OPPOSITION No B 2 230 327

Jose Luis Mazo Lerdo de Tejada, Gran Vía Juan Carlos I, 42, 26002 Logroño, Spain (opponent), represented by Polopatent, Dr. Fleming, 16, 28036 Madrid, Spain (professional representative)

a g a i n s t

Firma Handlowa „TEX” Józef Groch, Ul. Czarnieckiego 13, 37-700 Przemyśl, Poland (applicant), represented by Kancelaria Patentowa Wima-Patent, Ul. Wodzisławska 14, 44-201 Rybnik, Poland (professional representative).

On 26/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 230 327 is partially upheld, namely for the following contested goods:

Class 25:         Footwear, in particular children's footwear; Lace boots; Gymnastic shoes; Galoshes; Sandals; Slippers; Bathing shoes; Half-boots; Long boots; Children's slippers.

2.        European Union trade mark application No 11 589 629 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 589 629. The opposition is based on, inter alia, Spanish trade mark registration No 896 125. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of one of the trade marks on which the opposition is, based, that is, Spanish trade mark registration No 896 125 ‘MAZO’ for footwear, in particular children's footwear; lace boots; gymnastic shoes; galoshes; sandals; slippers; bathing shoes; half-boots; long boots; children's slippers upper; soles, heels; welts for boots and shoes.

However, the earlier mark is registered for jerseys, pullovers, sweaters and all kind of knitted garments; shirts in Class 25. 

According to the Office’s practice, use must be proven for the goods for which the earlier mark is registered and the opposition is based on.

Since the applicant’s statement refers to goods for which the earlier mark is not registered, the request for proof of use is inadmissible. Therefore, the opponent was not under any obligation to submit proof that its earlier Spanish trade mark registration No 896 125 had been put to genuine use.

The assessment of the opposition will continue in relation to the existence or not of likelihood of confusion.

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 Spanish trade mark registration No 896 125.

1. Likelihood of confusion with Spanish trade mark registration No 896 125

1. The goods

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

Class 25: Jerseys, pullovers, sweaters and all kind of knitted garments; shirts.

The contested goods are the following:

Class 25: Footwear, in particular children's footwear; Lace boots; Gymnastic shoes; Galoshes; Sandals; Slippers; Bathing shoes; Half-boots; Long boots; Children's slippers; Upper; Soles for footwear; Heels for footwear; Welts for boots and shoes; Shoe insoles.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, in the applicant’s list of goods 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 regards the contested footwear, in particular children's footwear, the Opposition Division notes that the earlier mark covers different items of clothing, namely, jerseys, pullovers, sweaters and all kind of knitted garments; shirts and that footwear in particular children's footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar.

Since the contested lace boots; gymnastic shoes; galoshes; sandals; slippers; bathing shoes; half-boots; long boots; children's slippers all fall under the broad category of footwear, the same holds true in their regard. Therefore, they are similar to the opponent’s jerseys, pullovers, sweaters and all kind of knitted garments; shirts.

By contrast, the contested upper; soles for footwear; heels for footwear; welts for boots and shoes; shoe insoles all correspond to parts of footwear which have nothing in common with the opponent’s jerseys, pullovers, sweaters and all kind of knitted garments; shirts. Indeed, they do not have the same nature, or purpose as the opponent’s items of clothing. They are neither complementary nor in competition. Finally, they do not usually come from the same undertakings and they are distributed through different channels. Therefore, these goods are dissimilar.

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 similar are directed at the public at large displaying an average degree of attentiveness (08/02/2007, T-88/05, EU:T:2007:45, NARS, § 53).

3. The signs

MAZO
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 which includes the sole element, ‘MAZO’. The element ‘MAZO’ could be understood as referring to a mallet. Since this element has no relation to the goods in question, it is distinctive.

The contested sign is a figurative mark made of a single word element ‘NAZO’ which has no meaning in Spanish – and, hence, is distinctive in the perception of the relevant public – depicted in upper case coloured letters. On top of the letter ‘O’ of the word element ‘NAZO’, a drawing-like representation of a smiling face is displayed.

Bearing in mind that 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 (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37), it is considered that it is the word element ‘NAZO’ which is the most distinctive element of the contested sign. Moreover, ‘NAZO’ is clearly more dominant (visually eye-catching) than the said figurative device.

Visually, the signs coincide in the string of letters ‘*AZO’. However, they differ in the first letter ‘M’ of the element ‘MAZO’ of the earlier mark versus ‘N’ of the contested sign’s element ‘NAZO’. They further differ in the figurative elements and the colours of the contested sign which have no counterparts in the earlier mark.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛*AZO’, present identically in both signs. The pronunciation differs in the sound of the letters ‘M’ of the earlier mark versus ‘N’ of the contested sign.

Both signs include four phonemes of which three (‘*AZO’) are reproduced in the same position and order, therefore, their rhythm and intonation is similar.

Therefore, the signs are aurally similar to a high degree.

Conceptually, the public in the relevant territory will perceive the meaning of the earlier mark ‘MAZO’, as explained above, while the other sign includes the drawing of a smiling face. Since the signs will be associated with different meanings, 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

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).

In the present case, the signs coincide in the string of letters ‘*AZO’ and the additional and differing elements are not sufficient to exclude any likelihood of confusion between the marks. Indeed, in spite of the fact that they differ in their first letters, the signs remain similar to an average degree from a visual point of view and to a high degree from a phonetic point of view on account of the said common letters ‘AZO’.

Moreover, the goods are partly similar and partly dissimilar. Finally, the degree of attention of the relevant public is average and the distinctive character of the earlier mark was deemed average as well.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration No 896 125.

