OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
Opposition Division
OPPOSITION No B 2 082 082
College Style V.O.F., Kaartenmakersstraat 20, 2984 CB Ridderkerk, The Netherlands
(opponent),
represented
by
Merkenbureau
Knijff
&
PartnersB.V.,
Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands (professional
representative)
against
Renaissance Rtw Asia Pvt LTD, No-1 Thennampalayam Tirupur Tamilnadu/India
641604, LA, India (applicant), represented by Christoph Lösch, Äußere Bayreuther
Str. 230, 90411 Nürnberg, Germany (professional representative)
On 19/08/2013, the Opposition Division takes the following
DECISION:
1.
Opposition No B 2 082 082 is partially upheld, namely for the following
contested goods:
Class 25: Clothing; footwear; headgear; boot uppers; cuffs; footwear uppers;
inner soles; soles for footwear; studs for football boots.
2.
Community trade mark application No 10 739 449 is rejected for all the above
goods. It may proceed for the remaining goods, namely the following:
Class 25: Fittings of metal for footwear; hat frames [skeletons]; heelpieces for
footwear; heelpieces for stockings; heels; non-slipping devices for
footwear; ready-made linings [parts of clothing]; shirt yokes; tips for
footwear; welts for footwear.
3.
Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of Community trade mark
application No 10 739 449. The opposition is based on Benelux trade mark
registration No 0 718 072. The opponent invoked Article 8(1)(b) CTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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
Decision on Opposition No B 2 082 082
page: 2 of 7
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs and the relevant public.
a)
The goods
The goods on which the opposition is based are the following:
Class 18:
Leather and imitations of leather, and goods made of these materials
and not included in other classes; animal skins, hides; trunks and
traveling bags; umbrellas, parasols and walking sticks; whips, harness
and saddler.
Class 25:
Clothing; footwear; headgear.
The contested goods are the following:
Class 25:
Clothing; footwear; headgear.
The contested CTM application seeks protection for the entire class heading of
Class 25 of the Nice Classification. The application was received by the Office on
20/03/2012. Due to payment deficiencies, the application was not accorded the date
of application as a filing date, but the date when all deficiencies were remedied,
namely 02/07/2012. However, since the application was actually received by the
Office on 20/03/2012, according to Communication No 2/12 of the President of the
Office of 20/06/2012, as regards Community trade mark applications filed before
21/06/2012, the Office considers that the intention of the applicant was to cover all
the goods or services included in the alphabetical list of the classes concerned in the
edition of the Nice Classification in force at the time when the filing was made, in this
case the 10th edition.
Consequently, in order to take account of the entire alphabetical list in Class 25 of
the contested CTM application, the Opposition Division will compare the goods of the
earlier mark with both (i) the general indications specified and (ii) any items in the
alphabetical list that do not fall within the natural and usual meaning of these general
indications.
In the case of Class 25, the Opposition Division has identified the following items in
the alphabetical list covered by the contested CTM application that do not fall within
the natural and usual meaning of these general indications:
Class 25:
Boot uppers; cuffs; fittings of metal for footwear; footwear uppers; hat
frames [skeletons]; heelpieces for footwear; heelpieces for stockings;
heels; inner soles; non-slipping devices for footwear; ready-made
linings [parts of clothing]; shirt yokes; soles for footwear; studs for
football boots; tips for footwear; welts for footwear.
Therefore, as regards this class, both the general indications specified and the items
listed above will be compared.
Earlier Benelux trade mark No 0 718 072 is registered for the entire class headings of
Classes 18 and 25 of the Nice Classification. It was filed on 14/05/2002. In
Decision on Opposition No B 2 082 082
page: 3 of 7
accordance with the Common Communication on the Implementation of ‘IP
Translator’ of the European Trade Mark and Design Network, published on
02/05/2013, the general indications in these class headings will be interpreted
following a literal approach, which seeks to give those indications their natural and
usual meaning.
As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice
Classification serves purely administrative purposes. Therefore, goods or services
may not be regarded as being similar or dissimilar to each other simply on the
grounds that they appear in the same or different classes in the Nice Classification.
