OPPOSITION No B 2 658 980

Bunker and Bkr, S.L., Calle Los Reyes, 71, 02640 Almansa (Albacete) Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Stripe International Inc., 2-8 Saiwaicho, Kita-ku, Okayama-shi, Okayama 700-0903

Japan (holder), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 658 980 is partially upheld, namely for the following contested goods and services:

Class 9:        Eyeglasses; sunglasses; goggles for sports; eyeglass frames; eyeglass lenses; contact lenses; eyeglass cases; containers for contact lenses; floating eyeglass retainers; parts and accessories for eyeglasses, namely, eyeglass cases, eyeglass chains, eyeglass cords, nose pads for eyeglasses.

Class 14:        Jewelry; paste jewelry as costume jewelry; jewelry of yellow amber; ivory as jewelry; cloisonne jewelry; pearls as jewelry; beads made of ambroid also known as pressed amber; earrings; necklaces as jewelry; rings as jewelry; bracelets as jewelry; jewelry chains; brooches as jewelry; gem brooches as jewelry; pendants as jewelry; charms as jewelry; ornamental pins; stick pins; tie pins; tie clips; cuff links; badges of precious metal; medals; medallions as jewelry; key rings, being trinkets or fobs, of precious metal; hat ornaments of precious metal; shoe ornaments of precious metal; clocks; watches.

Class 16:        Printed magazines in the field of current events news, sports, music, children's entertainment.

Class 18:        Attaché cases; backpacks; bags for sports; beach bags; boston bags; briefcases; business card cases in the nature of wallets; calling card cases in the nature of wallets; canvas bags for shopping; carry-on bags; coin purses; cosmetic bags sold empty; leather credit card cases; garment bags for travel; gladstone bags; gym bags; handbags; key cases of leather; mesh bags for shopping; leather notecases; pocket wallets; purses; rucksacks; school bags and satchels; shoulder bags; suitcases; tote bags; travelling bags; trunks being luggage; wearable strap-on pouches, namely, waist pouches; umbrellas; parasols.

Class 25:          Clothing, namely, suits, dresses, coats, overcoats, jackets, rainwear, pants, trousers, shorts, jeans, skirts, blouses, shirts, T-shirts, tank tops; vests, sweaters, cardigans, underwear, pajamas, and nightwear; sweat suits; swimwear; ties; scarves; shawls; mufflers; gloves for wear; hand mittens; socks; tights; leggings; sock suspenders; stocking suspenders; braces for clothing; Japanese style clothing being kimonos; sashes; wedding dresses; masquerade costumes; waist belts for clothing; headgear, namely, caps, shower caps, hats, head bands, and visors; footwear, namely, shoes, boots, sports shoes, sandals, beach sandals; slippers, japanese style clogs and sandals.

Class 35:        Retail and wholesale store services and online retail store services for clothing, footwear, headwear, handbags, athletic bags, backpacks, luggage, attache cases, briefcases, carry-on bags, key cases of leather, pocket wallets, purses, travelling bags, waist pouches, cosmetic bags sold empty, umbrellas, parasols, jewelry, watches, clocks, eyewear, recorded compact discs, cell phone straps, printed matter, books, paper, stationery, dental floss, tooth brushes, electric tooth brushes, containers for household use, portable food or beverage containers, beverage bottles for kitchen use, cooking pots and pans, non-electric coffee-makers, kettles, tableware, lunch boxes, thermos bottles, bottle openers, napkin holders, trays, cake servers, perfume burners, shoe brushes, shoehorns, toiletries, pharmaceutical, veterinary and sanitary preparations and medical supplies; advertising; advertising for sales promotion for others; presentation of goods on communication media for advertising purposes; auctioneering; import-export agencies.

2.        International registration No 1 247 790 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 247 790. The opposition is based on European Union trade mark registration No 4 549 952. 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 and services

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

Class 9:        Optical apparatus and instruments; sunglasses; sports glasses; magnetic discs, optical discs; optical compact discs; binoculars.        

