OPPOSITION No B 2 760 018

Maria Asunción Arnal Vellvé, C. València, 245, 1r, 08007 Barcelona, Spain (opponent), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Xuchang LeLe Trading Co. Ltd, No. 296 Sunwan Liu Zu, South of Xudu Road, Xuchang, Henan, People’s Republic of China (applicant), represented by Sakellarides Law Offices, P.O. Box 30122, 100 33 Athens, Greek (professional representative).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 760 018 is upheld for all the contested goods, namely:

Class 25:        Neckties; ascots; scarfs.

2.        European Union trade mark application No 15 348 634 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 348 634 , namely against some of the goods in Class 25. The opposition is based on European Union trade mark registration No 10 006 096. 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 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 25:        Neckties; ascots; scarfs.

The contested neckties; ascots; scarfs are included in the broad category of the opponent’s clothing. Therefore, they are 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 are directed at the public at large. The degree of attention is considered average.

3. The signs

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘tie’ is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public such as Italian.

Both signs are figurative marks. The earlier mark consists of the underlined stylised verbal element ‘B-Tie’ in ochre yellow title case letters. The bottom part of the letter ‘T’ is depicted in blue. The contested sign consists of the verbal element ‘Hi-Tie’ in fairly standard title case letters.

The element ‘Tie’, present in both signs, has no meaning for the Italian relevant public and is, therefore, distinctive. The element ‘B’ of the earlier mark, will be perceived as a letter of the Latin alphabet (08/05/2012, T-101/11, G, EU:T:2012:223, § 56). The distinctiveness of this element is seen as normal, since it does not directly describe or allude to any characteristics of the relevant goods. The element ‘HI’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive. The hyphens in both signs will be perceived as such, as a connector of the verbal elements.

The figurative element of the earlier mark (the underline) has a purely decorative function. Therefore, the verbal elements are more distinctive than the figurative element.    

The signs have no elements that can be considered visually dominant.

Visually, the signs coincide in the word ‘Tie’ present identically in both signs. The signs also coincide in their structure as they are made up of two words separated by a hyphen.

The signs differ in their first letters, ‘B’ in the earlier mark and ‘Hi’ in the contested sign. They also differ in the figurative element (the underline) of the earlier mark, which has a decorative function, and the stylisation of the verbal elements in both signs, which is not particularly striking and will be perceived as a graphical means of bringing the verbal elements to the attention of the public.

In this regard, 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, the earlier mark is pronounced ‘BI/TI/E’ and the contested sign is pronounced ‘I/TI/E’. In Italian, the letter ‘B’, included in the earlier mark, is pronounced /bi/ and the hyphen present in both signs and the letter ‘H’ (in Italian is silent) of the contested sign, will not be pronounced.

The pronunciation of the signs coincides in the sound of the letters ‛*I/TI/E’, present identically in both signs, their number of syllables and rhythms. The pronunciation differs in the sound of the first letter ‘B’ of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘B’ of the earlier mark as a letter of the Latin alphabet , as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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 covered by the trade marks in dispute are identical. They target the public at large, and the degree of attention is average. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually similar to an average degree and aurally similar to a high degree because they share the elements ‘-Tie’ and structure. Visually, they differ in their first letters, ‘B’, in the earlier mark and, ‘Hi’, in the contested sign, as well as in their stylisation and the figurative element, which is purely decorative. Aurally, the similarity between the signs is higher because they coincide in the sound of the letters ‘*I/TI/E’. The conceptual aspect does not influence the assessment of the similarity of the signs as explained in detail above in section c) of this decision.

Therefore, although the signs in the present case depict some differences at the beginning, the common element ‘-Tie’, which is distinctive, is considered to form a substantial part of the marks that will be recalled by consumers. Consequently, the differences are not sufficient to counteract the significant similarity between them and therefore, there is a serious likelihood that the relevant public will confuse them and believe that they come from the same undertaking or from economically-linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In its observations of 24/03/2017, the applicant argues that the verbal element ‘Tie’ is non-distinctive, or else weak, for the relevant goods (namely neckties, ascots and scarfs) as it will be perceived to mean ‘something that is knotted or is to be knotted when worn (e.g. necktie)’. However, it should be noted that the relevant public taken into consideration in the present case is the Italian average consumer for whom the English term ‘Tie’ is meaningless. Therefore, this element is considered distinctive.

Based on an overall assessment, and taking into account the principle of imperfect recollection, there is a likelihood of confusion on the part of the Italian-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 006 096. It follows that the contested sign must be rejected for all the contested goods.

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

Pierluigi M. VILLANI

Birgit FILTENBORG

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.