OPPOSITION No B 2 785 064

zero Holding GmbH & Co. KG, Konsul-Smidt-Str. 8G, Speicher 1, Haus 2-4, 28217 Bremen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Yongchao Ding, Via Cne Ostiense 159, 00100 Roma, Italy (applicant).

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 785 064 is upheld for all the contested goods, namely 

Class 25:        Clothing; Footwear; Headgear.

2.        European Union trade mark application No 15 466 089 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 15 466 089 (figurative), namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 5 345 798  (figurative). 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, inter alia, the following:

Class 25: Outerclothing, including knitted and woven clothing; footwear, headgear, belts (except belts made of common and precious metals and imitations thereof) (clothing), gloves (clothing), scarves, headscarves and neckerchiefs.

The contested goods are the following:

Class 25: Clothing; Footwear; Headgear.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘including’, 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).

Contested goods in Class 25

Footwear and headgear are identically contained in the list of goods of both marks.

The earlier mark’s outerclothing, including knitted and woven clothing is included in the broader category of the contested clothing. Since the Opposition Division may not dissect ex officio the broad category of the applicant’s goods, they are considered identical to outerclothing, including knitted and woven clothing of the opponent.

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. Nothing in the nature of the goods, their manner of purchase or effect on the consumers requires that consumers are more attentive and observant when choosing such goods. Therefore, the degree of is considered to be 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 earlier mark is a figurative mark comprised of the word ‘zero’ written in lower case in a not very stylised font featuring more angular shapes. ‘Zero’ of the earlier sign, being a basic English word indicating the arithmetical figure ‘0’, which denotes ‘nought’ or no quantity or number, nothing (Oxford English Dictionary available at www.oed.com), has a meaning at least for a significant part of the relevant public. It is not only in English, but also in other European Union languages (mainly Romance languages, such as Spanish, French, Italian, Portuguese and Romanian) that identical or highly similar words to ‘zero’ (‘cero’, ‘zéro’ and ‘zero’) have the same meaning (09/02/2017, T-106/16, ziro, ECLI:EU:T:2017:67, §47). Irrespective of whether the word will be associated with any meaning or not, since such meaning is in no way related to the goods in question, the distinctiveness of ‘zero’ must be seen as normal.

The contested sign is composed of the word element ‘ITAZERO’ in upper case, and the inner part of the letter ‘O’, which is filled with three vertical lines, coloured from left to right in green, white and red. It also has a stylised image of a wreath (possibly a laurel wreath) positioned above the letter ‘Z’ of the word element.

‘ITAZERO’ taken as a whole has no meaning for the relevant public. Nevertheless, while it is true that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will likely break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In the case at hand, when the sign is perceived as a whole, a consumer who is familiar with the meaning of the word ‘zero’ will easily divide ‘ITAZERO’ into two components, namely ‘ITA’ and ‘ZERO’. Moreover, the first part of the mark, ‘ITA’, is often used as an abbreviation for ‘Italy’ or ‘Italian’ and the coloured stripes in the inner part of the letter ‘O’ resemble the Italian national flag. These two elements in the sign which alone evoke Italy, reinforce each other and make the ‘Italy-related’ associations of the mark clearer and easy to notice. In view of the goods in question, ‘ITA’ and the colouring of the letter ‘O’ will be allusive, as they are likely to be understood as indicating Italian origin of the goods. What is said above regarding the ‘ZERO’ element is fully applicable in the case at hand, which will therefore be of normal distinctiveness. The figurative device of a wreath, when taken together with the goods in question, is unlikely to evoke a meaning that is descriptive of or allusive to characteristics of the goods. The Opposition Division has considered the argument of the opponent that it might be seen as laudatory, but even though such connotations are not excluded, given the overall stylization of the element, it is considered that this would be in quite exceptional cases.  

It is to be noted 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). This premise is fully applicable to the contested sign. The figurative device in the contested sign is not particularly imaginative and is likely to be perceived as a purely decorative element. Given the allusive nature of ‘ITA’, it is mainly the word element ‘ZERO’ that will attract the attention of the consumers and that will have a major impact on the perception of the sign as a whole.

