OPPOSITION No B 2 691 080

Rabe Moden GmbH, Bielefelder Str. 40-42, 49176 Hilter, Germany (opponent), represented by Mirko Schober, Gadderbaumer Str. 14, 33602 Bielefeld, Germany (professional representative)

a g a i n s t

True Rebel GmbH, Große Bergstraße 193, 22767 Hamburg, Germany (applicant), represented by Rechtsanwälte Weinert Levermann Heeg, Kattrepel 2, 20095 Hamburg, Germany (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 691 080 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 972 715, namely against all the goods in Class 25 and some of the services in Class 35. The opposition is based on international trade mark registration No 1 072 756 ‘’ designating the European Union, and on German trade mark registration No 302 010 027 418 ‘’. 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 international trade mark registration No 1 072 756 designating the European Union.

1. The goods and services

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

Class 25: Outerclothing for women.

The contested goods and services are the following:

Class 25: Clothing; Headgear; Footwear; Sportswear and leisure wear for children, young people and adults, in particular T-shirts, sweat shirts and pullovers, jackets, caps, scarves, polo shirts, shoes, stockings, gloves, trousers and jackets and leather clothing; Bibs, not of paper; Singlets; Sleepsuits; Belts [clothing].

Class 35: Retailing and wholesaling, and online or catalogue mail order trading, including via the internet, in the fields of headgear, footwear, sportswear and leisurewear for children, adolescents and adults, namely T-shirts, sweatshirts and jumpers (pullovers), jackets, caps (headwear) and hats, collar protectors, polo shirts, shoes, stockings, gloves, trousers and jackets and clothing of leather, bibs, not of paper, singlets, nightgowns, belts (clothing).

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 ‘in particular’, used in the applicant’s list of goods in Class 25 indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of services in Class 35 is exclusive and specifies the scope of protection by listing specific goods to which those services relate.

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 25

The contested clothing includes, as a broader category, the opponent’s outerclothing for women. 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 belts [clothing] overlap with the opponent’s outerclothing for women, both being pieces of clothing, which can be worn by both genders, typically worn over other clothes, especially outdoors. Therefore, these goods are considered identical.

The contested headgear; footwear are similar to the opponent’s outerclothing for women in the identical Class 25. They are all goods that are manufactured to cover, protect and clothe the human body. Therefore, they might easily coincide in end consumers and can all be manufactured by the same undertakings. All the goods at issue can be found in the same shops or in closely connected sections of department stores.

The contested sportswear and leisure wear for young people and adults overlap with the opponent’s outerclothing for women, being pieces of clothing typically worn over other clothes, especially outdoors. Therefore, these goods are considered identical.

However, it should be noted that contrary to the opponent’s argument, the indication that certain goods (in the present case, outerclothing) were intended for women, indeed constitutes a restriction of the goods, and cannot be deemed identical for example with goods intended specifically for children. It follows that the contested sportswear and leisure wear for children are only similar to the opponent’s outerclothing for women. These goods have the same nature and purpose, and may have the same producers and distribution channels.

The contested singlets and sleepsuits are items of clothing typically worn directly on the body, or under other garments. However, these goods have the same nature and methods of use as the opponent’s outerclothing for women, and they also share the same producers, relevant public and distribution channels. Therefore, these goods are similar.

The contested bibs, not of paper are meant to cover and protect the human body or to support other items of clothing. The contested goods and the opponent’s outerclothing for women may coincide in their producers, relevant public and distribution channels. Therefore, the contested goods are similar to a low degree to the opponent’s outerclothing for women.

Contested goods in Class 35

Retail services, wholesale services, internet shopping, catalogue or mail order 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.

The goods covered by the above services and the specific goods covered by the other mark have to be identical in order to find a similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

T-shirts, sweatshirts and jumpers (pullovers), jackets, polo shirts, gloves, trousers and jackets and clothing of leather and belts (clothing) listed in relation to the contested services in Class 35 are included in or overlap with the opponent’s outerclothing for women, thus these goods are considered identical. It follows that the contested retailing and wholesaling, and online or catalogue mail order trading, including via the internet, in the fields of sportswear and leisurewear for children, adolescents and adults, namely T-shirts, sweatshirts and jumpers (pullovers), jackets, polo shirts, gloves, trousers and jackets and clothing of leather, belts (clothing) are similar to a low degree to the opponent’s outerclothing for women.

Headgear, footwear, caps (headwear) and hats, collar protectors, shoes, stockings, bibs, not of paper, singlets, nightgowns cannot be considered identical with the opponent’s outerclothing for women. Consequently, the contested retailing and wholesaling, and online or catalogue mail order trading, including via the internet, in the fields of headgear, footwear, sportswear and leisurewear for children, adolescents and adults, namely caps (headwear) and hats, collar protectors, shoes, stockings, bibs, not of paper, singlets, nightgowns are dissimilar to the opponent’s outerclothing for women.