Class 25:        Clothing, footwear, headgear; coats; esparto shoes or sandals; dressing gowns; blouses; bodies; boots; ski boots; sacker shoes; underwear; mufflers; socks; beach footwear; footwear for sports; shirts; t-shirts; waistcoats; jackets; ties; articles of clothing made of leather and imitations of leather; skirts; gymnastic shoes; caps; caps (headwear); fittings for footwear; raincoats; jerseys; underclothing; sports jerseys; stockings; footwear uppers; trousers; dress handkerchiefs; parkas; furs (clothing); pyjamas; hosieries; clothing for gymnastics; outer clothing; underwear; sandals; sports shoes; soles for footwear; heels; braces; suits; masquerade costumes; uniforms; slippers, clogs.

Class 35:        Advertising; business management; business administration; office functions; dissemination and distribution of advertising material (leaflets, prospectuses, printed matter, samples); commercial management assistance in relation to franchises; franchise-issuing services in relation to commercial management assistance; business management assistance by means of market research, business and public opinion research, business organisation, business consultancy, commercial reports and research, exclusive agencies, import-export, window dressing: commercial retailing and retailing via global data transmission networks of preparations for cleaning, polishing, scouring, soaps, perfumery, cosmetics, spectacles, CD ROMs, DVDs, jewellery and costume jewellery, watches and timepieces, magazines, goods of leather, bags, suitcases, umbrellas, parasols, footwear and clothing of all kinds, trousers, shirts, T-shirts, jackets, wind jackets, socks, undergarments, sweatshirts, coats, skirts, stockings, clothing, footwear and fashion accessories, sporting and gymnastics articles, gloves, caps, smokers´ articles, games, playthings.

The contested goods and services are the following:

        

Class 9:        Eyeglasses; sunglasses; goggles for sports; eyeglass frames; eyeglass lenses; contact lenses; eyeglass cases; containers for contact lenses; floating eyeglass retainers; parts and accessories for eyeglasses, namely, eyeglass cases, eyeglass chains, eyeglass cords, nose pads for eyeglasses; prerecorded audio discs for music, drama and animation; prerecorded videodiscs for music, drama and animation; cell phone straps; digital books, downloadable; downloadable music files; downloadable image files.

        

Class 14:        Precious metals; precious stones and their imitations; semi-precious stones; gemstones; jewelry; paste jewelry as costume jewelry; diamonds; jewelry of yellow amber; ivory as jewelry; cloisonne jewelry; pearls as jewelry; beads made of ambroid also known as pressed amber; earrings; necklaces as jewelry; rings as jewelry; bracelets as jewelry; jewelry chains; brooches as jewelry; gem brooches as jewelry; pendants as jewelry; charms as jewelry; ornamental pins; stick pins; tie pins; tie clips; cuff links; badges of precious metal; medals; medallions as jewelry; key rings, being trinkets or fobs, of precious metal; jewelry cases in the form of caskets; boxes of precious metal; jewelry boxes; hat ornaments of precious metal; shoe ornaments of precious metal; clocks; watches; straps for wristwatches; watch bands; watch straps; watch chains.

