OPPOSITION No B 2 771 387

Chocoland, besloten vennootschap met beperkte aansprakelijkheid, Oudenaardestraat 162 b, 9870 Zulte (Olsene), Belgium (opponent), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative).

a g a i n s t

Pedro Merino Baylos and David Gómez Sánchez, Calle Oria 13, 28002 Madrid, Spain (applicants).  

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 771 387 is upheld for all the contested goods.

2.        European Union trade mark application No 15 462 989 is rejected in its entirety.

3.        The applicants bear the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 462 989, . The opposition is based on inter alia, Benelux trade mark registration No 968 185,  . 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 Benelux trade mark registration No 968 185.

1. The goods

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

Class 25:        Clothing, sportswear and casual wear, headwear, footwear.

The contested goods are the following:

Class 25:        Footwear.

Footwear is identically contained in both lists of goods.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large.

The degree of attention is considered average.  

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T-33/03, Hai/Shark, EU:T:2005:89, § 39 and 03/03/2004, T-355/02, SIR / ZIHR, EU:T:2004:62 § 36).

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the Benelux countries, for which the signs are more similar overall.  

The public under analysis will perceive the signs’ common verbal element ‘Snake’, depicted in relatively standard fonts in both signs, as meaningless and distinctive. The following word element of the earlier mark, ‘man’, depicted in relatively standard letters, is a basic English word and has also the same meaning in Dutch and German (”Mann”), languages spoken in the territories under examination. Consequently, ‘man’ will be understood by the majority of the non-English-speaking part of the public as a weak element for footwear, namely as alluding to ‘footwear for men’. The figurative element of the earlier mark, depicting a snake’s head seen from the side, also alludes to the goods (and is weak), since footwear can be made of snakeskin. The capital ‘S’, placed after ‘Snake’ in the contested sign, will not give any direct associations in relation to the goods; therefore, it is distinctive. However, it may be perceived as indicating plural. Finally, ‘1899’ will be perceived as the founding year of the earlier mark and as an element with little trade mark significance. That is also the case for ‘Est. 2016’ in the contested sign, which is depicted in a considerably smaller font, compared to ‘SnakeS’, and will, therefore, be perceived as a negligible element in the sign.

Visually, the signs coincide in the string of letters ‘S-n-a-k-e’ and differ in the verbal element ‘man’ (in the earlier mark), the letter ‘S’ (in the contested sign) and their figurative and graphical representations. However, ‘Snake’ is the initial verbal element of both signs whereas ‘man’ is weak in the earlier mark (as explained above). Furthermore, ‘Snake’ is the element that first catches the attention of the reader, since the public reads from left to right, and consumers generally tend to focus on the word elements of signs, in particular on those placed at the beginning of a sign. Indeed, when signs consist of both verbal and figurative components (which in this case are decorative and/or weak), in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). The year ‘1899’, which will be perceived as the founding year of the earlier mark, and the letter ‘S’, being merely a single letter in the contested sign (also often used to indicate plural, as stated above), have less impact on the visual comparison of signs. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the sign’s common element ‘snake’ will be pronounced first in both signs, followed by ‘man’ in the earlier mark and the letter ‘S’ in the contested sign. Moreover, ‘Snake’ will be pronounced in two more letters than the differing element ‘man’ in the earlier mark and is, apart from the additional and final ‘S’, the only element to be pronounced in the contested sign; neither ‘1899’ and ‘Est. 2016’ are likely to be pronounced in the signs (for the reasons explained above). Consequently, the signs are at least similar to an average degree.  

Conceptually, the signs’ common verbal element will not be perceived as conveying any concept by the public under analysis. The majority of the public (at least the Dutch- and the German- speaking part) will perceive ‘man’ as alluding to ‘footwear for men’ in the earlier mark (hence, as a weak element), while the sign’s figurative snake’s head will also be perceived as weak, since it alludes to that the goods in question are made of snakeskin. Moreover, the contested sign is composed of an additional letter (‘S’), which does not convey any obvious meaning in relation to the goods (although the letter is commonly used to indicate plural) whereas ‘Est. 2016’ is negligible in the sign. Finally, the year ‘1899’ will be understood as a reference to the founding year of the earlier mark. Therefore, the signs are conceptually not similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods are identical. The signs are visually and (at least) aurally similar to an average degree, while the signs are conceptually not similar for the public taken into account. Considering that the signs mainly differ in weak concepts (i.e. ‘man’, insofar understood by the consumers, a snake’s head and the founding year of the earlier mark), leaving the additional letter ‘S’ of the contested sign to be the only distinctive concept that differentiates the signs, such conceptual differences cannot outweigh the visual and aural similarities between the signs under comparison and the fact that the conflicting goods are identical. In this regard, reference is made to the principle of interdependence (as explained above) and the fact that the earlier mark is distinctive (as a whole) and that the degree of attention by the relevant public is average. Account is also 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).

Considering all the above, there is a likelihood of confusion on the part of the non-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 Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 968 185. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicants are 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

Benoit VLEMINCQ

Christian RUUD

Adriana VAN ROODEN

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.