OPPOSITION No B 2 761 875

CSP Paris Fashion Group, 68 Rue Henri Matisse, 02230 Fresnoy-Le-Grand, France (opponent), represented by Cabinet Beau De Lomenie, 158, rue de L'Université, 75340 Paris Cédex 07, France (professional representative)

a g a i n s t

Haining Well Knitting Co., LTD., Building 1-1206, 1207 No. 373 Luolong Road, Haining.Zhejiang, the People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas, Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 761 875 is partially upheld, namely for the following contested goods:

Class 25:        Clothing; ready-made clothing; furs [clothing]; clothing of leather; hats; scarfs; neckties; hosiery; gloves [clothing]; shoes.

2.        European Union trade mark application No 15 493 381 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 15 493 381. The opposition is based on European Union trade mark registration No 527 630. 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; lingerie; hosiery.

The contested goods are the following:

Class 24: Cloth; non-woven textile fabrics; wall hangings of textile; towels of textile; bed covers; bed linen; bed clothes; curtains of textile or plastic; Textile material; furniture coverings of textile.

Class 25: Clothing; ready-made clothing; furs [clothing]; clothing of leather; hats; scarfs; neckties; hosiery; gloves [clothing]; shoes.

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 24

The contested goods of Class 24, except for curtains of plastic, fall under the broader category of textile goods. The main point of contact between textile goods in Class 24 and the opponent’s clothing; footwear; headgear; lingerie; hosiery in Class 25 is that they are usually made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing; footwear; headgear; lingerie; hosiery are meant to be worn by people, for protection and/or fashion, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. The same reasoning fully applies to curtains of plastic, as well. Therefore, all contested goods of Class 24 Cloth; non-woven textile fabrics; wall hangings of textile; bed covers; bed linen; bed clothes; curtains of textile or plastic; Textile material; furniture coverings of textile are considered dissimilar to clothing; footwear; headgear; lingerie; hosiery of the earlier mark.

Contested goods in Class 25

Clothing is identically contained in the lists of both marks and these goods are therefore identical. Ready-made clothing, furs [clothing], clothing of leather; scarfs; neckties; hosiery; gloves [clothing] are all different types of clothing. Accordingly, they are included in the broader category of clothing of the earlier mark and are therefore identical.

Hats of the contested sign are included in the broader category of headgear of the earlier mark and are therefore identical. For the same reasons, shoes of the contested sign are identical to footwear.

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 and similar to a high degree, are directed at the public at large. The degree of attention is considered to be average.

3. The signs

WELL
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 sign is a word mark comprising the simple English word ‘WELL’. For the native English speakers and those who know the grammar and linguistic rules of the English language it will be clear that ‘well’ is an adverb and not the adjective ‘good’ which would be used to describe characteristics of the goods. However, for another part of the public, who have a poor or basic knowledge of English, the word ‘WELL’ may be seen as suggesting positive attributes of the goods. Finally, part of the public (non-English speakers with no knowledge of the language at all) will see the word as meaningless.

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.

In view of the varying degree of distinctiveness of the word ‘WELL’ for the different parts of the public, the Opposition Division will focus on the English-speaking part of the public, who would not see this element as allusive and for whom it will have a normal degree of distinctiveness.

The contested sign is a black and white figurative mark, containing the phrase ‘WELL KNITTING’ in upper case and positioned in the same line and a figurative element, resembling the letter ‘W’. The Opposition Division agrees with the opponent, that even though the letter ‘E’ in ‘WELL’ is reversed, it will be perceived by consumers as an ‘E’. The level of stylisation of the letters is very low and given that the letter ‘E’ is present in all alphabets of the languages of the European Union, it is not likely that consumers perceive it as a figurative device or as unknown letter. The above considerations on the perception of ‘WELL’ in connection with the earlier mark are fully applicable with respect to the contested sign. ‘KNITTING’ is an English word, and in view of the goods in question, may be understood as describing the method of making part of them (e.g. for some of the goods of Class 25). However, for some of the goods it is less likely or even unlikely that this element be perceived as referring to the method of making them. Hence, the word would be allusive to characteristics of some of the goods and is therefore considered to be of a lower degree of distinctiveness for these goods.

The figurative element of the contested sign is not specifically original or imaginative. It is likely to be perceived as a stylised letter ‘W’, and this idea is strengthened by the fact that ‘W’ is the first letter of the following word.

Even though ‘KNITTING’ has a low degree of distinctiveness for some goods, the word expression ‘WELL KNITTING’ taken as a whole would not have a meaning and would have a greater impact on the perception of the sign taken as a whole. It is true that the figurative device is likely to be seen as the letter ‘W’, which is of normal degree of distinctiveness with respect to the goods at issue. However, it is highly likely that it is seen as the abbreviation of the verbal element ‘WELL’ that follows it, in which case it will have a somehow subordinate and dependent role as compared to ‘WELL KNITTING’.