Class 16:        Stationery and study materials, namely, paper stationery, notebooks, albums for holding photographs, envelopes, writing pads, writing paper, writing implements, pens and pencils, ballpoint pens, felt tip pens, mechanical pencils, marking pens as stationery, pen cases, pen stands, clips for letters, erasers, seals being stationery, stickers, document files, binders, and ring binder dividers; rulers as stationery, namely, drafting rulers, square rulers, drawing rulers, and ungraduated rulers; stencils as stationery; labels, not of textile, namely, paper labels, address labels, adhesive labels, bar code labels, mailing labels, shipping labels; ink, namely, correcting fluids [office requisites], fountain pen ink cartridges, india inks, ink for writing instruments, ink pads, stamp inks; ink stands; paper knives for offices; paperweights; bookends as stationery; stamps as seals, namely, sealing stamps, self-adhesive decorative seals; stamps as office requisites, namely, address stamps, date stamps, impression stamps, marking stamps, ink stamps, postage stamps, rubber stamps; tape dispensers; adhesive tapes; memo boards; terrestrial globes; printed matter, namely, greeting cards, post cards, calendars, diaries, address books, wrapping paper, newspapers, maps; printed books and magazines in the field of current events news, sports, music, children's entertainment; paper and cardboard; towels of paper, namely, paper towels; table napkins of paper; hand towels of paper; handkerchiefs of paper; tissues; paper bags.

Class 18:        Attaché cases; backpacks; bags for sports; beach bags; boston bags; briefcases; business card cases in the nature of wallets; calling card cases in the nature of wallets; canvas bags for shopping; carry-on bags; coin purses; cosmetic bags sold empty; leather credit card cases; garment bags for travel; gladstone bags; gym bags; handbags; key cases of leather; mesh bags for shopping; leather notecases; pocket wallets; purses; rucksacks; school bags and satchels; shoulder bags; suitcases; tote bags; travelling bags; trunks being luggage; wearable strap-on pouches, namely, waist pouches; imitation leather; leather and fur, unworked or semi-worked; umbrellas; parasols; umbrella covers.

Class 21:        Dental floss; unworked or semi-worked glass, except building glass; tooth brushes; electric tooth brushes; gloves for household purposes; containers for household use; portable food or beverage containers; industrial beverage bottles of glass or porcelain; beverage bottles for kitchen use; beverage glasses; cooking pots and pans; non-electric coffee-makers; kettles; drinking cups; dishes and plates; salad bowls; soup bowls; dish covers; candy jars; decanters; lunch boxes; jugs; mugs; drinking flasks; thermos bottles; salt and pepper shakers; bottle openers; napkin holders; trays; ladles; cake servers; candlesticks; candle extinguishers; flower pots; watering cans; feeding vessels for pets; bird cages; clothes brushes; boxes of metal for dispensing paper towels; soap dispensers; glass goldfish bowls; toilet paper holders; flower vases; perfume burners; cosmetic utensils; toilet utensils; make-up brushes; perfume sprayers; vanity cases, fitted; soap holders; soap cases of plastic; soap cases of ceramic; hair brushes; combs; shoe brushes; shoehorns.

Class 25:        Clothing, namely, suits, dresses, coats, overcoats, jackets, rainwear, pants, trousers, shorts, jeans, skirts, blouses, shirts, T-shirts, tank tops; vests, sweaters, cardigans, underwear, pajamas, and nightwear; sweat suits; swimwear; ties; scarves; shawls; mufflers; gloves for wear; hand mittens; socks; tights; leggings; sock suspenders; stocking suspenders; braces for clothing; Japanese style clothing being kimonos; sashes; wedding dresses; masquerade costumes; waist belts for clothing; headgear, namely, caps, shower caps, hats, head bands, and visors; footwear, namely, shoes, boots, sports shoes, sandals, beach sandals; slippers, japanese style clogs and sandals.

Class 35:        Retail and wholesale store services and online retail store services for clothing, footwear, headwear, handbags, athletic bags, backpacks, luggage, attache cases, briefcases, carry-on bags, key cases of leather, pocket wallets, purses, travelling bags, waist pouches, cosmetic bags sold empty, umbrellas, parasols, jewelry, watches, clocks, eyewear, recorded compact discs, cell phone straps, printed matter, books, paper, stationery, dental floss, tooth brushes, electric tooth brushes, containers for household use, portable food or beverage containers, beverage bottles for kitchen use, cooking pots and pans, non-electric coffee-makers, kettles, tableware, lunch boxes, thermos bottles, bottle openers, napkin holders, trays, cake servers, perfume burners, shoe brushes, shoehorns, toiletries, pharmaceutical, veterinary and sanitary preparations and medical supplies; advertising; advertising for sales promotion for others; presentation of goods on communication media for advertising purposes; auctioneering; import-export agencies.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

The term ‘namely’, used in the holder’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 9

Sunglasses are identically contained in both lists.

