OPPOSITION No B 2 770 876
WE Brand S.à.r.l., 31-33 Avenue Pasteur, 2311 Luxembourg, Luxembourg (opponent)
a g a i n s t
Shenzhen Xise Toys Company Ltd, Floor 3, No. 25, Tianyang 1RD, Datianyang Industrial Park, Songgang Street, Bao’an District, Shenzhen City, People’s Republic of China (applicant), represented by Rolim, Mietzel, Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).
On 21/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 770 876 is upheld for all the contested goods, namely:
Class 25: Underwear; dressing gowns; uniforms; masquerade costumes; teddies [undergarments]; socks; combinations [clothing]; clothing; cheongsams (Chinese gowns); bras.
2. European Union trade mark application No 15 518 335 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 320.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 518 335, namely against all the goods in Class 25. The opposition is based on Benelux trade mark registration No 953 064. 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.
- The goods
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear, namely bonnets, hats, caps.
The contested goods are the following:
Class 25: Underwear; dressing gowns; uniforms; masquerade costumes; teddies [undergarments]; socks; combinations [clothing]; clothing; cheongsams (Chinese gowns); bras.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods, namely bonnets, hats, caps with a broader category, namely headgear, is exclusive and restricts the scope of protection only to these specifically listed goods.
Clothing is identically contained in both lists of goods.
The contested underwear; dressing gowns; uniforms; masquerade costumes; teddies [undergarments]; socks; combinations [clothing]; cheongsams (Chinese gowns); bras are included in the broad category of the opponent’s clothing. Therefore, they are identical.
- 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 average.
- The signs
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SHE
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Earlier trade mark |
Contested sign |
The relevant territory is Benelux: Belgium, the Netherlands and Luxembourg. The official languages are French, German and Dutch.
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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (07/09/2006, C-108/05, Europolis, EU:C:2006:530).
The earlier mark is a word mark, ‘SHE’. In the case of word marks, the words themselves are protected, not their written form.
The contested sign is a figurative mark consisting of a verbal element, ‘SHEQU’, depicted in slightly stylised black upper case letters.
Because a part of the relevant public in the relevant territory is familiar with English, the basic English word ‘SHE’ will be understood as referring to a female (information extracted from Collins Dictionary on 13/07/2017 at https://www.collinsdictionary.com/). Although it is not excluded that the word ‘SHE’ can be perceived by a part of the relevant public as suggesting that the goods are intended for women, it does not directly describe any particular characteristics of the goods in question. Therefore, the distinctiveness of the word ‘SHE’ in the earlier mark is considered average.
The contested sign, ‘SHEQU’, will be perceived as meaningless by the relevant public and has an average degree of distinctiveness in relation to the relevant goods.
Neither the earlier mark nor the contested sign has any element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in ‘SHE’, which constitutes the entire earlier mark and the first three letters out of five in the contested sign. The signs differ in the last two letters, ‘QU’, of the contested sign.
However, account should also be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, although the additional two letters at the end of the contested sign make it longer and create some visual differences from the earlier mark, the fact that the earlier mark, ‘SHE’, is fully incorporated at the beginning of the contested sign will not go unnoticed by the relevant consumers. Therefore, the marks are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /SHE/. The pronunciation differs in the sound of the letters /QU/ at the end of the contested sign. Although these two letters result in an additional syllable at the end of the contested sign, the fact that the first syllable /SHE/ is identical to the earlier mark will create significant aural similarities between two signs. Therefore, the signs are considered aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the earlier mark. Since one of the signs does not have a meaning, they 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.
- 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.
- 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).
As concluded above, the contested goods are identical to the opponent’s goods and they target the public at large with an average degree of attention. The distinctiveness of the earlier mark is average.
The signs are visually and aurally similar to an average degree on account of the verbal element ‘SHE’, which is the only element of the earlier mark and the first three letters (out of five) of the contested sign. The differences between the earlier mark and the contested sign arise from the letters ‘QU’ at the end of the contested sign. However, even considering that these two additional letters create some visual and phonetic differences between the marks and taking into account that, for the relevant goods (in Class 25), the visual aspect plays a greater role (since the goods in question will be examined visually prior to their purchase), these differences are not able to counteract the similarities arising from the fact that the contested sign fully incorporates the earlier mark at the beginning, and to prevent likelihood of association between the contested sign and the earlier mark.
Considering all the above and taking into account 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), the Opposition Division finds that 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 Benelux trade mark registration No 953 064. 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
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Lena FRANKENBERG GLANTZ |
Rasa BARAKAUSKIENE |
Jessica LEWIS |
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.