In view of the positioning and size of all components in the contested sign, it is not clear why in the opponent’s view it is ‘ZERO’ that is the dominant element in the sign. It is clearly set in the case law that the weak distinctive character of an element does not as a rule prevent it from dominating the overall visual impression created by a sign specifically due to its size and positioning. In the case at hand however, none of the elements of the sign is clearly more eye-catching than the others. Therefore, it is considered that the contested sign does not have a dominant element.

Visually, the signs coincide in ‘ZERO’, which is the entire word element of the earlier mark and represents the last two syllables of the four syllables in total of the word element of the contested sign. The wording of both signs is represented in specific but not very stylised fonts. The signs further differ in the first part ‘ITA’ of the contested sign, the figurative device and the colour combination in the letter ‘O’ in the contested sign, which have no counterparts in the earlier mark. Additionally, the earlier mark is represented in lowercase, while the word element of the contested one in upper case.

It is true that it is usually the beginning of the signs that focuses the attention of consumers, however this is not an absolute principle and in each case a separate assessment should be made. In the case at hand, ‘ITAZERO’ is sufficiently short so that consumers read the whole word, without overlooking its ending. Moreover, given the Italy-related connotations of ‘ITA’, it is ‘ZERO’, i.e. the coinciding element, that will have a stronger impact in the contested sign. Finally, a coincidence of two out of four syllables, which are four out of seven letters, may not go unnoticed, even if it is in the last part of the word as far as the contested sign is concerned  

The visual differences between the signs which are confined to elements of lesser impact (such as a decorative figurative device or elements allusive to characteristics of the goods) may not counteract the visual similarities between them, which are clearly identified and remembered by consumers. Therefore, the signs are considered 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 ‘ZERO’ identically contained in both signs. The pronunciation differs in the sound of the letters ‘ITA’ in the contested sign, which have no counterpart in the earlier mark and which are allusive.  

Given that the earlier mark is entirely contained in the contested sign, where it represents four out of the seven letters in total in the contested sign, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public, who know the meaning of ‘zero’, in view of the allusive nature of the ‘Italy-related’ elements of the contested mark and the fact that consumers will pay less attention to them, the signs will be conceptually similar at least to an average degree. For those who do not associate a meaning with ‘zero’, the signs will not be conceptually similar (due to the ‘Italy-related’ connotations and/or the wreath-related concept, present in the contested sign).

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 taken 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

Evaluating likelihood of confusion implies and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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).

It has been established above that the signs are aurally and visually similar to an average degree and that for part of the public they are conceptually similar at least to an average degree whereas they are not conceptually similar for another part. The goods are identical and target the general public showing an average degree of attention. The earlier mark is of normal distinctiveness with respect to the goods in question.

The earlier mark is entirely contained in the contested one, where the additional elements in it are of minor importance, given their allusive nature or purely decorative functions. It is to be noted that even if there are consumers who do not grasp the ‘Italy-related’ elements of the contested mark, what is considered quite unlikely given the presence of two separate elements in the sign that bring to mind such associations, the differences in the signs would not be sufficient to counteract the similarities.

As has been established by the Court, it is common in the clothing sector for the same mark to be configured in various different ways according to the type of product which it designates. It is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various lines from one another (03/07/2013, T-129/01, BUDMEN, ECLI:EU:T:2003:184, § 53). These arguments are fully applicable to the footwear and headgear sectors, as well. In such circumstances, given that the earlier mark is entirely included in the contested one and that the goods at issue are identical, it is highly conceivable that the relevant consumer may regard the goods designated by the earlier and contested marks as belonging to two distinct ranges of products, but coming, none the less, from the same undertaking (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 345 798. It follows that the contested trade mark 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

Eva Inés PÉREZ SANTONJA

Teodora TSENOVA-PETROVA

Lucinda CARNEY

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.