The contested eyeglasses; goggles for sports are all types of glasses which overlap with the opponent´s sunglasses. They are, therefore, identical.

The contested eyeglass lenses; contact lenses are included in the broad category of the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested eyeglass frames; eyeglass cases; floating eyeglass retainers; parts and accessories for eyeglasses, namely, eyeglass cases, eyeglass chains, eyeglass cords, nose pads for eyeglasses are similar to the opponent’s sunglasses, given that these goods are complementary and they are manufactured under the control of the same business entities. Moreover, they are directed at the same public and move over the same distribution channels.

The contested containers for contact lenses are similar to a low degree to the opponent´s optical apparatus and instruments, since the latter encompass contact lenses. They are complementary goods which coincide in distribution channels and manufacturers.

The contested prerecorded audio discs for music, drama and animation; prerecorded video discs for music, drama and animation; digital books, downloadable; downloadable music files; downloadable image files are dissimilar to the opponent´s commercial services, clothing, footwear and headgear, eyewear and optical instruments and even the opponent´s magnetic discs, optical discs; optical compact discs since the latter do not carry any recorded content and are therefore of a different order. The reality of the marketplace is that blank recording media, such as (magnetic) data carriers and compact discs, are very distinct products from media that contain recorded data. In the latter, the recorded data characterises the product and the maker of the medium is irrelevant. The aforementioned goods do not share a nature, intended purpose or usual origin. They are neither complementary, nor are they in competition.

The contested cell phone straps are also dissimilar to the opponent´s commercial services, clothing, footwear and headgear, eyewear and optical instruments. They do not share a nature, intended purpose or usual origin either. They are neither complementary, nor are they in competition.

Goods are in principle different to services including retail services, where the goods sold at retail are not identical to the contested goods covered. Accordingly, the abovementioned contested goods are also dissimilar to the opponent´s retail services in Class 35.

Contested goods in Class 14

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested jewelry; paste jewelry as costume jewelry; jewelry of yellow amber; ivory as jewelry; cloisonne jewelry; pearls as jewelry; beads made of ambroid also known as pressed amber; earrings; necklaces as jewelry; rings as jewelry; bracelets as jewelry; jewelry chains; brooches as jewelry; gem brooches as jewelry; pendants as jewelry; charms as jewelry; ornamental pins; stick pins; tie pins; tie clips; cuff links; badges of precious metal; medals; medallions as jewelry; key rings, being trinkets or fobs, of precious metal; hat ornaments of precious metal; shoe ornaments of precious metal are similar to a low degree to the opponent’s commercial retailing and retailing via global data transmission networks of jewellery and costume jewellery in Class 35. That is because the goods featured in the opponent’s retail services refer to the same goods, or encompass, as broader categories, the abovementioned contested goods.

In the same sense, the contested clocks; watches are similar to a low degree to the opponent’s commercial retailing and retailing via global data transmission networks of watches and timepieces in Class 35.

The contested precious metals; precious stones and their imitations; semi-precious stones; gemstones; diamonds; jewelry cases in the form of caskets; boxes of precious metal; jewelry boxes; straps for wristwatches; watch bands; watch straps; watch chains are dissimilar to the opponent´s eyewear, hardware, clothing, footwear and headgear, business support services or commercial retailing concerning other specific goods. This is because precious metals and stones, being raw materials for jewellery, jewellery boxes and straps/bands/chains for watches have a different nature, purpose, and distribution channels. Their purpose is not to cover the body or protect from the elements, as jewellery, for instance, is for personal adornment. They are neither complementary nor are they in competition.  Consumers will not see them as having the same origin.

