OPPOSITION No B 2 625 567

Yunxiao Qian, Pol. Carrús, C/ Almansa, 89, 03206 Elche (Alicante), Spain (opponent), represented by Mª Encina Rodriguez López, C/ Garcia Morato, n° 11, Entreplanta Izquierda, 03004 Alicante, Spain (professional representative)

a g a i n s t

Dimex Oy, Kokoojatie 9, 79100 Leppävirta, Finland (applicant), represented by Berggren Oy Tampere, Visiokatu 1, 33720 Tampere, Finland (professional representative).

On 18/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 625 567 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 723 101 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 723 101. The opposition is based on European Union trade mark registration No 10 765 394. 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.

1. The goods and services

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

Class 25:         Clothing, footwear, headgear.

Class 28:         Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 35: Advertising; business management; business administration; office functions, retailing and sale via global internet networks of games and playthings, gymnastic and sporting articles, decorations for Christmas trees, clothing, footwear and headgear.

The contested goods and services are the following:

Class 9:         Clothing for protection against fire; safety vests for wear for the prevention of traffic accidents; knee pads for workers.

Class 25:         Clothing for workers, in particular jackets, overcoats, shirts, short-sleeve shirts, hooded jackets, vests, trousers, shorts, overalls, underwear, headgear for wear, braces for clothing and belts (clothing); outerclothing for children, in particular jackets, trousers and overalls; waterproof clothing.

Class 35:         On-line advertising on a computer network; retail or wholesale services for clothing for protection against fire, safety vests and knee pads for workers; retail or wholesale services for clothing for workers; retail or wholesale services for outerclothing for children; retail or wholesale services for waterproof clothing; on-line retail services for clothing for protection against fire, safety vests, knee pads for workers, clothing for workers, outerclothing for children and for waterproof clothing.

An interpretation of the wording of the contested list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 9

The contested clothing for protection against fire; safety vests for wear for the prevention of traffic accidents; knee pads for workers are articles intended to cover various parts of the human body and protect them against various types of hazards in order to avoid any potential injury. These goods, protective and safety equipment and clothing, have a different primary purpose from the opponent’s clothing in Class 25; although those goods’ purpose is also to cover various parts of the human body and protect it from external conditions, the opponent’s clothing may also be articles of fashion, unlike the contested goods, which are used only for protection and safety reasons. Nevertheless, these goods have the same nature and methods of use. Furthermore, they may target the same consumers, as the user may be interested in combining articles of protective and safety clothing with regular clothing. Therefore, the contested goods and the opponent’s goods are considered similar to a low degree.

Contested goods in Class 25

The contested outerclothing for children, in particular jackets, trousers and overalls; waterproof clothing are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested clothing for workers, in particular jackets, overcoats, shirts, short-sleeve shirts, hooded jackets, vests, trousers, shorts, overalls, underwear, headgear for wear, braces for clothing and belts (clothing) are included in the broad categories of the opponent’s clothing and headgear. Therefore, they are identical.

Contested services in Class 35

The contested on-line advertising on a computer network is included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested retail or wholesale services for outerclothing for children; retail or wholesale services for waterproof clothing overlap with the broad category of the opponent’s sale via global internet networks of clothing. Therefore, they are identical.

The contested on-line retail services for outerclothing for children and for waterproof clothing are included in the broad category of the opponent’s sale via global internet networks of clothing. Therefore, they are identical.

The contested retail or wholesale services for clothing for protection against fire, safety vests and knee pads for workers; retail or wholesale services for clothing for workers; on-line retail services for clothing for protection against fire, safety vests, knee pads for workers, clothing for workers are considered similar to the opponent’s retailing and sale via global internet networks of clothing. The services at issue have the same nature, since both are sales-related services, and they have the same purpose, namely that of allowing consumers to conveniently satisfy shopping needs related to goods with the same nature and methods of use (protecting and covering various parts of the human body) through stationary or online shops; moreover, these services have the same relevant public.

