OPPOSITION No B 2 727 280

Deckers Outdoor Corporation, 250 Coromar Drive, Goleta, California 93117, United States of America (opponent), represented by Studio Torta S.P.A., Via Viotti, 9, 10121 Torino, Italy (professional representative)

a g a i n s t

Luca Stocchino, Viale Colombo 53, 09045 Quartu Sant’Elena, Italy (applicant).

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 727 280 is upheld for all the contested goods, namely:

Class 25: Flip-flops.

2.        European Union trade mark application No 15 277 015 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 15 277 015. The opposition was initially directed against some of the goods in Class 25. Following a limitation requested by the applicant and accepted by the Office, the opposition is directed against some (fewer than initially) of the goods in Class 25. The opposition is based on European Union trade mark registration No 8 518 235. The opponent invoked Article 8(1)(a) and (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.

After a limitation to the list of goods and services requested by the applicant on 09/09/2016 and accepted by the Office, the contested goods are the following:

Class 25: Flip-flops.

        

The contested flip-flops are included in the broad category of the opponent’s footwear. 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 will be average.

3. The signs

mush
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). This applies by analogy to international registrations designating the European Union. 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, ‘mush’, is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark consisting of the element ‘mush’. The contested mark is a figurative mark consisting of the element ‘mush’ in underlined slightly stylised letters and the string of elements ‘#dressyourstyle’ in much smaller letters under the line.

The common element, ‘mush’, means a thick, soft paste in English. Since it is not descriptive, allusive or otherwise weak for the goods involved, it is a distinctive element.

The element ‘#dressyourstyle’ in the contested sign will be associated with ‘wear clothes and related items according to one’s style’. Bearing in mind that the relevant goods are ‘footwear’, this element is weak for these goods, namely for flip-flops. The hash symbol is usually used to designate a number, although in the present case it functions rather as an embellishment.

In addition, the element ‘mush’ in the contested sign is the dominant element, as it is the most eye-catching.

Visually, the signs coincide in the string of letters ‘mush’, which is the only element of the earlier sign and the dominant element of the contested mark. However, they differ in the weak element, ‘#dressyourstyle’, and the figurative elements, limited to the stylisation and the underlining of the contested mark. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛mush’, present identically in both signs, which is distinctive for the English-speaking part of the public and the dominant component of the contested sign. The pronunciation differs in the sound of the letters ‛dressyourstyle’ of the contested mark, which has no counterpart in the earlier sign and which, due to its size, is unlikely to be read. Therefore, the signs are aurally highly similar.

Conceptually, for the English-speaking part of the public of the relevant territory, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For this part of the relevant public, the signs are highly 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 are identical and the signs are highly similar, since the dominant and distinctive part of the contested mark coincides completely (except in stylisation) with the only element of the earlier mark, ‘mush’.

Therefore, there is a likelihood of confusion because the differences between the signs are confined to weak or secondary elements and aspects. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining 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.

The existence of that likelihood of confusion is reinforced by 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). In the present case, the differences produced by the figurative elements are not enough to counteract the similarities of the two signs.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 518 235. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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, he 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

Martin EBERL

Anna POLITI

Vít MAHELKA

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.