Goods are in principle different to services including retail services, even where the goods sold at retail are similar to some of the contested goods covered. Accordingly, the abovementioned contested goods are also dissimilar to the opponent´s services in Class 35.

Contested goods in Class 16

For the same reasons as given above in the comparison of goods in Class 14, the contested printed magazines in the field of current events news, sports, music, children's entertainment are similar to a low degree to the opponent’s commercial retailing and retailing via global data transmission networks of magazines in Class 35, since the goods featured in the opponent’s retail services include, as a broader category, the contested specific magazines.

The contested stationery and study materials, namely, paper stationery, notebooks, albums for holding photographs, envelopes, writing pads, writing paper, writing implements, pens and pencils, ballpoint pens, felt tip pens, mechanical pencils, marking pens as stationery, pen cases, pen stands, clips for letters, erasers, seals being stationery, stickers, document files, binders, and ring binder dividers; rulers as stationery, namely, drafting rulers, square rulers, drawing rulers, and ungraduated rulers; stencils as stationery; labels, not of textile, namely, paper labels, address labels, adhesive labels, bar code labels, mailing labels, shipping labels; ink, namely, correcting fluids [office requisites], fountain pen ink cartridges, india inks, ink for writing instruments, ink pads, stamp inks; ink stands; paper knives for offices; paperweights; bookends as stationery; stamps as seals, namely, sealing stamps, self-adhesive decorative seals; stamps as office requisites, namely, address stamps, date stamps, impression stamps, marking stamps, ink stamps, postage stamps, rubber stamps; tape dispensers; adhesive tapes; memo boards; terrestrial globes; printed matter, namely, greeting cards, post cards, calendars, diaries, address books, wrapping paper, newspapers, maps; printed books in the field of current events news, sports, music, children's entertainment; paper and cardboard; towels of paper, namely, paper towels; table napkins of paper; hand towels of paper; handkerchiefs of paper; tissues; paper bags are all stationery and study materials, office requisites, printed matter and paper and goods made of paper which are dissimilar to the opponent´s eyewear, hardware, clothing, footwear and headgear, business support services or commercial retailing concerning other specific goods, as they have a different nature, purpose, and distribution channels. They are neither complementary nor are they in competition.  Consumers will not see them as having the same origin.

Goods are in principle different to services including retail services, even where the goods sold at retail are similar to some of the contested goods covered. Accordingly, the abovementioned contested goods are also dissimilar to the opponent´s services in Class 35.

Contested goods in Class 18 

The contested attaché cases; backpacks; bags for sports; beach bags; boston bags; briefcases; business card cases in the nature of wallets; calling card cases in the nature of wallets; coin purses; leather credit card cases; gym bags; handbags; key cases of leather; leather notecases; pocket wallets; purses; rucksacks; shoulder bags; tote bags; wearable strap-on pouches, namely, waist pouches are considered to be similar to the opponent´s clothing in Class 25. They are likely to be considered by the consumers as aesthetically complementary accessories to articles of outer clothing because they are closely coordinated with these articles, may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets.

For the same reasons as given above in the comparison of goods in Class 14, the contested canvas bags for shopping; carry-on bags; cosmetic bags sold empty; garment bags for travel; gladstone bags; mesh bags for shopping; school bags and satchels; travelling bags are similar to a low degree to the opponent’s commercial retailing and retailing via global data transmission networks of bags in Class 35, since the goods featured in the opponent’s retail services include, as a broader category, the contested specific types of bags.

It follows that the contested suitcases; trunks being luggage are similar to a low degree to the opponent’s commercial retailing and retailing via global data transmission networks of suitcases in Class 35, given that trunks [luggage] cannot be clearly separated from suitcases.

