OPPOSITION No B 2 767 054

One Step, 94 Rue Choletaise Saint-Macaire-en-Mauges, 49450 Sèvremoine, France  (opponent), represented by Cabinet Bouchara – Avocats, 17 Rue du Colisée, 75008 Paris, France (professional representative)

a g a i n s t

Zeugs GmbH, Kurfürstendamm 167/168, 10707 Berlin, Germany (applicant), represented by Timothy Krüger, Schlüterstr. 42, 10707 Berlin, Germany (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 767 054 is partially upheld, namely for the following contested goods:

Class 18: Luggage, bags, wallets and other carriers; saddlery, whips and animal apparel; boxes of leather; chin straps, of leather; cases of leather; boxes made of leather; industrial packaging containers of leather; shoulder straps; shoulder belts [straps] of leather; shoulder belts; straps for skates; studs of leather.

Class 25: Clothing; headgear; footwear.

2.        European Union trade mark application No 15 468 101 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 some of the goods of European Union trade mark application No 15 468 101 for the word mark ‘ONE SMALL STEP’, namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 5 629 217 for the word mark ‘ONE STEP’. 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 5 629 217.

1. The goods

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

Class 18:        Handbags, food bags, travelling bags, bags (envelopes, pouches) of leather for packaging, leather goods, purses, not of precious metal, travelling bags, travelling sets, briefcases, satchels, key wallets, card cases, briefcases.

The contested goods are the following:

Class 18:        Luggage, bags, wallets and other carriers; umbrellas and parasols; walking sticks; saddlery, whips and animal apparel; chamois leather, other than for cleaning purposes; kid; boxes of leather or leatherboard; chin straps, of leather; faux fur; cases of leather or leatherboard; boxes made of leather; industrial packaging containers of leather; shoulder straps; shoulder belts [straps] of leather; shoulder belts; straps for skates; straps made of imitation leather; leather for harnesses; leatherboard; studs of leather.

Class 25:        Clothing; headgear; footwear.

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.

Contested goods in Class 18

The contested luggage includes, as broader category, or overlap with, the opponent’s travelling bags. 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 bags, carriers (other than wallets) include, as broader categories the opponent’s handbags. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested wallets are similar to a high degree to the opponent’s handbags, as they have the same general purpose (i.e. carrying objects) and can have the same producers, distribution channels and relevant public.

The contested saddlery, whips and animal apparel; boxes of leather; chin straps, of leather; cases of leather; boxes made of leather; industrial packaging containers of leather; shoulder straps; shoulder belts [straps] of leather; shoulder belts; straps for skates; studs of leather are goods that are or can be made of leather.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), ‘leather goods’ in Class 18 lack the clarity and precision to specify the scope of protection that they give as they do not provide a clear indication of what goods are covered. Leather goods can have different characteristics or different purposes, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors. The common element to all these goods is the fact that they are made of the same material, namely treated animal skin.

When comparing the opponent´s leather goods to the goods mentioned above, the nature can be considered the same in a very broad sense, since they are made of the same material and to that extent these goods are considered similar to a low degree, but in the absence of any express limitation clarifying the vague term, it cannot be assumed that they are produced by the same companies, that their methods of use coincide, or that they share the same distribution channels or that they are in competition or complementary.

The contested umbrellas and parasols are respectively devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod and light umbrellas carried for protection from the sun. The contested walking sticks are canes or other staffs used as aids for walking. The contested chamois leather, other than for cleaning purposes; kid; leather for harnesses; leatherboard are raw materials. The contested boxes of leatherboard; cases leatherboard; straps made of imitation leather are goods of various nature made of materials similar to leather. The contested faux fur consists of synthetic fibres designed to resemble fur. These goods are considered dissimilar to the opponent’s goods in Classes 18 that are essentially carriers and leather goods. These goods do not have the same natures and do not satisfy the same needs. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary.

Contested goods in Class 25

The contested clothing; headgear; footwear are similar to the opponent’s handbags in Class 18, as they can coincide in producers, end users, distribution channels and, with regard to clothing only, they are complementary.

Indeed, clothing; headgear; footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion, to which the opponent’s goods are related. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of outer clothing, headgear and even footwear as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing, headgear and footwear to directly produce and market handbags. Moreover, these goods can be found in the same retail outlets.

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 or similar to various degrees are directed at the public at large. The degree of attention is average.