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; footwear; headgear are equally protected under the earlier
mark. Therefore, these goods are identical.
The contested boot uppers and footwear uppers refer to a part or parts of a boot, or
to a footwear item that covers the toes, the top of the foot, the sides of the foot and
the back of the heel. They have the same nature as the earlier goods made of leather
in Class 18. Furthermore, they can coincide in producer. Therefore, these goods are
considered to be similar.
The contested cuffs are parts of clothing, specifically the parts of a sleeve nearest the
hand, which are sometimes turned back and decorative. These goods can also be
worn as gloves, so they can be sold as an independent item (an accessory to
clothing). Therefore, they have some points of contact with the opponent’s clothing in
Class 25 as they may coincide in producers, distribution channels and end users.
Furthermore, these goods are complementary. Therefore, they are considered to be
similar.
The same applies to the contested inner soles; soles for footwear and studs for
football boots which are considered to be similar to the opponent’s footwear in
Class 25. Indeed, the contested goods are complementary to the earlier ones.
Furthermore, they share the same commercial origin and distribution channels, and
target the same end users.
The remaining contested fittings of metal for footwear; hat frames
[skeletons];heelpieces for footwear; heelpieces for stockings; heels; non-slipping
devices for footwear; ready-made linings [parts of clothing]; shirt yokes; tips for
footwear; welts for footwear are all parts for clothing, headgear and footwear. The
mere fact that they are used for manufacturing final products that belong to Class 25
is not sufficient to render them similar to the opponent’s goods in this class. They are
usually destined for undertakings that manufacture the end product and not for the
general public, and usually they do not have the same distribution channels.
Furthermore, they do not share points of contact, under the relevant ‘Canon’ criteria,
with the opponent’s goods in Class 18 either. Therefore, they are dissimilar to all the
opponent’s goods.
Decision on Opposition No B 2 082 082
b)
page: 4 of 7
The signs
BLUE RIVER
Earlier trade mark
Contested sign
The relevant territory is the Benelux countries.
The earlier mark is a word mark composed of the verbal elements ‘BLUE RIVER’,
written in standard upper case letters. The contested sign, on the other hand, is a
colour figurative mark consisting of a light blue rectangle against which there are
depicted the same words as in the earlier trade mark, ‘Blue River’, in title case
lettering. The word ‘Blue’ is written in blue, while ‘River’ is in light blue and positioned
slightly lower than the former. There is a figurative element consisting of three blue,
wavy lines placed between these words. In addition, the contested sign includes the
verbal element ‘Inc.’, in black title case letters, placed after the word ‘River’ in a
slightly lower position.
Visually, the signs are similar to the extent that the earlier mark, ‘BLUE RIVER’, is
entirely included in the contested sign. On the other hand, they differ in: (i) the
typescript, the colour and the specific manner in which these words are presented in
the contested sign, (ii) the additional verbal element, ‘Inc.’, of the contested sign and
(iii) the figurative elements present in the contested sign, as described in detail
above.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs is highly similar as it coincides in the
sound of the letters making up the words ‘Blue River’, present identically in both signs.
The pronunciation will differ only in the sound of the letters ‘I/n/c’ of the contested mark,
which have no counterparts in the earlier sign. The figurative element of the three wavy
lines in the contested sign is not subject to a phonetic assessment, as it will not be
pronounced.
Conceptually, the common elements, ‘Blue River’, are English words. ‘Blue’ refers,
inter alia, to any of a group of colours, such as that of a clear unclouded sky, that
have wavelengths in the range 490–445 nanometres, while ‘River’ refers to a large
natural stream of fresh water flowing along a definite course, usually into the sea,
being fed by tributary streams. Therefore, when taken as a whole, these elements may
be understood as forming the semantic concept of a river of the colour blue. Finally, the
element ‘Inc.’ of the contested sign is the common abbreviation for the English word
Incorporated, meaning organised as a legal corporation.
