OPPOSITION No B 2 716 010

New Yorker S.H.K. Jeans GmbH & Co. KG, Russeer Weg 101-103, 24109 Kiel, Germany (opponent)

a g a i n s t

Yidi Luo, Li Dong Cun Tan Cun 173, Li Hai, Shangyu 312366, People’s Republic of China (applicant), represented by Bellavista Legal S.L., Av. Diagonal 463 bis 3r 4ª, 08036 Barcelona, Spain (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 716 010 is partially upheld, namely for the following contested goods:

Class 9:        Correcting lenses [optics]; spectacle cases; pince-nez; spectacle lenses; spectacle frames; eyeglass frames; spectacle cases; clip-on sunglasses.

Class 14:         Clock hands [clock- and watchmaking]; wristwatches; straps for wristwatches; clocks and watches, electric; watches; watch springs; watch glasses; alarm clocks; watch cases; cases for watches [presentation].

Class 25:         Berets; caps [headwear]; skull caps; hats; headgear for wear; ear muffs [clothing]; top hats; headbands [clothing].

2.        European Union trade mark application No 15 253 305 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 15 253 305. The opposition is based on European Union trade mark registration No 3 499 613. 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

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

Class 9:        Optical, apparatus and instruments; spectacles and parts therefor, in particular sunglasses, sports goggles, ski goggles, protective goggles; frames for eyeglasses; lenses for eye glasses, cases for eye glasses.

Class 14:         Horological and chronometic instruments; straps for wrist watches.

Class 25:         Clothing, headgear; headbands.

The contested goods are the following:

Class 9:        Correcting lenses [optics]; spectacle cases; pince-nez; spectacle lenses; spectacle frames; eyeglass frames; spectacle cases; clip-on sunglasses.

Class 14:        Clock hands [clock- and watchmaking]; wristwatches; straps for wristwatches; clocks and watches, electric; watches; watch springs; watch glasses; alarm clocks; watch cases; cases for watches [presentation].

Class 25:        Berets; caps [headwear]; skull caps; cap peaks; hats; headgear for wear; ear muffs [clothing]; top hats; headbands [clothing].

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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.

Contested goods in Class 9

The contested spectacle lenses are synonymous with and, therefore, identical to the opponent’s lenses for eye glasses.

The contested correcting lenses [optics] overlap with the opponent’s lenses for eye glasses. Therefore, they are identical.

Spectacle cases (listed twice in the list of contested goods) are identically contained in both lists of goods, despite differences in the wordings (they appear as cases for eye glasses in the opponent’s list).

The contested spectacle frames; eyeglass frames are synonymous with and, therefore, identical to the opponent’s frames for eyeglasses.

The contested pince-nez; clip-on sunglasses are included in the broad category of the opponent’s spectacles and parts therefor, in particular […]. Therefore, they are identical.

Contested goods in Class 14

The contested straps for wristwatches are identical to the opponent’s straps for wrist watches, despite a very minor difference in the wordings.

The contested wristwatches; clocks and watches, electric; watches; alarm clocks are included in the broad category of the opponent’s horological and chronometic instruments. Therefore, they are identical.

The contested clock hands [clock- and watchmaking]; watch springs; watch glasses; watch cases are parts of timepieces. They are similar to the opponent’s horological and chronometic instruments, as they can have the same producers and relevant public. Furthermore, they are complementary.

The contested cases for watches [presentation] can have the same producers, relevant public and distribution channels as the opponent’s horological and chronometic instruments. Therefore, they are similar.

Contested goods in Class 25

Headbands [clothing] are identically contained in both lists of goods, despite differences in the wordings.

The contested berets; caps [headwear]; skull caps; hats; headgear for wear; top hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested ear muffs [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested cap peaks are parts of headgear and are dissimilar to the headgear or headbands covered by the earlier mark. Cap peaks, as parts of the finished product, are bought by the manufacturers of headgear to manufacture the end product and are sold in specialised shops. Therefore, they do not have the same distribution channels and do not target the same public as the opponent’s goods, and cannot be considered complementary to the opponent’s goods, since they are not usually bought together. The rest of the opponent’s goods, namely clothing in Class 25 and all of the goods in Classes 9 and 14, have nothing in common with the contested cap peaks. They are clearly different in nature and purpose, do not originate from the same manufacturers and are not distributed through the same channels. The relevant publics are not the same either. Therefore, the contested cap peaks are dissimilar to all of the opponent’s goods.

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 are directed at both the public at large and business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to higher than average depending on the exact nature, purpose and price of the goods.

3. The signs

AMISU
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 mark consists of the word ‘AMISU’. It does not have any meaning for the relevant public and is distinctive to an average degree.

The contested sign consists of a very slightly stylised depiction of the word ‘AIMISUV’. This word also has no meaning for the relevant public and is distinctive to an average degree.

It follows that a conceptual comparison between the signs is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in the five-letter sequence ‘A*MISU*’. All of the letters that form the earlier mark are included in the contested sign. Furthermore, both signs start with the same letter, ‘A’.

The signs differ in the two additional letters that appear in the contested sign, namely the letter ‘I’ between the letters ‘A’ and ‘M’ and the letter ‘V’ at the end.

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 number of syllables, namely both words will be pronounced in three syllables.

At least some parts of the relevant public, such as the Italian-, Latvian-, Lithuanian-, Maltese-, Polish-, Portuguese-, Romanian-, Slovak-, Slovenian- and Spanish speaking parts of the public, will pronounce the earlier mark as ‘AMISU’ and the contested sign as ‘AIMISUV’. Therefore, the pronunciations coincide in the sequence of phonemes ‘A*MISU*’ and differ in the additional phonemes, ‘I’ and ‘V’, of the contested sign.

Therefore, the signs are 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 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 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

Some of the goods are identical or similar. They target both the public at large and business consumers. The degree of attention will vary from average to higher than average. The distinctiveness of the earlier mark is normal.

Account is 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). 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).

The signs are visually and aurally similar to an average degree, without this being altered by any conceptual perception. As set out in section c) of this decision, the signs differ in two letters. Taking into account the well-established principle that consumers must often trust in their imperfect recollection of trade marks, the differences identified between the signs are not sufficient to counteract the overall similarity between the signs and the possibility that even consumers with a higher than average degree of attention might confuse them.

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 No 3 499 613.

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) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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 will 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

Solveiga BIEZA

Biruté SATAITE-GONZALEZ

Zuzanna STOJKOWICZ

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.