatherproof clothing; clothing
of imitations of leather; clothing of leather; outerclothing; chasubles;
belts [clothing]; girdles; belts (money -) [clothing]; garters; saris;
sarongs; bibs, not of paper; swimming costumes; masquerade
costumes; beachwear; sashes for wear; suspenders; trouser
straps; togas; veils [clothing]; layettes [clothing]; hosiery; clothing.
2. European Union trade mark application No 12 815 452 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 12 815 452, namely against some of the goods in Class 25. The
opposition is based on German trade mark registration No 39 531 746 ‘Malva’. The
opponent invoked Article 8(1)(b) EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 472 523 page: 2 of 7
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.
a) The goods
The goods on which the opposition is based are the following:
Class 25: Outerwear and underwear (clothing) for men, women and children,
including knitted and knitted fur, leather or imitations of leather; sports
and swimwear pieces, bathrobes, shirts, blouses, sleepwear, hosiery;
corsetry (foundation garments), namely bodices, corsets, camisoles,
girdles, garter belts and bras; towels (scarves) for neck, shoulder and
head and handkerchiefs; leather goods namely belts.
The contested goods are the following:
Class 25: Bandanas [neckerchiefs]; underwear; boas [necklets]; scarves; swimming
caps; tips for footwear; cap peaks; fur stoles; aprons [clothing]; ascots;
furs [clothing]; corsets; petticoats; galoshes; shoulder wraps; detachable
collars; combinations [clothing]; maniples; sleep masks; uniforms;
heelpieces for stockings; ear muffs [clothing]; motorists’ clothing; cyclists’
clothing; clothing for gymnastics; ready-to-wear clothing; weatherproof
clothing; clothing of imitations of leather; clothing of leather; outerclothing;
chasubles; belts [clothing]; girdles; belts (money -) [clothing]; garters;
dress shields; saris; sarongs; bibs, not of paper; swimming costumes;
masquerade costumes; beachwear; sashes for wear; suspenders; hat
frames [skeletons]; trouser straps; togas; veils [clothing]; layettes
[clothing]; hosiery; clothing.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods. The term ‘including’, used in the opponent’s list of
goods in Class 25, indicates that the specific goods 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 (09/04/2003, T-224/01, Nu-Tride,
EU:T:2003:107). However, the term ‘namely’, used in the opponent’s list to show the
relationship of individual goods with a broader category, is exclusive and restricts the
scope of protection only to the specifically listed goods.
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.
Underwear; corsets; garters; hosiery; swimming costumes are identically contained in
both lists (including synonyms).
Decision on Opposition No B 2 472 523 page: 3 of 7
The contested aprons [clothing]; shoulder wraps; detachable collars; furs [clothing];
combinations [clothing]; maniples; uniforms; ear muffs [clothing]; motorists’ clothing;
cyclists’ clothing; clothing for gymnastics; ready-to-wear clothing; weatherproof
clothing; clothing of imitations of leather; clothing of leather; outerclothing; chasubles;
saris; sarongs; beachwear; masquerade costumes; sashes for wear; togas; veils
[clothing]; layettes [clothing] are included in the broad category of, or overlap with,
the opponent’s outerwear for men, women and children. Therefore, they are identical.
The contested petticoats are included in the broad category of, or overlap with, the
opponent’s underwear (clothing) for men, women and children. Therefore, they are
identical.
The contested belts [clothing]; girdles; belts (money -) [clothing] are included in the
broad category of, or overlap with, the opponent’s leather goods namely belts.
Therefore, they are identical.
The contested clothing includes, as a broader category, the opponent’s outerwear
and underwear (clothing) for men, women and children. 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 bandanas [neckerchiefs]; boas [necklets]; scarves; ascots are similar
to a high degree to the opponent’s towels (scarves) for neck, shoulder and head and
handkerchiefs, since they have the same purpose and can be produced by the same
manufacturers, distributed through the same distribution channels and target the
same relevant consumers. Furthermore, they are in competition.
The contested sleep masks are bandages to cover the eyes; the contested bibs, not
of paper are pieces of cloth fastened round a child’s neck to keep its clothes clean
while eating; the contested suspenders are elastic straps attached to a belt or garter,
fastened to the top of a stocking to hold it up or a pair of braces for holding up
trousers; the contested trouser straps help the urban cyclist to fasten their trousers
and prevent them from being caught in the chain ring. These are different clothing
articles that usually complement other clothing articles. They are considered similar
to the opponent’s outerwear and underwear (clothing) for men, women and children,
since they can have the same manufacturers, relevant consumers and distribution
channels. Moreover, they can be complementary to each other.
The contested swimming caps and galoshes have the same purpose as the
opponent’s outerwear and underwear (clothing) for men, women and children, since
all are used for covering and protecting parts of the human body. Moreover, they can
have the same manufacturers, target the same relevant consumers and be found in
the same retail outlets. Therefore, they are considered similar.
The contested tips for footwear; cap peaks; fur stoles; heelpieces for stockings and
hat frames [skeletons] are parts for clothing, headgear and footwear that are usually
destined for undertakings manufacturing the end product, but not for the general
public. They have different purposes, relevant consumers, manufacturers and
distribution channels from the opponent’s goods in Class 25. Therefore, they are
dissimilar.