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 in Class 25 and a part of the services, such as retailing and online or catalogue mail order trading of specific goods in Class 35 found to be identical or similar to the opponent’s goods, are directed at the public at large. Another part of the services, namely wholesale services relating to specific goods in Class 35 may be aimed also at business customers with specific professional knowledge or expertise. The degree of attention is average.

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).

As a preliminary remark, it must be noted that even though the Opposition Division believes that, at first glance, the contested mark will not be immediately perceived as a combination of letters, it has been found appropriate to examine the case in relation to the part of the relevant public that will perceive both device marks as ones incorporating the letters ‘T’ and ‘R’.This constitutes the best case scenario for the opponent.

The earlier mark consists of a simplistic graphic representation of the capital letters ‘T’ and ‘R’, where the second letter ‘R’ is only partially depicted, and forms a continuation of the letter ‘T’. Therefore, the earlier mark will be perceived as the letter combination ‘TR’, which has no meaning for the relevant public and is, therefore, distinctive.

The contested mark is a highly stylised figurative mark, within which the letter ‘R’, written with a calligraphy font is recognisable. Although it is difficult to recognise which letter stands at the beginning of the mark (could be the letter ‘T’, ‘C’, ‘G’, and ‘I’, among others), it is assumed that the first part of the mark is a heavily ornamented letter ‘T’. The letter combination ‘TR’, as stated above, has no meaning for the relevant public, and is, therefore, distinctive. There is a smaller reverse star device in the centre of the sign, which is a commonly used shape within figurative marks. As the consumers tend to focus on the legible part of a trade mark, the star device in the contested mark is deemed secondary. 

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in that both comprise the letters ‘T’ and ‘R’. However, they differ in the style of their graphic representation, as the earlier mark is a simplified, clear design, while the contested mark is written with a calligraphy font, which makes it appear heavily ornamented. Further, the marks differ in the reverse star device placed in the middle of the contested mark, which has no counterpart in the earlier mark.  

Keeping in mind that the signs are short signs, they are considered similar (if at all) to a very low degree from a visual point of view.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛TR’. The smaller reversed star device in the contested mark is not likely to be pronounced.

Therefore, the signs can be considered aurally identical.

Conceptually, the decipherable part ‘TR’ of the signs does not have a meaning for the public in the relevant territory. However, the smaller reverse star device in the centre of the contested sign, which has no counterpart in the earlier mark, constitutes a difference between the marks. Therefore, they are not conceptually similar.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In relation to the goods in Class 25, which are either identical or similar to varying degrees, it has to be said that generally in clothes shops, customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). The same argument applies to the sale of clothing, and to the contested services in Class 35, as the marks are generally displayed on the specific items of clothing themselves, or at least on their packaging, allowing both vendors and customers to distinguish between the goods offered for sale, and forming an essential part of their choice and purchase.

In the present case, the considerable visual differences between the signs caused by their different design and figurative elements are particularly relevant when assessing the likelihood of confusion between them. The Opposition Division considers that, even for the contested goods which are identical to the opponent’s goods, and for which the relevant public’s degree of attention is average, the aural identity of the signs is still not sufficient to outweigh the obvious low degree of visual similarity between them. Furthermore, the signs are not similar from a conceptual perspective.

This finding is supported by the fact that the signs in dispute have only two recognisable letters; thus both are short marks, whereas their different and additional figurative elements, such as the reverse star and the calligraphic style of the letters in the contested sign, are clearly perceivable.

The clear visual differences between the signs will not go unnoticed by the relevant public, and there is no reason to believe that consumers would assume that either the goods in Class 25, or the connecting services found to be similar to a low degree in Class 35 offered under the signs in dispute would originate from the same undertaking or from economically linked undertakings. Consequently, the signs are not sufficiently similar to lead to a likelihood of confusion.

As explained above, a likelihood of confusion does not exist even for consumers who perceive the signs as combinations of the letters ‘T’ and ‘R’, which is the opponent’s best case scenario. It is clear that the signs would be even less similar for consumers that do not perceive the signs as described above, and, for example, would recognise different letters constituting the marks. Therefore, it is safe to say that there will be no likelihood of confusion for any other part of the public either.

Finally, it should be noted that both the applicant and the opponent referred to previous decisions of the General Court and of this Office to support its arguments. However, the previous cases referred to by the parties are not relevant to the present proceedings, either because the signs at issue are not comparable, or because of the different goods and services concerned.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The other earlier right invoked by the opponent, namely German trade mark registration No 302 010 027 418 , is identical with the opponent’s international trade mark registration No 1 072 756 designating the European Union. It also covers the same goods in Class 25 as the opponent’s earlier mark examined above. Furthermore, its relevant public, namely the German-speaking part of the European Union, is included in the wider public of the whole European Union for which the comparison has been carried out above. Therefore, the outcome cannot be different with respect to the German-speaking public, and with respect to the goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services, and the opposition must be rejected regarding this earlier mark also.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Alexandra APOSTOLAKIS

Martin EBERL

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.