OPPOSITION No B 2 702 044
Watts, 131, Voie Atlas – ZI Athélia III, 13600 La Ciotat, France (opponent), represented by Myriam Angelier, 3, Place Félix Baret, 13006 Marseille, France (professional representative)
a g a i n s t
Sicem International S.r.l., Via Provinciale Lucchese n. 145, Osmannoro 50019, Sesto Fiorentino (FI), Italy (applicant), represented by Ufficio Tecnico Ing. A. Mannucci, Via della Scala 4, 50123 Firenze, Italy (professional representative).
On 14/06/2017, the Opposition Division takes the following
1. Opposition No B 2 702 044 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 750 641. The opposition is based on European Union trade mark registration No 14 455 901. 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 goods
The goods on which the opposition is based are the following:
Class 25: Headgear; Footwear; Clothing; Hats.
The contested goods are the following:
Class 25: Clothing; Footwear; Hats; Clothing; Jogging outfits; Casual shirts; Mackintoshes; Trousers shorts; Shirts; Chemisettes; Skirts; Gowns; Children’s wear; Trousers; Gowns; Salopettes; Topcoats; Coats; Wind-jackets; Evening wear; Dinner jackets; Jackets [clothing]; Pelisses; Workclothes; Golf; Sweaters; Jumpers; Pullovers; Sweat shirts; Cardigans; jean pants; jean jackets; Denim shirts; Chemises; Tops; Waistcoats; Ladies’ suits; Wedding dresses; Parkas; Upper; Underwear; Boxer shorts; Vest tops; Swimming caps; Swimming costumes; Swimming trunks; Robes; Briefs; Bustiers; Underwear sets; Pyjamas; Polo shirts; Undershirts; Neckties; Gloves [clothing]; Shawls; Sashes for wear; Shoulder scarves; Head scarves; Stockings and pantie-hose; Knee-high socks; Stocking suspenders; Hats; Berets; Waist belts; Footwear; Boots; Wellington boots; Mules; Sandals; Bath sandals; Flip-flops; Clogs.
Contested goods in Class 25
The contested clothing; footwear and hats (all of which appear twice in the list of goods of the contested sign) are identically contained in both lists of goods. Therefore, they are identical.
The contested jogging outfits; casual shirts; mackintoshes; trousers shorts; shirts; chemisettes; skirts; gowns; children’s wear; trousers; gowns; salopettes; topcoats; coats; wind-jackets; evening wear; dinner jackets; jackets [clothing]; pelisses; work clothes; golf; sweaters; jumpers; pullovers; sweat shirts; cardigans; jean pants; jean jackets; denim shirts; chemises; tops; waistcoats; ladies’ suits; wedding dresses; parkas; upper; underwear; boxer shorts; vest tops; swimming costumes; swimming trunks; robes; briefs; bustiers; underwear sets; pyjamas; polo shirts; undershirts; neckties; gloves [clothing]; shawls; sashes for wear; shoulder scarves; head scarves; stockings and pantie-hose; knee-high socks; stocking suspenders are included in the opponent’s broad category of clothing. Therefore, they are identical.
The contested swimming caps; berets are included in the opponent’s broader category of hats. Therefore, they are identical.
The contested footwear; boots; wellington boots; mules; sandals; bath sandals; flip-flops; clogs are all included in the opponent’s broader category of footwear. Therefore, they are identical.
- 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 average.
- The signs
Earlier trade mark
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 black cross or letter ‘X’ that the signs have in common will be perceived as such by the relevant public and, as it does not have a straightforward and/or descriptive meaning in relation to the relevant goods, its inherent distinctiveness is average. The present opposition will be based on the assumption that the coinciding device is a cross.
In the earlier mark, there are four letters surrounding the cross, namely, starting from the top and proceeding clockwise, ‘W’, ‘T’, ‘T’ and ‘S’, which will be perceived as such by the relevant public (regardless of whether it is English- or non-English-speaking) and, as they do not have a direct meaning in relation to the conflicting goods, their degree of distinctiveness has to be considered average.