Further, the contested sign has no elements that could be considered clearly more dominant than other elements. It is true that the figurative device is slightly bigger in size than the word elements but given that it is not particularly original, it will not divert the consumer’s attention from the other elements of the mark. ‘WELL KNITTING’ is the word element of the sign, it is represented in sufficiently big letters to attract the attention and in view of the fact that consumers tend to easier notice and remember the word elements in composite signs, this element equally attracts the consumer’s attention.

Visually, the signs coincide in ‘WELL’, which constitutes the earlier mark and is the first of the two-word expression ‘WELL KNITTING” of the contested sign. The figurative device of the contested sign will most probably be perceived as a stylised letter ‘W’ and is likely to further focus attention on ‘WELL’ instead of independently contributing to the visual perception of the sign as a whole. Accordingly, in view of the common element ‘WELL’, which constitutes the earlier mark and is part of the distinctive element of the contested sign, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘WELL’ and differs in the sound of ‘KNITTING’ of the contested sign, which is positioned in the second place and does not have a counterpart in the earlier mark. It has also been found weak for some goods. The stylised letter ‘W’ in the contested sign is less likely to be pronounced as consumers will naturally refer to the words in the mark as opposed to a single stylised letter. The differences in the pronunciation of the signs due to the additional element in the contested sign are not sufficient to outweigh the similarities owing to the position and distinctiveness of this extra word. Therefore, the signs are considered to be aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks for the English-speaking public. Accordingly, there will be an average degree of conceptual similarity due to the shared element ‘WELL’.

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.

According to the opponent the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use. The opponent has not specified the territory for which enhanced distinctiveness is claimed. In view of the fact however that the basis of the opposition is a European Union trade mark registration, enhanced distinctiveness in the European Union should be proven.

The enhanced distinctiveness claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. The more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

In support of its claim the opponent submits: a marketing study of the brand ‘WELL’ in 2003 and 2009, a catalogue of hosiery and lingerie for the year 2014, a catalogue of lingerie for the year 2016 and a list of trade marks owned by the opponent and registered in different jurisdictions all over the world.

A successful enhanced distinctiveness claim requires that the party proves that the mark in question enjoys recognition by the relevant public due to its intensive use in relation to the goods or services in question. In accordance with Rule 19(3) EUTMIR, the evidence should be submitted in the language of the proceedings or duly accompanied by a translation. Translations may be unnecessary in a very limited number of cases concerning evidence containing mainly figures or statistics, the meaning of which is evident without need of a translation, for example such as invoices, diagrams, brochures, catalogues. All evidence submitted by the opponent with one exception, are in French. While for the two catalogues, which contain images of the offered products, a translation would not be absolutely necessary to determine if they show any use or other related information on the mark in question, the same is not the case with the marketing study that may not be interpreted without a translation into the language of the proceedings. Therefore, in accordance with Rule 19(4) EUTMIR this piece of evidence will not be taken into account.

The two catalogues show use of the earlier mark presumably in France in relation to lingerie and hosiery in 2014 and 2016. They, however, do not serve to demonstrate recognition of the mark by the relevant public. No information is submitted that shows the intensity of use of the mark, its market share, level of recognition or other factors of relevance to show that the mark is known by a significant portion of the targeted European Union public in relation to the relevant goods.

Additionally, the list of trade mark registrations itself is not cable of proving use of the mark in a way that makes it known to the relevant public in the relevant territory. The fact that the opponent has many trade mark registrations may only indirectly attests to an international circulation of the brand, but cannot be decisively prove of enhanced distinctiveness.

In view of the above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use in relation to the goods of Class 25 of the earlier mark.

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 a normal degree of distinctiveness.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors 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).

The signs were found to coincide in the element ‘WELL, which constitutes the earlier mark and is the first word element in the contested sign. Upon taking into account the remaining elements of the contested sign and other relevant factors, the comparison reached a conclusion that the signs are visually and aurally similar to an average degree and conceptually similar to an average degree.

The contested goods of Class 24 were found to be dissimilar to the goods of the earlier mark and those of Class 25 – identical. They are directed at the public at large whose degree of attention is average. Furthermore, the earlier trade mark has a normal degree of distinctiveness with respect to the goods at issue.  

It is to be pointed out that in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff and the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the established average degree of visual similarity between the signs is particularly relevant when assessing the likelihood of confusion.

In the light of the foregoing, also taking into account the principle of interdependence mentioned above, there is a likelihood of confusion in relation to all goods of Class 25 and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 527 630.

It follows from the above that the contested trade mark must be rejected for all goods of Class 25.

The contested goods of Class 24 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

Lucinda CARNEY

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

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.