OPPOSITION No B 2 691 296

Teria Yabar, S.L., San Marcos, 43 1º Dcha, 28004 Madrid, Spain (opponent), represented by Licentia Patentes y Marcas, S.L., C/ Torreiro, 13-2º, 15001 A Coruña, Spain (professional representative)

a g a i n s t

Chaobin Yu, No.36 East Avenue,Gulou Dist., Fuzhou, Fujian, The People’s Republic of China, and Xin Lin, No.13 Xiachi Alley,Cangshan Dist., Fuzhou, Fujian, The People’s Republic of China (applicants), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 – 5ª planta, 28050 Madrid, Spain (professional representative).

On 27/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 691 296 is partially upheld, namely for the following contested goods:

Class 18:         Leather, unworked or semi-worked; Purses; School bags; Travelling trunks; Backpacks; Shopping bags; Travelling bags; Haversacks; Cases of imitation leather; Leather twist; Umbrellas; Mountaineering sticks; Covers for animals; Harness fittings.

Class 25: Clothing; Sports jerseys; Pyjamas; Underpants; Brassieres; Children's clothing; Raincoats; Masquerade costumes; Shoes; Hats; Socks; Trouser socks; Gloves; Scarfs; Wedding dresses.

2.        European Union trade mark application No 15 011 992 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 011 992. The opposition is based on, inter alia, EU trade mark registration No 14 798 805. The opponent invoked Article 8(1)(b) and 8(5) 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 two earlier marks. For reasons of procedural economy, the Opposition Division will first examine likelihood of confusion in relation to the earlier EUTM No 14 798 805.

1. The goods

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

Class 3: Perfume; Toilet water; Cologne; Eau de parfum; Toilet water; Perfume water; Cologne; Cologne; Soaps; Perfumery; Essential oils; Cosmetics; Hair lotion; Dentifrices; Perfumed creams; Barrier creams; Skin care creams [cosmetic]; Creams (Cosmetic -); Shower gels; Foaming bath gels; Gels for cosmetic use; Soaps and gels; Shampoo.

Class 9: Spectacle cases; Cases for sunglasses; Spectacles [optics]; Pince-nez chains; Eyeglass lanyards; Sunglasses.

Class 14: Jewellery ornaments; Imitation jewellery ornaments; Ornamental pins; Rings (jewellery, jewelry (am.)); Earrings; Jewelry; Horological and chronometric instruments; Jewelry; Paste jewellery [costume jewelry (Am.)]; Jewellery, novelty jewellery; Bracelets; Broaches; Chains [jewelry]; Watch chains; Necklaces; Pendants; Necklaces; Watchstraps; Gems; Key rings [trinkets or fobs]; Medals; Earrings; Earcuffs; Ball earrings; Earrings; Watches; Ankle bracelets; Precious metals and their alloys; Jewelry; Paste jewellery [costume jewelry (Am.)]; Precious stones.

Class 18: Wallets; Card wallets [leatherware]; Casual bags; Briefcases [leather goods]; Shoe bags; Pockets of textile for clothing; Leather bags and wallets; Handbags; Handbags made of leather; Handbags; Evening handbags; Canvas bags; Casual bags; Hands bags; Purses and pocket wallets; Shoulder bags; Purses and handbags; Clutches [purses]; Backpacks; Purses; Umbrellas; Hides; Leather and his/her imitations; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery, all of leather or imitations of leather; Wallets for attachment to belts.

Class 25: Clothing; Ready-to-wear clothing; Footwear; Headgear; Casualwear; Underwear; Ready-to-wear clothing; linen; Ready-made clothing for women, men and children; Waist belts.

The contested goods are the following:

Class 16: Writing or drawing books; Boxes of cardboard or paper; Glue for stationery or household purposes; Writing instruments; Drawing instruments; Paper knives [cutters] [office requisites]; Document holders [stationery]; Pads [stationery]; Document files [stationery]; Files [office requisites]; Stationery; Folders [stationery]; Writing cases [sets]; Stands for pens and pencils; Office requisites, except furniture; Labels, not of textile; Cabinets for stationery [office requisites]; Desk mats; Packing [cushioning, stuffing] materials of paper or cardboard; Bags [envelopes, pouches] of paper or plastics, for packaging.

Class 18: Leather, unworked or semi-worked; Purses; School bags; Travelling trunks; Backpacks; Shopping bags; Travelling bags; Haversacks; Cases of imitation leather; Leather twist; Umbrella or parasol ribs; Umbrellas; Mountaineering sticks; Covers for animals; Harness fittings.

Class 25: Clothing; Sports jerseys; Pyjamas; Underpants; Brassieres; Children's clothing; Raincoats; Masquerade costumes; Shoes; Hats; Socks; Trouser socks; Gloves; Scarfs; Wedding dresses.

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 16

The contested goods in Class 16, which are mainly stationery and other office requisites, as well as packaging materials, are not similar to any of the goods of the earlier mark in Classes 3, 9, 14, 18 and 25, since they have no relevant points of contact. In particular, the contested bags [envelopes, pouches] of paper or plastics, for packaging are not similar to the opponent’s casual bags or travelling bags in Class 18 since, apart from being bags of different materials (paper or plastic versus leather), they serve different purposes (the former being used for packaging and the latter to carry things around), have different distribution channels and are not in competition or complementary.

Contested goods in Class 18

The contested leather, unworked or semi-worked; purses; travelling trunks; backpacks; travelling bags; haversacks; umbrellas; mountaineering sticks are identical to the opponent’s leather and his/her imitations, purses and pocket wallets; trunks and travelling bags; backpacks (which include haversacks); umbrellas and walking sticks since they are either the same goods or synonyms.