In the same vein, the contested umbrellas; parasols are similar to a low degree to the opponent’s commercial retailing and retailing via global data transmission networks of umbrellas, parasols in Class 35.

However, the contested imitation leather; leather and fur, unworked or semi-worked refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for footwear or clothing) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s goods in Class 25. They have no relevant connection with any other of the opponent’s goods or services either. They are not identical to the goods featured in the opponent’s retail services. Clearly different in nature and purpose, they are directed at different publics and move over different distribution channels. Therefore, these goods are dissimilar.

The same applies also to the contested umbrella covers. The mere fact that they are similar to umbrellas which are the object of the opponent’s retail services does not lead to the finding of similarity. These goods are clearly different in nature and purpose, usual origin and distribution channels. Therefore, they are dissimilar to all of the opponent’s goods and services.

Contested goods in Class 21

The contested dental floss; unworked or semi-worked glass, except building glass; tooth brushes; electric tooth brushes; gloves for household purposes; containers for household use; portable food or beverage containers; industrial beverage bottles of glass or porcelain; beverage bottles for kitchen use; beverage glasses; cooking pots and pans; non-electric coffee-makers; kettles; drinking cups; dishes and plates; salad bowls; soup bowls; dish covers; candy jars; decanters; lunch boxes; jugs; mugs; drinking flasks; thermos bottles; salt and pepper shakers; bottle openers; napkin holders; trays; ladles; cake servers; candlesticks; candle extinguishers; flower pots; watering cans; feeding vessels for pets; bird cages; clothes brushes; boxes of metal for dispensing paper towels; soap dispensers; glass goldfish bowls; toilet paper holders; flower vases; perfume burners; cosmetic utensils; toilet utensils; make-up brushes; perfume sprayers; vanity cases, fitted; soap holders; soap cases of plastic; soap cases of ceramic; hair brushes; combs; shoe brushes; shoehorns are all household and domestic utensils and containers, including personal grooming apparatus, which are dissimilar to the opponent´s eyewear, hardware, clothing, footwear and headgear, business support services or commercial retailing concerning other specific goods, as they have a different nature, purpose, and distribution channels. They are neither complementary nor are they in competition. Consumers will not see them as having the same origin.

Goods are in principle different to services including retail services, even where the goods sold at retail are similar to some of the contested goods covered. Accordingly, the contested goods in Class 21 are also dissimilar to the opponent´s services in Class 35.

Contested goods in Class 25 

The contested clothing, namely, suits, dresses, coats, overcoats, jackets, rainwear, pants, trousers, shorts, jeans, skirts, blouses, shirts, T-shirts, tank tops are included in the broad category of the opponent´s clothing. Therefore, they are identical, as are the contested vests, sweaters, cardigans, underwear, pajamas, and nightwear; sweat suits; swimwear; ties; scarves; shawls; mufflers; gloves for wear; hand mittens; socks; tights; leggings; sock suspenders; stocking suspenders; braces for clothing; Japanese style clothing being kimonos; sashes; wedding dresses; masquerade costumes; and waist belts for clothing. 

The contested headgear, namely, caps, shower caps, hats, head bands, and visors are included in the broad category of the opponent´s headgear. Therefore, they are identical.

The contested footwear, namely, shoes, boots, sports shoes, sandals, beach sandals; slippers, japanese style clogs and sandals are included in the broad category of the opponent´s footwear. Therefore, they are identical.

Contested services in Class 35 

Advertising is identically contained in both lists.

The contested advertising for sales promotion for others; and presentation of goods on communication media for advertising purposes are included in the broad category of the opponent´s advertising. They are, therefore, identical.

The contested import-export agencies refer to the same services as the opponent’s import-export. They are identical.

The contested retail store services and online retail store services for clothing, footwear refer to the same commercial activities and are, therefore, identical to the opponent’s commercial retailing and retailing via global data transmission networks of clothing, footwear.

