OPPOSITION No B 2 642 612

Nilson Group AB, Härdgatan 7, 432 19 Varberg, Sweden (opponent), represented by Maqs Advokatbyrå Göteborg AB, Östra Hamngatan 24, Box 119 18, 404 39 Göteborg, Sweden (professional representative)

a g a i n s t

JUN Co. Ltd., 2-3, Minamiaoyama 2-chome, Minato-ku, Tokyo 107-0062, Japan (holder), represented by WP Thompson, 138 Fetter Lane, London, City of EC4A 1BT, United Kingdom (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 642 612 is upheld for all the contested goods and services.

2.        International registration No 1 243 412 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 243 412 , namely against some of the goods and services in Classes 25 and 35. The opposition is based on, inter alia, European Union trade mark registration No 10 598 101 . 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 598 101 for which proof of use has not been requested.

1. The goods and services

The goods on which the opposition is based are the following:

Class 25:        Footwear.

The contested goods and services are the following:

Class 25:         Socks; footwear other than special footwear for sports, namely, shoes, boots, sneakers, sandals and beach sandals; slippers, Japanese style sandals (zori), and Japanese style wooden clogs (geta).

Class 35:        Retail store and online retail store services relating to footwear other than special footwear for sports.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 25 

The contested footwear other than special footwear for sports, namely, shoes, boots, sneakers, sandals and beach sandals; slippers, Japanese style sandals (zori), and Japanese style wooden clogs (geta) are included in the broad category of the opponent’s footwear. Therefore they are identical.

The contested socks are similar to the opponent’s footwear. Socks are items of clothing that cover the feet that serve the same purpose as footwear: both are used for covering and protecting feet and for fashion. They are often found in the same retail outlets. Consumers looking for footwear will expect to find socks in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both socks and footwear. Therefore, the goods are similar.

Contested services in Class 35 

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Therefore the contested retail store and online retail store services relating to footwear other than special footwear for sports are similar to a low degree to the opponent’s footwear. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

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 and services found to be identical and similar to varying degrees are directed at the public at large.

As clothing and footwear are fairly frequently purchased in retail stores and not especially expensive, the level of attention of the consumer 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 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 element ‘LE’ is meaningful in certain territories. For example, in those countries where French is understood it is the masculine definite article, ‘THE’ in English. The element ‘LEJON’ means ‘LION’ in Swedish. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English and German-speaking part of the public where neither of the trade marks has any meaning and where the likelihood of confusion is greatest.

The earlier mark is a figurative mark with the word element ‘LEJON’ that appears in a black bold capital cursive fairly standard typeface. This word is meaningless for the relevant public and so is distinctive for the goods at issue. To the right and partly behind the first letter of ‘LEJON’ is a figurative element that represents the profile of a lion’s head in black. This figurative element is less dominant and is not apparent at first sight as the image is partly covered by the letter ‘L’ and so may not be noticed by part of the public who will just perceive a black irregular shape which is not particularly striking. It is less distinctive than the distinctive lion’s head which has no meaning in relation to the goods at issue. To the right of the lion’s head is a large letter ‘L’ the bottom line of which underlines the word element ‘LEJON’. To the right again is another letter ‘L’ the bottom line of which is on the same level as the word element ‘LEJON’. This double ‘L’ serves to draw attention to and partly frame the verbal and figurative elements and has no meaning in relation to the goods at hand therefore being distinctive.

The contested sign is a figurative trade mark made up of the words ‘LE JUN’ in a black capital standard typeface. The stylisation of the word elements is not distinctive. The words have no meaning for the relevant public and so they are distinctive for the goods and services in question.

The Opposition Division finds it appropriate to focus on the part of the public that does not perceive the lion’s head where the likelihood of confusion is greatest.

Visually, the signs coincide in four out of five letters of their verbal elements. The first three letters of the signs are the same as is the last letter ‘LE_J_N’. The verbal elements differ in the second last letter ‘O’ in the earlier mark and ‘U’ in the contested sign and in that the contested sign is made up of two words and the earlier mark is one word.  In addition the irregular black shape and the double ‘L’ of the earlier mark have no counterparts in the contested sign. Therefore, the signs are 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 ‛LE-J_N’, present identically in both signs. The pronunciation differs only in the sound of the second last letters, the letter ‛O’ of the earlier sign and ‘U’ of the contested mark. The fact that the contested sign is made up of two words does not have an impact on the pronunciation. The ‘double L’ will not be pronounced as it will be perceived as a  figurative embellishment.  Therefore the signs are aurally similar to a high degree.

Conceptually, for the part of the public that do not perceive the lion’s head, neither of the signs has a meaning. Since a conceptual comparison is not possible for this part of the public, the conceptual aspect does not influence the assessment of the similarity of the signs. 

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 this 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 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).

In the present case the goods and services have been found identical, similar and similar to a low degree. The signs are visually similar and aurally highly similar, the conceptual aspect not influencing the similarity between the signs for the part of the public where the lion’s head is not perceived where the likelihood of confusion is greatest. The level of attention of the relevant public is considered to be average and the earlier mark has a normal degree of distinctive character.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Oral communication in respect of the product and the trade mark is not excluded but the choice of the item of clothing is often 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 visual similarity between the signs caused by the very similar verbal elements is relevant when assessing the likelihood of confusion between them.

The verbal elements of the marks coincide in four out of five letters and their pronunciation is highly similar, almost identical. Considering the imperfect recollection of the consumer, it is concluded that the differences between the marks are insufficient to rule out a likelihood of confusion, in particular for the part of the public that do not perceive the lion’s head in the earlier mark. This can be said even for those goods and services found to be similar to a low degree. The similarities between the signs outweigh the differences.

Considering all the above, there is a likelihood of confusion on the part of the English and German-speaking part of the public that do not perceive the lion’s head in the earlier mark. 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 10 598 101. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right No 10 598 101 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 holder 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

Tobias KLEE

Lynn BURTCHAELL

Martin EBERL

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.