OPPOSITION No B 2 749 540

Marca Protección Laboral, S.L., Avd. Bruselas, Esq. Amsterdam, P.I. Cabezo Beaza, 30395 Cartagena (Murcia), Spain (opponent), represented by Víctor Fernández Moreno, C/ Prosperidad 14, 6º V, 03010 Alicante, Spain (professional representative)

a g a i n s t

Magneto Research, 20 Rue du Maréchal Joffre, 33200 Bordeaux, France (applicant), represented by Aquinov, Allée de la Forestière, 33750 Beychac & Caillau, France (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 749 540 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 of European Union trade mark application No 15 328 412, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 4 713 806. 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, headgear; clothing, uniforms; ready-made suits and clothing.

The contested goods are the following:

Class 25: Camouflage clothing; gloves [clothing]; scarves; sashes for wear; waistcoats; shirts; trousers; jackets [clothing]; sleeveless jackets; footwear; hoods (hats); parkas; uniforms; all the aforesaid goods being for use in combat simulation games using replica weapons.

The contested camouflage clothing; gloves [clothing]; scarves; sashes for wear; waistcoats; shirts; trousers; jackets [clothing]; sleeveless jackets; parkas; all the aforesaid goods being for use in combat simulation games using replica weapons are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested footwear; all the aforesaid goods being for use in combat simulation games using replica weapons are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested uniforms; all the aforesaid goods being for use in combat simulation games using replica weapons are included in the broad category of the opponent’s uniforms. Therefore, they are identical.

The contested hoods (hats); all the aforesaid goods being for use in combat simulation games using replica weapons are included in the broad category of the opponent’s headgear. Therefore, they are 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 are directed at the public at large. The specification ‘all the aforesaid goods being for use in combat simulation games using replica weapons’ in the description of the contested goods can refer to popular games such as paintball. The degree of attention is considered average.

3. The signs

	MTO
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 element ‘METEO’ of the earlier mark will be understood as the Greek prefix ‘meteo’ understood throughout the whole European Union and associated with the concept of ‘meteorology’ (the branch of the science concerned with the processes and phenomena of the atmosphere, especially as a means of forecasting the weather). In fact, it is very close to the equivalent word in French (‘météorologie’), German (‘meteorologie’), Hungarian and Slovak (‘meteorológia’), Italian, Polish and Portuguese (‘meteorologia’), Lituanian and Slovenian (‘meteorologija’), Romanian (‘meteorologie’), Spanish (‘meteorología’) and Swedish (‘meteorologi’). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The figurative element of the earlier mark will most probably be perceived as the globe containing a compass illustration and is, therefore, also distinctive.

The element ‘WORKERS CLOTHING’, depicted in a secondary position in the earlier mark, will be understood at least by the English-speaking part of the public. Bearing in mind that the relevant goods are, in general, clothing, footwear and headgear items, this expression merely describes the target public of the goods and is, therefore, non-distinctive.

The contested sign will be perceived by the relevant public as the single letters ‘MTO’, probably constituting an acronym, but with no clear meaning behind it. Therefore, it is distinctive.

As the opponent claims, 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). However, the figurative element of the earlier mark has indeed an impact on the overall impression of the sign by virtue of its size, design and combination of colours, as seen above.

The opponent also claims that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, the signs only coincide at their beginnings in their first letter, ‘M’, and furthermore the contested sign is very short (only three letters) and will be perceived immediately in its entirety.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, contrary to the opponent’s opinion, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in the letters ‘M’, ‘T’ and ‘O’, being the entire contested sign and three letters out of five in the verbal element ‘METEO’ of the earlier mark. However, they differ in the additional letters ‘E’, placed in the second and fourth positions in the verbal element ‘METEO’, and all the remaining verbal and figurative elements of the earlier mark, namely, the secondary element ‘WORKERS CLOTHING’, the figurative element, as described above, and the stylisation and colours of the sign. In fact, the verbal part of the conflicting signs will be seen as a whole and will not be dissected.

Therefore, as the coinciding letters are visually not perceptible as a separate element but hidden in the verbal element ‘METEO’ of the earlier mark, such coincidence is rather irrelevant in view of the clear differences and it is concluded that the signs are not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs shows some similarities due to the presence of the common sounds of the letters ‛M’, ‘T’ and ‘O’. The pronunciation differs in the sound of the two letters ‛E’ present in the word ‘METEO’ of the earlier mark. The element ‘WORKING CLOTHING’ of the earlier mark is not likely to be pronounced because of its secondary position.  

Therefore, since the earlier mark will most probably be called ‘METEO’ and the contested sign by reference to the acronym ‘MTO’, the signs are aurally similar from a low to an average degree depending on the languages of the relevant territory.

Conceptually, although the public in the relevant territory will perceive the meanings of the earlier mark, 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical and the earlier mark enjoys a normal degree of distinctiveness.

The signs are not visually and conceptually similar. From an aural perspective, the signs are similar from a low to an average degree.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. 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). As such, the considerable visual differences between the signs caused by the different verbal elements (especially the meaningful word ‘METEO’ of the earlier mark and the acronym ‘MTO’ of the contested sign) are particularly relevant when assessing the likelihood of confusion between them.

Considering all the above, notwithstanding the identity of the goods, the Opposition Division finds that the differences between the signs are sufficient to exclude any likelihood of confusion on the part of the public, including the risk that the consumers believe that the respective goods come from the same or from economically linked undertakings. Therefore, the opposition must be rejected.

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

Vanessa PAGE

Marta GARCÍA COLLADO

Richard BIANCHI

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.