The contested retail store services and online retail store services for headwear cannot be clearly separated from the opponent’s commercial retailing and retailing via global data transmission networks of caps. Therefore, they are considered identical.

The contested retail store services and online retail store services for handbags, athletic bags, backpacks, luggage, attache cases, briefcases, carry-on bags, key cases of leather, pocket wallets, purses, travelling bags, waist pouches, cosmetic bags sold empty cannot be clearly separated from the opponent’s commercial retailing and retailing via global data transmission networks of goods of leather, bags, suitcases. Therefore, they are considered identical.

The contested retail store services and online retail store services for umbrellas, parasols refer to the same services as the opponent’s commercial retailing and retailing via global data transmission networks of umbrellas, parasols. Therefore, they are considered identical.

The contested retail store services and online retail store services for jewelry, watches, clocks refer to the same services as the opponent’s commercial retailing and retailing via global data transmission networks of jewellery, watches and timepieces. Therefore, they are considered identical.

The contested retail store services and online retail store services for eyewear refer to the same services as the opponent’s commercial retailing and retailing via global data transmission networks of spectacles. Therefore, they are considered identical.

The contested retail store services and online retail store services for printed matter overlap with the opponent’s commercial retailing and retailing via global data transmission networks of magazines. Therefore, they are considered identical.

The contested retail store services and online retail store services for toiletries overlap with the opponent’s commercial retailing and retailing via global data transmission networks of perfumery, cosmetics. Therefore, they are considered identical.

The contested retail store services and online retail store services for recorded compact discs, cell phone straps, books, paper, stationery, dental floss, tooth brushes, electric tooth brushes, containers for household use, portable food or beverage containers, beverage bottles for kitchen use, cooking pots and pans, non-electric coffee-makers, kettles, tableware, lunch boxes, thermos bottles, bottle openers, napkin holders, trays, cake servers, perfume burners, shoe brushes, shoehorns are considered similar to the opponent’s commercial retailing and retailing via global data transmission networks of clothing, footwear; and the contested retail store services and online retail store services for pharmaceutical, veterinary and sanitary preparations and medical supplies are considered similar to the opponent’s commercial retailing and retailing via global data transmission networks of cosmetics. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they can coincide in relevant public and distribution channels.

The contested wholesale store services for clothing, footwear, headwear, handbags, athletic bags, backpacks, luggage, attache cases, briefcases, carry-on bags, key cases of leather, pocket wallets, purses, travelling bags, waist pouches, cosmetic bags sold empty, umbrellas, parasols, jewelry, watches, clocks, eyewear, printed matter, toiletries are similar to the opponent’s commercial retailing and retailing via global data transmission networks of perfumery, cosmetics, spectacles, jewellery, watches and timepieces, magazines, goods of leather, bags, suitcases, umbrellas, parasols, clothing, footwear and fashion accessories, caps, since the goods that these services relate to are identical. Wholesaling is selling goods to other undertakings (retailers) which then sell the goods to end consumers. Even though the relevant public and distribution channels are different, these services have the same nature and purpose and they are complementary to each other. Moreover, wholesalers sometimes also provide retail services and thus, the commercial origin of these services can be the same.

The contested wholesale store services for recorded compact discs, cell phone straps, books, paper, stationery, dental floss, tooth brushes, electric tooth brushes, containers for household use, portable food or beverage containers, beverage bottles for kitchen use, cooking pots and pans, non-electric coffee-makers, kettles, tableware, lunch boxes, thermos bottles, bottle openers, napkin holders, trays, cake servers, perfume burners, shoe brushes, shoehorns are considered similar to a low degree to the opponent’s commercial retailing and retailing via global data transmission networks of clothing, footwear; and the contested wholesale store services for pharmaceutical, veterinary and sanitary preparations and medical supplies are considered similar to a low degree to the opponent’s commercial retailing and retailing via global data transmission networks of cosmetics. These services have a similar nature and they coincide in purpose insofar as they are activities rendered around the sales of goods. Moreover, wholesalers sometimes also provide retail services and thus, the commercial origin of these services can be the same.