It follows from the above that the contested trade mark must be rejected for the goods found to be 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)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful as regards this earlier mark.

However, the opponent has also based its opposition on two other trade marks, in particular on Spanish trade mark registration No 1 260 464 of the word mark ‘SWEET DE MAZO’ registered for ready-made clothing for women, men and children, including footwear. Therefore, the assessment of the likelihood of confusion as regards this earlier mark will continue in relation to the remaining contested goods.

2. Likelihood of confusion with Spanish trade mark registration No 1 260 464

1. The goods

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

Class 25: Ready-made clothing for women, men and children, including footwear.

The remaining contested goods are the following:

Class 25: Upper; Soles for footwear; Heels for footwear; Welts for boots and shoes; Shoe insoles.

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 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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.

The contested shoe insoles are complementary to the footwear for which the earlier mark owns protection. Moreover, they coincide in usual producers and they are often found in the same retail outlets. In addition, they target the same public. Therefore, the goods are similar.

By contrast, the contested upper; soles for footwear; heels for footwear; welts for boots and shoes; are dissimilar to the opponent’s footwear. Indeed, they have different natures and purposes. Moreover, by contrast with the contested shoe insoles and the opponent’s footwear, they address to shoe producers and they do not usually share the same distribution channels as footwear. Indeed, while shoe insoles can be also bought separately from footwear by the end users, that is, as footwear accessories, these contested goods are parts of footwear which are exclusively bought by professionals for the manufacture of footwear, and therefore are directed at professionals only. In that connection, it is recalled that, by definition, goods intended for different publics cannot be complementary (22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48). Finally, they are not in competition either.  

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 similar are directed at the public at large displaying an average degree of attentiveness (08/02/2007, T-88/05, EU:T:2007:45, NARS, § 53).

3. The signs

SWEET DE MAZO
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 made of three elements, namely ‘SWEET’, ‘DE’ and ‘MAZO’. The element ‘SWEET’, which is an English term, has no meaning in the perception of the Spanish public. Moreover, the element ‘DE’ means ‘of’ in Spanish and finally, as explained above, the element ‘MAZO’ could be understood as referring to a mallet. As none of these elements is descriptive, allusive or otherwise weak in relation to the goods in question, they are distinctive.

As explained above, the contested sign is a figurative mark made of a single word element ‘NAZO’ which has no meaning in Spanish – and, hence, is distinctive in the perception of the relevant public – depicted in upper case coloured letters. On top of the letter ‘O’ of the word element ‘NAZO’, a drawing-like representation of a smiling face is displayed.

As stated above, it is the word element ‘NAZO’ which is the most distinctive and dominant (visually eye-catching) element of the contested sign.

Visually, the signs coincide in the string of letters ‘*AZO’. However, they differ in all remaining elements. In particular, in the additional elements ‘SWEET’ and ‘DE’ of the earlier mark which have no counterpart in the contested sign as well as in the first letter ‘M’ of the element ‘MAZO’ versus ‘N’ of the contested sign’s element ‘NAZO’. They further differ in the figurative elements and colours of the contested sign which have no counterparts in the earlier mark. It is also noted that the signs have a different length and a different structure, which cannot go unnoticed.

Since the coinciding letters ‘*AZO’ are placed at the end of the earlier mark, which is made of three different elements and, hence, fairly long, it is considered that the similarity it provides to the signs is to a large extent offset by the numerous differences that the signs display.

In particular, bearing in mind that consumers generally pay more attention to the beginning of a mark than to its end, it is considered that the visual difference introduced by the distinctive element ‘SWEET’ is particularly relevant. Moreover, the coloured typeface of the contested sign makes it even further depart from the visual impression produced by the earlier mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛*AZO’. The pronunciation differs in the sound produced by the words ‘SWEET’ and ‘DE’ which have no counterparts in the contested sign as well as in the sound of the letters ‘M’ of the earlier mark versus ‘N’ of the contested sign.

Taking into account its position at the end of the earlier mark and its inclusion within the elements ‘MAZO’ and ‘NAZO’ of the earlier mark and the contested sign respectively, it is considered that the coincidence in the string of letters ‘AZO’ is not decisive.

Therefore, the signs are aurally similar to a very low degree.

Conceptually, the public in the relevant territory will perceive the meaning of the earlier mark’s elements ‘DE’ and ‘MAZO’ as explained above, while the other sign refers to the concept of a smiling face. Since the signs will be associated with different meanings, they 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

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).

In the present case, although the signs coincide in the string of letters ‘*AZO’, the additional and differing elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks.

Indeed, generally in clothes and footwear shops, customers can themselves either choose the clothes or shoes 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 an item of clothing or a pair of shoes 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; 08/02/2007, T-88/05, EU:T:2007:45, NARS, § 69).

Consequently, the considerable visual differences between the signs caused by the additional and differing verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them. In the Opposition Division’s view, they are sufficient to counteract the very low degree of visual and aural similarity provided by the common string of letters ‘*AZO’.

Considering all the above, even in the context of similar goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition based on earlier Spanish registration No 1 260 464 must be rejected.

The opponent has also based its opposition on Spanish trade mark registration No 1 719 221 of the figurative mark  registered for ready-made clothing for women, men and children, including footwear.

This other mark is less similar to the contested sign. This is because it contains the same verbal elements as the earlier trade mark that has been compared along with additional figurative elements such as a rectangle with a black background which are not present in the contested sign. Moreover, they cover the same scope of goods. Therefore, the outcome cannot be different; no likelihood of confusion exists with respect to these goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part 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

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Zuzanna STOJKOWICZ

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.