A part of the public in the relevant territory may recognise the concepts associated with
one or both of the above elements, either separately or as a whole, on account of their
knowledge of English or because the words are close to an equivalent word in the
official language in the relevant territory (for instance ‘blauw’ and ‘rivier’ in Dutch; ‘bleu’
Decision on Opposition No B 2 082 082
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and ‘rivière’ in French; ‘blau’ in German). For the remaining part of the public, the
common elements, ‘Blue River’, and the abbreviation, ‘Inc.’, of the contested sign will be
seen as invented words, which will not convey any semantic connotation.
The figurative element in the contested sign will be associated with three wavy lines.
Against this background, it is concluded that the signs are conceptually linked for the
part of the public that recognises the meaning in one or both of the common verbal
elements, ‘Blue River’. For the remaining part of the public, for which these words are
meaningless, the signs are not conceptually similar, since only the contested sign will
be associated with a concept (the stylised representation of three wavy lines and a legal
form of a company or, as the case may be, only the stylised representation of the wavy
lines).
Taking into account the abovementioned visual/aural and, where applicable, also
conceptual coincidences, it is considered that the signs under comparison are
similar.
c)
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the
conflicting signs must be based on the overall impression given by the marks,
bearing in mind, in particular, their distinctive and dominant components.
The earlier mark has no element which could be clearly considered more distinctive
than other elements.
The element ‘Inc.’ of the contested sign will be associated by a part of the public in
the territory with the legal form of a company. It is considered that this element is
weak for the relevant goods, as it will not be seen as a badge of origin, but merely as
an indicator of the legal form of the company called ‘Blue River’. The part of the
relevant public who understands the meaning of that element will not pay as much
attention to it, as to the other, more distinctive, elements of the mark. Consequently,
the impact of this weak element is limited when assessing the likelihood of confusion
between the marks at issue.
The marks under comparison have no elements which could be considered clearly
more dominant (visually eye-catching) than other elements.
d)
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 in relation to any of the goods at hand from the perspective of the public
in the relevant territory. Therefore, the distinctiveness of the earlier mark must be
seen as normal.
Decision on Opposition No B 2 082 082
e)
page: 6 of 7
Relevant public – level 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 level 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 both
the public at large and a more specialised public, with specific professional
knowledge and expertise.
f)
Global assessment, other arguments and conclusion
The contested goods are partly identical, partly similar and partly dissimilar to the
earlier ones.
The signs are similar.
In fact, the earlier mark, ‘BLUE RIVER’, is entirely reproduced in the contested sign.
The only differences between the signs are confined to the colour, typeface and
presentation of these verbal elements in the contested mark, and to the figurative
element of three wavy lines and the additional verbal element ‘Inc.’ of the contested
sign. However, none of these slightly differing elements will divert consumers’
attention from the identical components of the marks, ‘BLUE RIVER’.
The figurative element of the three wavy lines is not particularly imaginative or
striking; furthermore, in principle, in the case of signs that contain both figurative and
verbal elements, the verbal elements usually have a stronger impact on consumers,
as they will more easily refer to the signs by their verbal element than by describing
their figurative element (judgment of 14/7/2005, T-312/03, ‘Selenium-Ace’,
paragraph 37). As for ‘Inc.’ in the contested sign, this element is placed at the end of
the contested sign, where consumers attention is least focused on. In addition, as
already stated above, part of the public will merely see this element as indicating the
legal form of a company.
Therefore, when encountering the contested sign applied on identical or similar
goods in Class 25, consumers will merely perceive it as a new version of the
opponent’s mark, ‘BLUE RIVER’.
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 partially well
founded on the basis of the opponent’s Benelux trade mark registration.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical and similar to those of the earlier trade mark.
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) CTMR, the opposition based
on this article and directed at these goods cannot be successful.
Decision on Opposition No B 2 082 082
page: 7 of 7
COSTS
According to Article 85(1) CTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 85(2) CTMR,
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
Adriana VAN ROODEN
Oana-Alina STURZA
Sigrid DICKMANNS
According to Article 59 CTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 60 CTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. 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 800 has been paid.