OPPOSITION No B 2 652 033

Marcus Europe A/S, Erhvervsparken 4, Ø Bjerregrav, 8920  Randers NV, Denmark (opponent), represented by Løje, Arnesen & Meedom Advokatpartnerselskab, Øster Allé 42, 6,  2100  København Ø, Denmark (professional representative)

a g a i n s t

Central Lobão Ferramentas Eléctricas S.A., Rua da Gândara Nº 664, 4520-606 São João de Ver – Feira, Portugal (holder).

On 23/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 652 033 is upheld for all the contested goods, namely 

Class 25:        Work boots; work shoes; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; rain suits; waterproof clothing; rubber boots.

2.        International registration No 1 245 129 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 245 129, namely against all the goods in Class 25. The opposition is based on, inter alia, international trade mark registration No 1 053 050 designating the European Union. 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 1 053 050 designating the European Union.

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:        Work boots; work shoes; clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; rain suits; waterproof clothing; rubber boots.

The contested work boots; work shoes; rubber boots are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested clothing, not being protective clothing, incorporating reflective or fluorescent elements or material; rain suits; waterproof clothing are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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 and the professional public. The degree of attention is considered to be 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).

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). This applies by analogy to international registrations designating the European Union. 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 ‘VITO’ is not meaningful in certain territories, for example, in Denmark and Poland, where this term will have no meaning and will not be recognised as an Italian first name. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Danish- and Polish- speaking part of the public.

The earlier sign is a figurative mark consisting of the verbal elements ‘V’, ‘VITO’ and ‘DON’. All verbal elements are represented in black colour, in upper case letters and in a standard bold typeface, with the exception of the stylisation of the first ‘V’, which is also represented in a bigger size than the second verbal element ‘VITO’. Furthermore, the verbal element ‘DON’ – placed between the first ‘V’ and the verbal element ‘VITO’ – is so small as to be barely legible. It is not noticeable at first sight and hardly perceptible. Therefore, it is likely to be disregarded by the relevant public. Consequently, the Opposition Division considers it a negligible element and will not take it into account for the purposes of the actual comparison (12/06/07, C-334/05 P, Limoncello, EU:C:2007:333, § 42).

The contested sign is a figurative mark consisting of the verbal element ‘VITO’ in black, bold, upper case letters and in a fairly standard typeface (the slight stylisation of the letters being barely perceptible, as it merely consists in the fact that the letters touch each other in the upper part of their main bodies). Above the letter ‘I’ is placed a figurative element, consisting of a circular device in which appears the representation of what seems to be the head of a barking or howling animal, in white colour, positioned against a yellow circular background.

All the elements of which the signs at issue are composed are considered distinctive, and none of them could be considered clearly more distinctive or dominant than other elements.

Nevertheless, when signs consist of both verbal and figurative components, 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). In the present case, the common verbal component ‘VITO’, in bold black typeface, will certainly have a stronger impact on the consumers than the figurative aspects (i.e. the stylised additional letter ’V’ in the earlier mark, the stylisation of the letters and the smaller figurative element in the contested mark).

Visually, the signs coincide in the four-letter string ‘VITO’, which form the only verbal element in the contested mark. This common element is furthermore represented in both signs in bold and black, upper case letters and in an almost identical, standard, typeface. In essence, the signs differ in the additional stylised letter ‘V’ before ‘VITO’ in the earlier mark and in the figurative device, of a smaller size, in the contested mark.

Therefore, the marks at issue are visually at similar to a high degree. The additional letter ‘V’ of the earlier mark, even if placed at the beginning, to which consumers usually pay more attention, do not create sufficient differences to offset this similarity, and nor do the slight stylisation of the letters and the figurative element in the contested sign.  

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VITO’, present identically in both signs, and therefore the marks are aurally practically identical. The pronunciation might only differ in the sound of the additional initial letter ‘V’ of the earlier mark (if pronounced at all), which has no counterpart in the contested sign. Therefore, the signs are similar at least to a high degree.

Conceptually, only the figurative element in the contested sign representing the image of an animal has a meaning for the public in the relevant territories: to this extent the signs are not conceptually similar. The signs overlap in the distinctive element ‘VITO’ that does not have any meaning and is the element that will have the strongest impact on the consumers: to this extent, the conceptual aspect does not influence the assessment of the similarity of the signs.

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).

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.

In the present case, the goods are identical and the marks are visually and aurally highly similar, while the signs overlap in a meaningless element and to that extent the conceptual aspect does not influence the assessment of the similarity of the signs.  Only the figurative element in the contested sign has a meaning for the public in the relevant territories and to this extent the signs are not conceptually similar.

In respect of the goods at issue, 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 (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual similarities between the signs are particularly relevant when assessing the likelihood of confusion between them.

The differences between the marks are confined, while the attention of the relevant consumers (whether they are professionals or not) is average; in the Opposition Division’s view, these differences are not sufficient to exclude the likelihood of confusion, given the high similarities and taking into account that the overlap exists in the verbal element that will have the strongest impact on consumers. The relevant public will, if not directly confuse the marks, certainly associate them and believe that the goods that have been found to be identical come from the same or economically linked undertakings.

Considering all the above, and taking into account the fact that consumers rarely compare marks directly but rather rely on their imperfect recollection of them, the Opposition Division considers that the degree of similarity between the marks, as set out, above leads to a likelihood of confusion on the part of the public.

In light of all the foregoing, there is a likelihood of confusion on the part of the Danish- and Polish-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 sign.

Therefore, the opposition is well founded on the basis of the opponent’s international registration No 1 245 129 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right international registration No 1 245 129 designating the European Union 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 holder 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.

The Opposition Division

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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.