School bags and shopping bags are included in the broad category of (or at least overlap with) the opponent’s casual bags and are therefore considered to be identical.

Cases of imitation leather are highly similar to the opponent’s briefcases [leather goods] since, even if they are made of different materials, they have the same purpose, are directed at the same end users, can be manufactured or marketed by the same undertakings, share the same distribution channels and are in competition with each other.

The contested leather twist is similar to the opponent’s leather, since both are semi-finished goods that can be used in the manufacture of other goods like bags, clothes or shoes. They are directed at the same users, share the same distribution channels and will usually be manufactured or marketed by the same undertakings.

The contested covers for animals; harness fittings are similar to the opponent’s whips, harness and saddlery, all of leather or imitations of leather. All these goods are used for animals, in particular for horses, and will normally be sold at the same specialized shops, be directed at the same end users and are likely to be manufactured or marketed by the same undertakings.

Finally, umbrella or parasol ribs are not similar to any of the goods of the earlier mark in Classes 3, 9, 14, 18 and 25, since they have no relevant points of contact. In particular, they are not similar to the opponent’s umbrellas and parasols since the former are parts used in the manufacture of the latter, and have therefore different purposes, end users (umbrella/parasol manufacturers or repairers versus the general public) and distribution channels (a shop selling umbrellas and parasols will not usually sell umbrella or parasol ribs as such).

Contested goods in Class 25

Clothing; children's clothing; shoes and hats are identical to the opponent’s clothing; ready-made clothing for children; footwear and headgear, since they are either the same goods or synonyms

Sports jerseys; Pyjamas; Underpants; Brassieres; Raincoats; Masquerade costumes; Socks; Trouser socks; Gloves; Scarfs; Wedding dresses are included in the broad category of the opponent’s clothing and are therefore considered to be 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 or similar to different degrees are directed at the public at large and, in the case of semi-finished goods such as leather or leather twist, at business customers with specific professional knowledge or expertise. The degree of attention will vary from average (for some of the goods directed at the general public) to high (for some leather goods directed at the general public which are particularly expensive or for those directed at a professional public).

3. The signs

TERIA YABAR	YARBAR
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).

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.

The fact that the opponent has identified the two elements of the earlier mark as corresponding to the name and a surname of a fashion designer does not alter the previous finding, given that the name and surname in question are not common in any of the countries of the relevant territory and would therefore not be recognized by the majority of the public as such.

The earlier mark has no elements that could be considered clearly more distinctive than other elements. Being a word mark, it does not have any more dominant elements. The same conclusion is valid for the contested sign.

Visually and aurally, the signs coincide in the letters ‘Y-A-B-A-R’, which are present in the second word element of the earlier mark and in the only word element of the contested sign. They differ in the first word element of the earlier mark (‘TERIA’) and in the additional ‘R’ in the third position of the only word element of the contested sign, which from an aural point of view does not significantly change the pronunciation of the word in question. Given the coincidence in five out of six letters of a verbal element of average distinctive character, they are considered to be visually and aurally similar to an average degree.

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 claimed that the earlier trade mark has a reputation but did not file any evidence in order to prove such a claim. It merely referred to an attached decision from the Spanish Patent and Trade mark Office in a parallel opposition case between the same parties, in which it is specifically stated that the well known character of the earlier mark, in the sense of Article 6(2)(d) of the applicable Spanish trade mark law (Ley de Marcas 17/2001), had not been proven by the opponent.

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

The goods have been found to be partly identical, partly similar to a high or average degree and partly dissimilar.

Given also the average degree of aural and visual similarity between the signs and the fact that the second verbal element of the earlier mark, which plays an independent distinctive role, is fully contained in the contested sign (with the only addition of the letter “R” in the middle of the word) it is considered that the differences between the signs are not sufficient to counteract the similarities between them, and this even for goods for which the relevant public will display a higher degree of attention, since in any event the consumers of these goods will also have to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration 14 798 805.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to different degrees to those of the earlier trade mark, namely Leather, unworked or semi-worked; Purses; School bags; Travelling trunks; Backpacks; Shopping bags; Travelling bags; Haversacks; Cases of imitation leather; Leather twist; Umbrellas; Mountaineering sticks; Covers for animals; Harness fittings in Class 18 and all the contested goods in Class 25.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on the earlier European Union trade mark registration No 13 420 112 for the word mark ‘TERIA YABAR’.

This other earlier right invoked by the opponent covers services in Classes 35, 38 and 42, which are related to advertising, business support services, retail of textiles, clothing, footwear and headgear, telecommunications and fashion design. These services are not similar to any of the remaining goods of the contested mark in Classes 16 and 18 (different stationery items and other office requisites, packaging materials and umbrella and parasol ribs), since they do not have any relevant point of contact. Consequently, the outcome under Article 8(1)(b) EUTMR cannot be different: no likelihood of confusion exists with respect to the remaining goods.

The Opposition Division will now examine, in respect of the remaining goods, the other ground invoked by the opponent, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

According to the opponent, the earlier trade marks have a reputation in the European Union, and in particular in France and Spain.

As explained in point d) above in relation with the earlier EUTM No 14 798 805 (and also applicable to the earlier EUTM No 13 420 112), the only document filed by the opponent to support the claim of reputation of the earlier marks, which is a decision of the Spanish trade mark office, actually states that the reputation of the earlier marks had not been proven by the opponent in the case at issue. Under these circumstances, the Opposition Division concludes that in the present case the opponent has also failed to prove that its earlier trade marks have a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected for the remaining goods to the extent it is based on this ground.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cristina CRESPO MOLTÓ

José Antonio GARRIDO OTAOLA

Ana MUÑIZ RODRÍGUEZ

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.