The contested dress shields are underarm liners (also called underarm pads, sweat
guards) applied to clothing to keep it perspiration stain free. They have different
purposes, manufacturers and distribution channels from the opponent’s goods in
Decision on Opposition No B 2 472 523 page: 4 of 7
Class 25. The fact that they may have the same relevant consumers is not enough to
make them similar. Therefore, they are dissimilar.
b) 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. The degree of attention is considered average.
c) The signs
Malva
Earlier trade mark Contested sign
The relevant territory is Germany.
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 word mark, ‘Malva’. The contested sign is a figurative mark,
consisting of a verbal element, ‘MILVAI’, in white stylised letters on a light blue label-
shaped background with a black ribbon on the much shorter last letter ‘I’. The words
‘Malva’ and ‘MILVAI’ are meaningless for the relevant public and their distinctiveness
in relation to the relevant goods is normal. The blue figurative element of the
contested sign depicts a type of label that is usually sewn into a garment’s seam and
is, therefore, non-distinctive in relation to the relevant goods. Moreover, it merely
serves as a background for the verbal element ‘MILVAI’. The ribbon on the last letter
is merely decorative in nature and its distinctiveness in relation to the relevant goods
is low. Therefore, the verbal element ‘MILVAI’ is the most distinctive element of the
contested sign.
Neither the earlier mark nor the contested sign has any element that could be
considered clearly more dominant (visually eye-caching) that other elements.
Visually, the signs coincide in the sequence of letters ‘M*LVA*’, which constitute the
first and the three last letters of the earlier mark (out of five), and the first and the
three middle letters of the contested sign (out of six). The signs differ in their second
letters, namely ‘A’ versus ‘I’ of the earlier mark and the contested sign, respectively,
and in the last letter, ‘I’, of the contested sign. The signs also differ in the figurative
elements and stylisation of the contested sign.
Decision on Opposition No B 2 472 523 page: 5 of 7
However, as mentioned above, the figurative elements of the contested sign are
either non-distinctive or decorative in nature and therefore will not distract the
consumers’ attention from the verbal element ‘MILVAI’. Moreover, since the last letter,
‘I’, of the contested sign is much shorter than the remaining letters and has a ribbon
on top, it is not clearly recognisable as the letter ‘I’ at first sight and may be perceived
by the relevant consumers as part of the decorative figurative element, such as a
pole supporting the ribbon.
Therefore, the signs are considered visually similar to at least an average degree.
Aurally, the pronunciation of the signs coincides in the sounds of the letters
/M*LVA*/, present identically in both signs. The pronunciation differs in the sound of
the second letter /A/ of the earlier mark versus /I/ of the contested sign, and in the
sound of the last letter /I/ of the contested sign, if it is perceived as such. The
figurative elements of the contested sign will not be referred to aurally by the relevant
public.
Considering the fact that the last letter, ‘I’, of the contested sign is not clearly
recognisable (as explained above) and may not be pronounced by the relevant
consumers, the signs are considered aurally similar to a high 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.
d) 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.
e) Global assessment, other arguments and conclusion
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).
As concluded above, the contested goods are partly identical, partly similar and
partly dissimilar to the opponent’s goods and they target the public at large, which
Decision on Opposition No B 2 472 523 page: 6 of 7
has an average degree of attention. The degree of distinctiveness of the earlier mark
is average.
The signs are visually similar to at least an average degree and aurally highly similar.
The conceptual aspect does not influence the assessment of likelihood of confusion
between the signs, as both signs are meaningless. As detailed in section c), the
earlier mark and the verbal element of the contested sign differ in their second
letters, and the differing last letter of the contested sign may not be perceived as
such, but rather as a part of a decorative figurative element. The signs also differ in
stylisation and in the figurative elements of the contested sign. However, although
these create some visual differences between the marks, their impact on assessing
likelihood of confusion is minimal, due to the non-distinctive or decorative nature of
these elements.
Generally in clothes shops customers can themselves either choose the clothes they
wish to buy or be assisted by the sales staff. Therefore, the visual perception of the
marks in question will generally take place prior to purchase. Accordingly the visual
aspect plays a greater role in the global assessment of the likelihood of confusion
(06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). However,
since verbal communication in respect of the goods in question and the signs under
comparison cannot be excluded, the relevant consumer would be confused by the
fact that the signs under comparison are composed to a large extent of the same
letters in exactly the same order and may not even recall the difference in their
second letters or notice the last letter of the contested sign.
Moreover, considering 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)
and taking into consideration the abovementioned principle of interdependence, it is
highly conceivable that the relevant consumers will make a connection between the
conflicting signs and assume that the goods in question are from the same or
economically linked undertakings. Since neither of the marks under comparison
conveys any concept that could differentiate them from each other, it cannot be
safely excluded that the relevant consumer will confuse the marks or alternatively
perceive the contested mark as a sub-brand or variation of the earlier mark
(23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s German trade mark registration No 39 531 746.
It follows from the above that the contested trade mark must be rejected for the
contested goods found to be identical or similar 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 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to
Article 109(3) EUTMR, where each party succeeds on some heads and fails on
Decision on Opposition No B 2 472 523 page: 7 of 7
others, or if reasons of equity so dictate, the Opposition Division will decide a
different apportionment of costs.
Since the opposition is successful for only some 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
Janja FELC Rasa BARAKAUSKIENE Judit NÉMETH
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.