For the English-speaking part of the public, the word ‘WATTS’ written just below the cross will be perceived as the common Anglo-Scottish family name or as the plural of ‘watt’, that is, a unit of measurement of electrical power. In any event, the word does not describe any specific feature or characteristic of the relevant goods and is, therefore, distinctive.
For the non-English-speaking part of the public, ‘WATTS’ exists as such or has very similar equivalents in most of the relevant languages such as French, Hungarian, German, Italian, Slovak, Lithuanian, Croatian (vat) or Latvian (vati) and it will be also associated with the plural of ‘watt’.
Regarding the dominant element of the earlier sign, the Opposition Division cannot agree with the opponent’s assertion that the dominant element of the earlier mark is the word ‘WATTS’, as it is written in a much smaller and lighter typeface than the rest of the elements composing the mark and appears beneath them. Indeed, in the opinion of the Opposition Division it is, rather, the composition of the cross with the letters around it that overshadows the word ‘WATTS’ and has a dominant position.
In the contested sign, there are four verbal elements surrounding the cross, namely ‘T’, ‘TODAY’, ‘THE REAL DEAL’ and ‘WHAT’S’. The reasoning explained above in relation to the perception and the degree of distinctiveness of the single letters of the earlier mark is equally valid here with regard to the letter ‘T’.
For the English-speaking part of the public, the expression ‘WHAT’S TODAY’ in the contested sign might be recognised as a generic invitation to something. As it does not evoke or even allude to the contested goods, this expression enjoys an average degree of distinctiveness.
It is not in dispute (and it is stated by the applicant on several occasions in its observations) that the expression ‘THE REAL DEAL’ is a slogan. In the present case, the English-speaking part of the public will grasp it as a promotional formula indicating that the goods in question are very good or that they are genuine as opposed to being a copy or imitation. Based on that, it is considered that the distinctiveness of this expression is limited and, consequently, it will have a limited impact when assessing the likelihood of confusion between the marks at issue.
For the non-English-speaking part of the public, neither ‘WHAT’S TODAY’ nor ‘THE REAL DEAL’ is meaningful and, therefore, they will be distinctive.
The contested sign has no element which could be clearly considered dominant (more eye-catching than other elements).
Visually, the signs are similar only to the extent that each includes a black cross and they have similar compositions. However, they differ in the words and letters that surround the cross, the stylisation of the letters (those in the contested sign are bolder) and the fact that in the earlier mark the lines of the cross do not intersect with each other. The earlier mark contains the word ‘WATTS’ and the letters ‘W’, ‘T’, ‘T’ and ‘S’ in contrast to the verbal elements ‘T’, ‘TODAY’, ‘THE REAL DEAL’ and ‘WHAT’S’ in the contested sign. Both signs contain the letter ‘T’, although it is placed in different positions.
The importance of the cross (in terms of the visual assessment) is different in each sign. In the earlier mark, the cross is as prominent as the surrounding single letters, as the single letters do not overshadow the cross in terms of size or appearance and the five elements appear as a single device, whereas in the contested sign the cross is somewhat overshadowed by the larger and longer word elements, especially the words ‘WHAT’S’ and ‘TODAY’.
The opponent’s argument that the single letters of the earlier mark coincide with the initial letters of words found in the contested sign (‘T’ for ‘Today’, ‘T’ for ‘The’ and ‘W’ for ‘WHAT’S’) has also been evaluated. However, the Opposition Division is of the opinion that consumers will have difficulty in perceiving, at a glance, these commonalities; a much more conscientious analysis of both signs would be required to reach the conclusion suggested by the opponent and it is unrealistic to expect the relevant consumers to undertake such an analysis. For this reason, the opponent’s argument must be set aside.
For all the above reasons, the signs are visually similar only to a low degree.
