OPPOSITION No B 2 118 951
Nikita Ehf, Skipholt 25, Reykjavik 105, Iceland (opponent), represented by Arnason Faktor, Gudridarstig 2-4, Reykjavik 113, Iceland (professional representative)
a g a i n s t
Mykita Studio GmbH, Ritterstr. 9, 10969 Berlin, Germany (applicant), represented by Merleker & Mielke, Hardenbergstr. 10, 10623 Berlin, Germany (professional representative).
On 27/03/2017, the Opposition Division takes the following
1. Opposition No B 2 118 951 is upheld for all the contested goods, namely:
Class 25: Clothing, footwear, headgear.
2. European Union trade mark application No 11 092 103 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against some of the goods of European Union trade mark application No 11 092 103, namely all the goods in Class 25. The opposition is based on international trade mark registration No 844 705 designating Austria, Benelux, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden and the United Kingdom. The opponent invoked Article 8(1)(b) and 8(5) 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 goods
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear.
The contested goods are the following:
Class 25: Clothing, footwear, headgear.
Clothing, footwear, headgear are identically contained in both lists of goods.
- 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 degree of attention is average.
- The signs
Earlier trade mark
The relevant territories are Austria, Benelux, Bulgaria, Croatia, Cyprus, the Czech Republic, Denmark, Estonia, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.
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 consisting of the verbal element ‘Nikita’. This element might be understood as a given name by part of the relevant public, such as the Spanish-speaking public, but it does not have a meaning in relation to the relevant goods and is, therefore, distinctive.
The contested sign is the word mark ‘MYKITA’. This element does not have a meaning in relation to the relevant goods and is, therefore, distinctive.
The marks have no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than others.
Visually, the signs ‘Nikita’ and ‘MYKITA’ both contain the suffix ‘KITA’. They differ only in their first letters, ‘Ni’, in the earlier mark and ‘MY’ in the contested sign. However, the letters ‘N’ and ‘M’ are visually highly similar.
Therefore, the signs are visually similar to an average degree.
Aurally, in some of the relevant territories, such as Spain, the pronunciation of the signs coincides in the sound of the letters ‘(I/Y)KITA’, present in both signs, as the letter ‘I’ and the letter ‘Y’ are pronounced in the same way, for example, by the Spanish-speaking public. Furthermore, the letters ‘N’ and ‘M’ are aurally highly similar.
Therefore, the signs are aurally similar to a high degree.
Conceptually, the word ‘Nikita’ might be understood as a given name by part of the public; however, as the contested sign has no meaning, the signs are conceptually dissimilar for this part of the public. For the remaining part of the public, neither of the signs has a meaning. 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.
- 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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.
- 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 earlier 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).
Account is taken of 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).
In the present case, the contested goods are identical to the opponent’s goods.
The signs are visually similar to an average degree and aurally to a high degree. The signs are word marks of the same length, namely six letters, of which four are identical and in the same position. The difference lies in only two letters, which do not have a strong impact on the overall visual and aural impressions created by the signs. For the majority of the relevant public, the words could be confused because of their aural similarity.
With regard to the differing concept of the earlier marks, only part of the public will perceive the earlier mark as a name, and even for this part of the public, this difference is insufficient to counteract the high degree of aural similarity and the average degree of visual similarity.
Considering all the above, there is a likelihood of confusion on the part of the relevant public.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
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
Patricia LOPEZ FERNANDEZ DE CORRES
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.