OPPOSITION No B 2 665 100
Xavier Parraga Ramirez, c/ Nou, 29, 08211 Castellar Del Valles, Spain (opponent), represented by GT. De Propiedad Industrial, S.L., c/Capitán Haya, núm. 38-7º-izda., 28020 Madrid, Spain (professional representative)
a g a i n s t
Wladi Rigato, Vicolo delle Mimose, n. 56/7, 30030 Vigonovo, Italy (applicant), represented by Carla Gobbetto, Via Tommaseo, 69/D, 35131 Padova, Italy (professional representative).
On 24/03/2017, the Opposition Division takes the following
1. Opposition No B 2 665 100 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 874 275, namely against all the goods in Class 25. The opposition is based on Spanish trade mark application No 3 582 744. The opponent invoked Article 8(1)(a) EUTMR.
Although the specific conditions under Articles 8(1)(a) and 8(1)(b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR that requires at least similarity between signs and goods/services and likelihood of confusion. Similarity covers situations where both marks and goods/services are similar and also situations where the marks are identical and the goods/services are similar or vice versa.
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: Footwear.
The contested goods are the following:
Class 25: Sandals; Leather shoes; Leather belts [clothing]; Footwear.
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.
Footwear is identically contained in both lists of goods.
Sandals and leather shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.
The contested leather belts [clothing] serve a similar purpose as the opponent’s footwear. Both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for belts will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar.
- 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 or similar are directed at the public at large. The degree of attention is considered average.
- The signs
Earlier trade mark
The relevant territory is Spain.
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).
Both the earlier and the contested sign are figurative marks containing a centrally positioned verbal element ‘WR’, which, in the contested sign, due to high stylisation, could also be perceived as ‘WK’. The element ‘WR’ (or ‘WK’) has no meaning for the relevant public and is, therefore, distinctive.
In the earlier sign, the letters ‘WR’ are presented in white. They evoke wooden planks and appear to be nailed to a red circle in the background, which is itself surrounded by a bigger white circle. Both the inner circle and the outer circle have bold black outlines.
In the contested mark, the letters are presented in a fancy font, in black, and placed between two black dots situated on the left and on the right side of the verbal element. The letters and the two dots are depicted inside a circle formed of little black triangles, which is itself surrounded by a round thin black line. The two circle lines are interrupted twice, forming two halves of a circle.
Both signs are composed of distinctive verbal elements and less distinctive figurative elements of a rather decorative nature, as described above. None of the two signs has a dominant element as both verbal and figurative elements are equally eye-catching.
In the present case, the length of the signs may influence the effect of the differences between them. The shorter the 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.
Visually, the signs coincide in a distinctive verbal element against a circular background. However, as it was stated above, the Opposition Division cannot exclude that a part of the relevant public would read the verbal element of the contested sigh as ‘WK’, depending on how the stylisation of this element is perceived. The font type and style of the verbal elements are very different, as was described above. Furthermore, the signs differ in colour, as the earlier sign contains a captivating red-coloured inner circle in the background of the verbal element while the contested mark is seen in black and white. Even if both signs contain verbal elements ‘WR’ placed inside the circle-shaped frames, these verbal elements and frames are formed and look very differently.
Therefore, the signs are similar to a low degree.
Aurally, for the part of the public that would read the contested mark as ‘WR’, the signs are identical. For the part of the public that would read the contested sign as ‘WK’, the signs are aurally similar to an average degree, since the pronunciation of the first letters of the two signs would coincide.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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.
- 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.
- 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/or 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 directed at the public at large with an average degree of attention.
The contested goods are partly identical and partly similar to the opponent’s goods.
Generally in clothes or footwear shops customers can themselves either choose the clothes or footwear 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 or footwear 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 considerable visual differences between the signs, which were described in section c) above, are particularly relevant when assessing the likelihood of confusion between them in this case.
Furthermore, the signs in dispute both have distinctive verbal elements composed of two letters. The fact that they, due to a different perception caused by stylisation, may differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. Furthermore, since, at best, the signs only coincide to the extent that they feature the letters ‘WR’ and the circle – shaped backgrounds, the way the letters and the figurative elements appear in each sign is determinant.
Although the signs may coincide aurally (for the part of the public that would read the contested mark as ‘WR’), a likelihood of confusion does not exist since, in addition to the verbal elements, the perceptible figurative elements are different.
The earlier mark is endowed with an average degree of distinctive character. The overall visual impression is that the signs are stylised in a sufficiently different way, such that the differences in their representation eclipse the common elements.
Considering all the above, even taking into consideration that the goods are identical or similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Since the outcome of the case is favourable to the applicant, the Opposition Division will not address its arguments against the admissibility and substantiation (submission of the Spanish registration certificate) of the opposition.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.