OPPOSITION No B 2 752 601

Rabe Moden GmbH, Bielefelder Str. 40-42, 49176 Hilter, Germany (opponent), represented by Thielking & Elbertzhagen Patentanwälte Partnerschaft mbB, Gadderbaumer Str. 14, 33602 Bielefeld, Germany (professional representative)

a g a i n s t

Tattoo Artist di Matteo Cascetti, Via Fratelli Latini 15, 60044 Fabriano, Italy (applicant), represented by Eva Troiani, Via Pasquale Revoltella 35, 00152 Rome, Italy (professional representative).

On 03/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 752 601 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 of European Union trade mark application No 15 338 437, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 14 289 839 and European Union trade mark registration No 10 361 855. 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.

1. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 14 289 839.

1. The goods

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

Class 3: Cosmetics for personal use; Cosmetics; Perfumery.

Class 18: Handbags.

Class 25: Clothing; Hats; Footwear.

The contested goods are the following:

Class 25: Clothing; Footwear; Hats.

Clothing, footwear and hats are identically contained in both lists of goods Class 25.

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 at issue are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

RABE
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 earlier mark is a word mark consisting of the word ‘RABE’, which means ‘raven’ in German (information extracted from the Collins German-English Dictionary online on 22/05/2017 at https://www.collinsdictionary.com/dictionary/german-english/rabe). Therefore, it will be understood by the German-speaking part of the relevant public. The word mark at issue is not descriptive, allusive or otherwise weak for the relevant goods for the German-speaking part of the public, and it has no meaning for the other part of the public. Therefore it is distinctive.

The contested mark is a purely figurative mark depicting a black bird, which may, among others, be perceived as a true to life graphic representation of a raven. It has a normal degree of distinctiveness regarding the goods at issue.

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Visually, the signs are dissimilar. The earlier mark is a word mark, and the contested mark is a purely figurative one, thus the marks have no common or even similar elements to compare.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the German-speaking part of the public, which identifies the graphic representation of a black bird constituting the contested mark as a raven (‘RABE’ in German), the marks under comparison will be conceptually identical. For the rest of the public, the marks will not be conceptually similar since one of the marks has a meaning and the other does not.

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 a part of the public in the relevant territory. For the other part of the public, namely for German-speakers, the earlier mark will have the meaning ‘raven’, which is not descriptive, allusive or otherwise weak for the relevant goods. 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 the present case, all of the contested goods were found to be identical with the opponent’s goods covered in Class 25. The relevant public is a general one, with an average degree of attention, and the distinctiveness of the earlier mark is normal. In the present case, the signs are visually absolutely dissimilar, and their aural comparison is not possible.

Keeping in mind that the contested goods are clothing, footwear and hats, it must be also pointed out 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 clothing items 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). Therefore, the different visual impact of the marks would allow a safe differentiation between the marks at issue even for the German-speaking part of the public, which might perceive the marks as being conceptually identical. This applies all the more for the rest of the public for which the marks are conceptually not similar.

Therefore, on the basis of the foregoing, also taking into account that no enhanced distinctiveness was claimed or proven, it must be held that even on the territory where there is the highest probability of confusion on the part of the consumers, namely the German-speaking part of the public, the significant visual differences between the marks in question are such as to cancel out, to a large extent, their conceptual identity.

Considering all the above, there is no likelihood of confusion on the part of the public even for identical goods. Therefore, the opposition must be rejected as far as it is based on European Union trade mark registration No 14 289 839.

2. The Opposition Division continues to examine the opposition in relation to the opponent’s European Union trade mark registration No 10 361 855.

6. The goods

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

Class 3: Perfumery and cosmetics.

Class 18: Ladies handbags.

Class 25: Ladies’ outerclothing

The contested goods are the following:

Class 25: Clothing; Footwear; Hats.

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.

The contested clothing includes, as a broader category, the opponent’s ladies’ outerclothing. 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 footwear and hats are similar to the opponent’s ladies’ outerclothing 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.

7. 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 and similar are directed at the public at large.

The degree of attention is considered to be average.

8. 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 earlier mark is a figurative mark depicting a stylized black bird with a white wing and a rounded white eye. The contested mark is also a figurative mark, depicting a black bird in a realistic manner, which may, among others, be perceived as a graphic representation of a raven, or at least as a bird. Both marks are distinctive regarding the goods at issue.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Visually, the signs are dissimilar. Aside from their black colour, and a beak turning to the right side, the two graphic representations of a black bird have nothing in common. On the one hand, the earlier mark consists of a highly stylized bird device. Its feathers and most of its body parts are represented in a highly abstract manner if represented at all; indeed it is unclear if the bird is sitting on a branch of a tree or just has big feet. On the other hand, the contested sign is a more detailed, lifelike and realistic representation of a black bird, clearly showing the bird’s posture, wing, tail and legs, and also some of its feathers. The bird in the contested sign is clearly standing alone, there are no other visible objects around it.

Conceptually, both marks depict a black bird, which may be identified by the consumers as various bird species. For that part of the public which identifies both graphic representations as ravens, the marks will be conceptually identical. For the rest of the public, who sees only a bird in both signs, the marks will be conceptually similar, picturing two birds which are typically black.

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

9. 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 mark is a figurative mark, which does not convey any descriptive or allusive meaning in relation to any of the goods in question from the perspective of the part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

10. 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).

Regarding the marks under comparison, the contested goods were found partly identical and partly similar to the opponent’s goods covered in Class 25.

The relevant public is a general one, with an average degree of attention, and the distinctiveness of the earlier mark is normal.

As it has been pointed out in section e) of the present decision, the visual perception of the marks in question will generally take place prior to purchase when the goods at issue are distributed in clothes shops, as the choice of the item of clothing is generally made visually. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion.

In the present case, the signs are visually dissimilar, and their aural comparison is not possible. The different visual impact of the marks allows a safe differentiation between the marks even for those who would perceive the marks as being conceptually identical. For the rest of the public however, the marks would remain visually dissimilar and conceptually similar, which does not result in a likelihood of confusion either, especially where the visual aspect plays a greater role in its global assessment.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on European Union trade mark registration No 10 361 855 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

Adriana VAN ROODEN

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.