OPPOSITION No B 2 661 414

Adler Modemärkte AG, Industriestr. Ost 1-7, 63808 Haibach, Germany (opponent), represented by Christina Hambeck-Joh, Adler Modemärkte AG, Industriestr. Ost 1-7, 63808 Haibach, Germany (employee representative)

a g a i n s t

Venetia Ann Porter, 43 Kempe Road, Queens Park, London NW6 6SP, United Kingdom (applicant), represented by Keltie LLP, No 1, London Bridge, London SE1 9BA, United Kingdom (professional representative).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 661 414 is upheld for all the contested goods, namely:

Class 25: Clothing, headwear, footwear.

2.        European Union trade mark application No 14 748 909 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 748 909, namely all the goods in Class 25. The opposition is based on European Union trade mark registration No 12 339 636. 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

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Clothing, headwear, footwear

The contested goods are identically contained in the opponent’s list of goods (including synonyms).

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 will be average.

3. The signs

THEA	THEA PORTER
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 common element ‘THEA’ is 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 relevant public.

The earlier mark is a word mark made up of a single word, ‘THEA’, which will be perceived by the relevant public as a female given name, as the parties agree. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign is a word mark composed of two verbal elements, ‘THEA’ and ‘PORTER’, which will be perceived by the relevant public as a name and a surname, as the parties agree.

The applicant argues that, according to case-law, it cannot be accepted that any surname which constitutes an earlier trade mark could be effectively relied on to oppose registration of a mark composed of a first name and that surname (24/06/2010, C-51/09 P, Barbara Becker, EU:C:2010:368, § 39). The Opposition Division finds that the reasoning of the applicant is incorrect in view of the context of the case and the judgment. In fact, as stressed several times by the Court of Justice, although it is possible that, in a part of the European Union, surnames have, as a general rule, a more distinctive character than forenames, it is appropriate, however, to take account of factors specific to the case and, in particular, the fact that the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on that distinctive character (24/06/2010, C-51/09 P, Barbara Becker, EU:C:2010:368, § 36). Moreover, the Court of Justice finds in the judgment cited that the General Court erred in law to the extent that it based its assessment of the conceptual similarity of the marks on general considerations without analysing all the relevant factors specific to the case (24/06/2010, C-51/09 P, Barbara Becker, EU:C:2010:368, § 40), specifically the distinctiveness of the surname. In the present case, as is apparent from the evidence filed by the opponent, the surname ‘Porter’ is a very old and common English surname. However, the name ‘Thea’ will be perceived as a foreign name, since it originates from Greek mythology. Moreover, it is more likely to be recognised as the abbreviation of another name, such as ‘Dorothea’, ‘Althea’ or ‘Theodora’, than as an independent name and, therefore, will be perceived by the relevant public as unusual.

The applicant also claims that the contested sign may be perceived as identifying a specific person and, in addition, that this specific person is a famous designer. Account is taken of the fact that the relevant goods target the public at large, not business customers and designers with specific professional knowledge about clothing. It cannot be excluded that a part of the relevant public will associate the contested sign, ‘THEA PORTER’, with the designer. However, the Opposition Division considers that the majority of the relevant public, namely average consumers, will associate the contested sign simply with a name and surname and not with a specific designer, because this would require a relatively comprehensive knowledge of couture.

The applicant filed evidence to prove that ‘Thea’ is common female name often used in relation to clothing and, therefore, that the surname is more important. However, the Opposition Division finds that the evidence submitted by the applicant shows merely that the designation ‘Thea’ is sometimes used in relation to clothing, but it does not prove that it is used as a female name, and certainly it does not prove that the name is common.

Consequently, the Opposition Division finds that the contested sign is composed of a distinctive verbal element, ‘THEA’, and a less distinctive verbal element, ‘PORTER’.

Visually and aurally, the signs coincide in the element ‘THEA’, which appears at the beginning of each sign, and differ in the element ‘PORTER’. This coincidence in four letters corresponding aurally to two syllables is particularly relevant because 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. Account is also taken of the fact that, in the present case, the element of the sign on which the consumers will tend to focus, namely ‘THEA’, is more distinctive than the element ‘PORTER’.

Therefore, 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. Since the majority of the relevant public will not associate the contested sign with the designer Thea Porter, but with name and surname in general, at least to this extent there is conceptual similarity between the signs. Following the case-law invoked by the applicant, when assessing the degree of similarity, account is taken of the fact that although the marks at issue contain the same first name, only one is capable of identifying a specific person by a full name (06/2015, T-559/13, GIOVANNI GALLI (fig.)/ GIOVANNI, EU:T:2015:353, § 92).

Therefore, the signs are conceptually similar to low degree.

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

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.

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 goods are identical. The signs are visually and aurally similar to an average degree and conceptually similar to a low degree.

Account is taken of the fact that the earlier mark has an average degree of distinctiveness and that the signs coincide in the more distinctive element of the contested sign, ‘THEA’, while the differences between the signs are confined to the less distinctive element ‘PORTER’, which will be perceived by the relevant English-speaking public as a common surname, due to its English and Scottish origins and its long history of use.

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). Indeed, considering the identity between the goods, the average degree of attention of the consumers and the fact that the signs coincide in their beginnings, 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, 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 well founded on the basis of the opponent’s European Union trade mark registration No 12 339 636. It follows that the contested trade mark must be rejected for all the contested 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.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Zuzanna STOJKOWICZ

José Antonio GARRIDO OTAOLA

Erkki MÜNTER

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.