3. The signs

ONE STEP	ONE SMALL STEP
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 marks are meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the United Kingdom, Ireland and Malta.

Both the earlier mark and the contested sign are word marks, which means that it is the word as such that is protected, irrespective of the form it is written. The marks both include the words ‘ONE’ and ‘STEP’, which will be perceived by the relevant public as a cardinal number and the word indicating the movement carried out when walking/running or a flat surface used when moving from level to another (typically in a building). Regardless of whether they are read individually or in combination, the elements do not have any connection with the relevant goods; therefore, they are distinctive.

The additional word ‘SMALL’ of the contested sign will be understood by the relevant public as an adjective meaning ‘of limited dimension’. If considered individually, the word ‘SMALL’ may be perceived as describing the size of the goods at issue and in this case, it will have a limited degree of distinctive character. However, consumers normally perceive a mark as a whole and do not proceed to analyse its various elements. Therefore, the contested sign will be perceived as a logical and conceptual unit, in which the adjective ‘SMALL’ qualifies the noun following it, namely ‘STEP’. Consequently, even being distinctive due to the lack of any connection with the relevant goods, the element plays a less significant role than the words ‘ONE’ and ‘STEP’, in the present comparison.

Due to the verbal nature of the marks, there are no elements that could be considered more dominant (visually eye-catching) than other elements.

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. Therefore, the coincidence in the beginning of the marks has certain relevance in the present comparison.

Visually and aurally, the signs coincide in the letters/sounds ‘ONE’ and ‘STEP’. They differ in the central element of the contested sign, ‘SMALL’. This difference is, however, placed in the middle of the signs, surrounded by the same letters/phonemes than the earlier mark, placed in the same order. Therefore, considering that the earlier mark is reproduced in the contested sign and that the initial elements of the signs coincide, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The marks are conceptually similar to an average degree, since they coincide in the elements ‘ONE’ and ‘STEP’. They differ in the additional element of the contested sign ‘SMALL’, which, however, merely qualifies the word ‘STEP’, hence does not play an independent role in the present comparison.

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 its observations of 17/03/2017, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘ONE STEP’. In support of its argument the applicant refers to 23 trade mark registrations in France and 43 in the European Union. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. Moreover, the applicant merely mentions such registrations, without having provided any evidence (e.g. extracts of databases). It follows that there is no element that demonstrates that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘ONE STEP’. Under these circumstances, the applicant’s claims must be set aside.

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 relevant goods are party identical, partly similar to various degrees and partly dissimilar. They target the general public, whose level of attention is average. The earlier trade mark enjoys a normal degree of distinctiveness.

The signs in dispute are visually, aurally and conceptually similar to an average degree due to the coincidences in the elements ‘ONE’ and ‘STEP’, present identically in both signs. The difference between the signs lies exclusively in the additional element ‘SMALL’ of the contested sign, which is not only in the middle of the marks, where consumers do not tend to focus their attention, but also plays the role of a mere qualifier of the following noun ‘STEP’, hence has less importance than the other elements of the mark. In view of the above and considering that the earlier mark is entirely reproduced in the contested sign, the mentioned differing element may be overlooked by the relevant public.

In addition, account must be 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (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 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 the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 5 629 217. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

This also applies to the goods found similar to a low degree. 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 Opposition division considers that the similarities observed between the signs are sufficient to counteract the low level of similarity between some of the relevant goods.

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.

The opponent has also based its opposition on the following earlier trade marks:

• French trade mark registration No 1 689 746, ‘ONE STEP’, for goods in Class 25;
• French trade mark registration No 63 444 625, ‘ONE STEP’ for goods in Class 18.

French trade mark registration No 1 689 746, ‘ONE STEP’ is identical to the one which has been compared and covers goods in Class 25, namely clothes, shoes, headgear, which are clearly different to the goods that were already found dissimilar to the other opponent’s goods in Class 18 and that were already defined above. In fact these goods and the opponent’s goods do not have the same nature and purpose; they do not target the same public, they are not produced by the same undertakings or sold in the same outlets. Moreover, they are not complementary or in competition with each other.

As regards the French trade mark registration No 63 444 625, it is identical to the one which has been compared and covers the same scope of goods in Class 18.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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

Birgit FILTENBORG

Orsola LAMBERTI

Michele M. BENEDETTI-ALOISI

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.