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 and services found to be identical, similar or similar to a low degree are directed at the public at large (e.g. outerclothing for children, in particular jackets, trousers and overalls; waterproof clothing in Class 25) or at professionals (e.g. articles for safety or protection in Class 9, on-line advertising on a computer network in Class 35). The goods and services at issue are standard goods and specialised goods or services directed at professionals with specific professional knowledge or expertise.

The general public’s degree of attention is considered average in the case of some of the goods. The degree of attention may vary from average to high depending of the type, nature and level of sophistication of the goods or services purchased by professionals, since some of the relevant goods (e.g. articles for safety or protection in Class 9, for instance clothing for protection against fire) are intended to be used in conditions potentially hazardous to human life and health, which is why their purchase might demand a higher degree of attention.

3. The signs

DEMAX
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 earlier trade mark is a single-word mark, ‘DEMAX’, and the contested sign is a figurative mark consisting of the word ‘DIMEX’ in standard black bold italic upper case letters; the upper third of the letter ‘I’ in this word element is yellow. The word ‘DIMEX’ is underlined with alternating yellow and black oblique stripes.

The elements of the signs in question have no meaning for the relevant public and both signs are, therefore, distinctive.

The contested sign has no elements that can be considered clearly more dominant or distinctive than the other elements.

Visually, the signs coincide in the letters ‘D*M*X’, positioned identically in both signs. However, they differ in their second and fourth letters, the letters ‘E’/‘I’ and ‘A’/‘E’ in the earlier sign and the contested sign respectively. Moreover, the signs differ in the figurative elements of the contested sign, such as the black italic letters (and the black-and-yellow letter ‘I’) and the black-and-yellow underlining.

As regards the contested sign, account must be taken of the fact that 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).

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘D’ and ‘M’, positioned identically at the beginning of each of the two syllables of which the signs are formed, namely the syllables ‘DE-’/‘DI-’ and ‘-MAX’/‘-MEX’; moreover, the signs coincide in the sound of the last letter, ‘X’, of each sign. The pronunciation differs in the sound of the second and fourth letters in each mark, that is, the letters ‘E’/‛I’ and ‘A’/‘E’ in the earlier sign and the contested sign respectively.

Therefore, the signs are aurally similar to an average degree.

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.

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 and services 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services covered by the marks in dispute are partly identical, partly similar or partly similar to a low degree. The degree of attention is expected to be average for the public at large, but it may vary from average to high for professionals and in relation to certain goods for safety or protection in Class 9. The earlier mark has a normal degree of distinctiveness.

The marks have an average degree of visual and aural similarity. As the signs are meaningless for the public within the European Union, a conceptual comparison is not possible. The general principle of the greater importance of the verbal elements of a mark and the lesser importance of its figurative elements plays a certain role in the present case. The figurative elements of the contested sign, such as the yellow and black colouring of the letters and the underlining, will not attract the consumer’s primary attention; rather, the consumer will focus on the word ‘DIMEX’. The similarities in the word elements of the signs, ‘DEMAX’/‘DIMEX’, result from the coinciding letters ‘D*M*X’, positioned identically in the marks. The signs coincide not only in their first letters, ‘D’, but also in their last letters, ‘X’; furthermore, the signs’ middle letters, ‘M’, are identical. Consequently, the signs have in common three out of five letters each; the differing letters, ‘E’/‘I’ and ‘A’/‘E’, cannot counteract these commonalities, and in fact they will have a very limited impact on the consumer’s perception of the marks.

In these circumstances, account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Moreover, even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

For all these reasons, in spite of the differences in the word elements, there is a likelihood of confusion on the part of the public in the European Union because the aural and visual coincidences between the signs are overwhelming and the signs have no dominant or more distinctive elements that could influence the overall assessment of the marks in question as described above.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 765 394. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 applicant 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

José Antonio GARRIDO OTAOLA

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.