Aurally, irrespective of the different pronunciation rules in the different languages of the relevant territory, the pronunciations of the signs coincide in the sound of the letters ‘/W*AT*S/’, which are present in the earlier mark as ‘/WATTS/’ and in the contested sign as ‘/WHAT’S/’, and in the single letter ‘T’. The pronunciation differs in all the additional verbal elements of the contested mark. The signs have different rhythms and intonations, as the earlier mark consists of several words and only one single letter.
It is unlikely that the crosses will be pronounced. Therefore, they will not be subject to a phonetic assessment.
For all the above reasons, the signs are aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. It follows that the English-speaking part of the public will perceive the earlier mark as referring to a common surname or to the energy measurement unit and the meaning resulting from the different single letters used, while the other sign contains the meaningful expression ‘WHAT’S TODAY’ and the letter ‘T’. For reasons already explained, it is unlikely that the promotional formula ‘THE REAL DEAL’ could have an impact on the overall assessment of the similarity between the signs.
For this part of the public, the signs are, therefore, conceptually dissimilar.
For the non-English-speaking part of the public, the earlier mark will have the meaning explained in section c) of this decision whereas the contested sign will be meaningless. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
For the entire public, regarding the significance of the figurative element combined with the verbal elements, the earlier mark can be perceived, overall, as a depiction of a cardinal point whereas the contested sign will be perceived as a black bold cross surrounded by letters or words. Moreover, the mere fact that the letter ‘T’ is present in both signs surrounding the figurative device is not sufficient to conclude that there is a conceptual link between the signs. Therefore, the signs are conceptually dissimilar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 average.
- Global assessment, other arguments and conclusion
The goods are identical but the signs are visually and aurally similar only to a low degree and conceptually dissimilar.
The fact that both marks depict a black cross and are aurally similar in two of their verbal elements does not justify a finding that the marks as a whole are similar. Moreover, while there is a degree of visual similarity there are also substantial visual differences, and the aural similarity lies in the earlier mark’s secondary word ‘WATTS’.
‘[A]ssessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components’ (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 41).
In the present case, the abovementioned differences create visual, aural and conceptual dissimilarities between the signs at issue. The Opposition Division considers that consumers with only an average degree of attention will not confuse the marks, which, in addition to the differences in their word elements, also differ in the way the elements are put together.
The opponent refers to previous decisions to support its arguments and submits copies of them. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399). Moreover, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings for the following reasons:
In the decision of 14/04/2015, B 2 161 407, HA Henry Arroway North Traditional Outwear / HL, the signs had a very strong visual similarity and, moreover, the earlier mark enjoyed a reputation. Neither of these two important conditions can be found in the present opposition.
In the decision of 11/03/2016, R 2738/2014-5, AR POLO CLUB / BEVERLY HILLS POLO CLUB, the Board of Appeal concluded that there was a likelihood of confusion based on the importance of the figurative element in both signs: a polo player astride a galloping horse that was of such importance that the Board concluded that the relevant public would necessarily retain the image of a mounted polo player. In addition, both signs were linked by a strong aural and conceptual similarity. In the present opposition proceedings, the figurative element, along with the surrounding letters, certainly overshadows the other element in the earlier mark, but not in the contested sign. Moreover, the signs at issue have been found to be conceptually dissimilar for the entire relevant public and aurally similar only to a low degree.
In the decision of 11/04/2016, B 2 473 836, B Mario Bertulli DAL 1972 LAVARAZIONE ARTIGIANALE A MANO / Bertulli, the signs were considered visually similar to a high degree, as there were striking similarities and the dissimilarities lay in non-distinctive elements. As concluded above, that is not so in the present opposition.
Finally, in the judgment of 08/05/2012, T-101/11, G / G+, submitted as document No 4, in French because the cited case has not been officially translated into English, the Court of Justice of the European Union confirmed that single letters enjoy an average degree of distinctiveness, putting an end to the Office’s past assumption of a low degree of distinctiveness for these kinds of signs. Because of the special characteristics of the signs included in this jurisprudence, the Opposition Division considers that this decision is not applicable to the present case, despite the presence of some single letters, as the signs to be compared are much more complex.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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
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.