The contested auctioneering is similar to the opponent’s commercial retailing and retailing via global data transmission networks of jewellery. Auctioneering entails the arranging of bidding and selling to the highest bidder. Jewellery is a typical example of items being sold in auctions. Therefore, these services have a similar purpose and they can be of interest to the same public. Moreover, there are certain points of sale where both services are being offered, for instance on online auction sites.

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased goods and services.

3. The signs

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 verbal element of the earlier mark is meaningful and accounts for a conceptual similarity between the signs in certain territories, for example in those countries where English is undersood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a figurative mark containing the verbal element “SATIS-FASHION” depicted in bold, black font. Although it is visually divided into “SATIS” and “FASHION” which are separated by a hyphen, it will not be perceived by the relevant public as a mere combination of the individual words. Instead, it will be perceived as the combined unity “SATISFASHION”. The verbal element is placed below an abstract figurative device which depicts intersecting curvilinear forms and contours. The word “SATIS-FASHION” has a stronger impact, given that the public tends to refer to figurative signs by their verbal elements.

The contested figurative sign is made up of the word “SATISFASHION”, depicted in a fairly standard, bold, black font.

Although the word “fashion” refers to the area of activity that involves styles of clothing and appearance (Collins English dictionary) and possesses limited distinctiveness in relation to some of the goods and services in question, the relevant public will perceive the verbal element ‘SATISFASHION’, present in the signs with or without the hyphen, as a portmanteau consisting of a blend of the word “fashion” and the word “satisfaction”, the latter meaning the pleasure that you feel when you do something or get something that you wanted or needed to do or get (Collins English dictionary). The blend is fanciful and inventive. Therefore, in both signs this verbal element as a whole enjoys an average degree of distinctiveness in relation to all of the goods and services at issue. That, in conjunction with the fact that the earlier mark’s figurative element lacks any specific semantic content, renders the signs conceptually identical. It follows that the earlier mark’s figurative element will not be pronounced and the signs are also aurally identical.

Neither sign has a dominant element.

Visually, the signs coincide in the distinctive verbal element ‘SATIS(-)FASHION’, which differ only in the font and the hyphen of the earlier mark. The earlier mark also differs to the contested mark in that it contains a figurative element. The marks are highly similar visually, given that consumers tend to pay more attention to verbal elements as previously stated (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

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, even though the earlier trade mark comprises a word blend which includes the term “fashion” which is of limited distinctiveness, the distinctiveness of the earlier mark must be seen as normal when perceived as a whole.

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).

The signs are aurally and conceptually identical, and highly visually similar. Part of the contested goods and services are identical and part similar, to varying degrees, to those of the earlier mark. The abovementioned interdependence principle is especially important regarding those goods and services that are similar to a low degree only.

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.

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).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In the present case, based on the average degree of inherent distinctiveness of the earlier mark and taking into account all the relevant circumstances of the case, it can be reasonably concluded that the relevant public can perceive the contested sign as a configuration of the earlier mark or vice versa. The differences identified between the signs are insufficient to enable the average consumers, be it the general public or professionals, to safely distinguish between the signs, even where the degree of attention is high when purchasing the goods or services. Thus the public can be led to believe that the contested goods and services that have been found identical or similar to those of the earlier mark are offered by the same undertaking, or an economically linked undertaking. The strong similarity between the signs is clearly sufficient to offset the lesser degree of similarity between some of the goods and services.

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 and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 4 549 952. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, even to a low degree, 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) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

For the sake of completeness, as regards the dissimilar goods, there is no need to further proceed to the comparison of the signs for the remaining part of the relevant public since the outcome of the present decision would still be the same.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Biruté SATAITE-GONZALEZ

Keeva DOHERTY

Solveiga BIEZA

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.