OPPOSITION No B 2 679 499

Mercadona, S.A., Valencia, 5, 46016 Tavernes Blanques (Valencia), Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

A&H Sportswear Co., Inc., 110 Commerce Way, Stockertown, Pennsylvania 18083, United States of America (applicant), represented by Wildbore & Gibbons LLP, Sycamore House, 5 Sycamore Street, London EC1Y 0SG, United Kingdom (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 679 499 is upheld for all the contested goods.

2.        European Union trade mark application No 14 916 597 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 916 597 ‘MIRADONNA’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 11 487 386 ‘MERCADONA’ (word mark). 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.

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 11 487 386.

1. The goods

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

Class 25:        Clothing; Swimsuits; Socks; Waterproof clothing; Ready-made clothing; Underwear; Tights; Outerclothing; Bathing trunks; Underpants; Dresses.

The contested goods are the following:

Class 25:        Clothing; Swimwear; Shapewear; Casual Wear; Jeans: Dresses: Tops; Bottoms; Socks.

The contested goods are identical to the opponent’s goods because either they are identically contained in both lists of goods (e.g. clothing) or the contested goods (e.g. swimwear) are included in the broad category of the opponent’s clothing.

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 are directed at the public at large. Although the applicant did not explicitly argue that the degree of attention of the relevant public in this case is higher than average, it made a reference to the ‘Picasso’ judgment (12/01/2006, C-361/04 P, Picasso, EU:C:2006:25) and explained that, when the purchase of goods is made after a careful examination, this fact may reduce the likelihood of confusion. The Opposition Division notes that the ‘Picasso’ case concerns goods in Class 12 (e.g. cars) and the average consumer is likely to purchase such goods, which are expensive and not purchased on a regular basis, only after very careful examination. However, the same degree of attention is unlikely to be paid during the purchase of items of clothing, which as a rule are not expensive, are purchased on a regular basis and do not require specialised knowledge or expertise. Therefore, the degree of attention in respect of the goods in the present case is considered average.

3. The signs

MERCADONA	MIRADONNA
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 initial parts of both marks (‘MERCA*’ and ‘MIRA*’) are meaningful in certain territories, for example, in those countries where Spanish is spoken. In Spanish, the meanings of these elements are different and this might weigh against the likelihood of confusion. However, for another part of the public, for example English speakers, neither the initial parts of the signs nor the signs as a whole have any meaning. Consequently, the Opposition Division finds it appropriate to initially focus the comparison of the signs on the English-speaking part of the public and, if needed, will assess at a later stage the likelihood of confusion for the remaining part of the public.

For the English-speaking part of the public, the signs have no identifiable elements and will be perceived as meaningless single words with a normal degree of distinctiveness.

Visually and aurally, the signs coincide in the letter/sound sequence ‘M*R*ADON*A’. However, they differ in their second letters/sounds (‘E’ versus ‘I’) and in the additional letters, that is, the letter ‘C’ in the earlier mark and the second letter ‘N’ in the contested mark. These letters/sounds are not visually or aurally sufficiently prominent to have a strong impact on the overall similar impression created by the signs, as those letters/sounds do not appear first and, as regards the aural comparison, the single and double letters ‘n’ will be pronounced in the same way.

As the signs have the same length (same number of letters and syllables) and identical first and last letters/sounds, and coincide in a substantial number of letters/sounds, which are in the same sequence in the middle of the signs, the signs are visually and aurally highly similar.

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 goods at issue are identical and target the general public with an average degree of attention. For the English-speaking public, on which the analysis is focused, the signs are visually and aurally similar to a high degree due to the commonalities in the letters/sounds ‘M*R*ADON*A’. Furthermore, as the signs have no concepts for this part of the public, there is no conceptual perception of the signs so it has no influence on the comparison of the signs and the assessment of likelihood of confusion. The Opposition Division must therefore evaluate whether or not the relevant public for the goods at issue could safely distinguish between the signs upon perceiving them visually and aurally.

The applicant argues that the number of coinciding letters is only four (‘M*R*NA’), only two of them (‘NA’) form a sequence and the differing letters are sufficient to distinguish the marks. However, the applicant’s assessment is based on a side-by-side comparison, which is not likely to take place during the purchase of the relevant goods. In fact, the average consumers rarely have the chance to make a direct comparison between different marks, but instead must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). As the applicant correctly argues, the same number of letters is not decisive and the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. In the present case, the signs have not only the same number of letters/sounds, but their letters are largely the same and in the same sequence; they have identical first and last letters/sounds and the middle part, ‘ADON’, is also the same. The slightly different positions of the letters/sounds are unlikely to be recalled by consumers, whether perceived visually or aurally, as their sequence is the same. This creates an overall impression of the signs that, given the average degree of attention and the principle of imperfect recollection, is not sufficient to safely exclude the likelihood of confusion between the signs in relation to identical goods.

Considering all the above, there is a likelihood of confusion on the part of the English-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. Therefore, there is no need to analyse whether or not the remaining part of the public in the EU is likely to confuse the marks and consequently there is no need to analyse the applicant’s arguments in respect of the Spanish and Portuguese public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 487 386.

It follows that the contested trade mark must be rejected for all the contested goods, that is, in its entirety.

As the earlier right European Union trade mark registration No 11 487 386 leads 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).

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

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

Ric WASLEY

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.