OPPOSITION DIVISION
OPPOSITION No B 2 770 249
Tod’s S.P.A., Via Filippo Della Valle, 1, 63811 Sant’Elpidio a Mare (FM), Italy
(opponent), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152
Turin, Italy (professional representative)
a g a i n s t
Qiqing Zhu, Avenida de los Planetas, 13 – P11 C4, 28983 Pinto (Madrid), Spain
(applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via, 69 -5° Of.
510, 28013 Madrid, Spain (professional representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 770 249 is upheld for all the contested goods.
2. European Union trade mark application No 15 512 189 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
PRELIMINARY REMARKS
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 512 189 . The opposition is based on, inter alia, European
Union trade mark registration No 6 490 429 . The opponent invoked
Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 770 249 page: 2 of 6
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 6 490 429.
a)The goods
The goods on which the opposition is based are, inter alia, the following:
Class 25: Clothing of leather, coats of leather, jackets of leather, trousers of leather,
skirts of leather, tops of leather, raincoats of leather, greatcoats of leather, top coats
of leather, belts of leather, shoulder belts for clothing of leather, belts, clothing
accessories of leather included in this class, dresses, quilted jackets, jackets,
greatcoats, jumpers, trousers, jeans, skirts, dresses, coats, overcoats, cloaks,
raincoats, parkas, jerseys of wool, shirts, tee shirts, blouses, cardigans, underwear,
nightdresses, bath robes, bathing suits, negliges, bathing suits, dressing gowns,
eveningwear, one-piece clothing, two-piece clothing, evening gowns, shawls,
scarves, neckties, bow ties, clothing for men, clothing for women, shorts, hawaiian
shirts, sweatshirts, knitwear, polo-shirts, bodysuits, blazers, shorts, sport shirts,
shoes, athletic shoes, slippers, shoe covers, low shoes, shoes of leather, shoes of
rubber, goloshes, golf shoes, clogs, fishing shoes, basketball shoes, dress shoes,
heels, hiking boots, rugby boots, boxing shoes, baseball shoes, patent shoes, beach
shoes, inner soles, soles for footwear, footwear uppers, heels for shoes and boots,
non-slipping devices for shoes and boots, tips for footwear, rain shoes, running
shoes, work shoes, shoes of straw, gymnastics shoes, boots, ski boots, half-boots,
apres ski boots, football boots, lace boots, hockey shoes, handball shoes, shoe
carriers, esparto shoes or sandals, sandals, bath sandals; gloves, gloves for
protection against the cold, gloves of leather, mittens; hats and caps, visors
(headgear), hats and caps of leather.
The contested goods are the following (after the applicant limited the specification on
05/06/2017):
Class 25: Headgear; clothing.
The contested headgear includes, as a broader category, the opponent’s hats and
caps, visors (headgear). Since the Opposition Division cannot dissect ex officio the
broad category of the contested goods, they are considered identical to the
opponent’s goods.
The contested clothing includes, as a broader category, the opponent’s clothing of
leather. Since the Opposition Division cannot dissect ex officio the broad category of
the contested goods, they are considered identical to the opponent’s goods.
Decision on Opposition No B 2 770 249 page: 3 of 6
b)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 considered to be average.
c)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). 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 ‘H’ device is meaningful for at least part of the relevant public that
perceives this device as the letter ‘H’. Consequently, the Opposition Division finds it
appropriate to focus the comparison of the signs on this part of the relevant public.
The earlier mark consists of an ‘H’ device that, on closer examination, seems to have
stitching along its edges. The letter is tilted to the right so that the left stem is longer
than the right stem.
The contested sign also features an ‘H’ device that is tilted to the right. The top edges
of the device are irregular. The left stem is longer than the right stem. In addition,
there is a small triangle on the bottom right beside the ‘H’.
Decision on Opposition No B 2 770 249 page: 4 of 6
The ‘H’ device of the two signs is not descriptive, allusive or otherwise weak for the
relevant goods. Therefore, this device is distinctive.
The small additional device in the contested sign is perceived as a triangle. Since the
triangle is not descriptive, allusive or otherwise weak for the relevant goods it is
distinctive.
The ‘H’ device of the contested trade mark overshadows the triangle of the mark by
virtue of its central position and size. The ‘H’ device is, therefore, the visually
dominant element of the contested trade mark.
Visually, the signs coincide in the shape of the letter ‘H’ that is slightly tilted to the
right and in the longer left stem. However, they differ in the stitching along the edges
of the device in the earlier mark, the irregular edges of the device in the contested
sign as well as the additional small triangle to the right of the ‘H’ device in the
contested sign.
Since the signs differ in minor details of the ‘H’ device and the small triangle in the
contested sign, the signs are highly similar.
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 letter
‛H’, present identically in both signs. Since purely figurative elements such as the
small triangle are not subject to a phonetic assessment, the signs are aurally
identical.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with a similar
meaning (the single letter ‘H’) and the contested sign in addition with a small triangle,
the signs are conceptually 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.
d)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 mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
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.
e)Global assessment, other arguments and conclusion
Decision on Opposition No B 2 770 249 page: 5 of 6
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 goods are identical. They are directed at the general public whose degree of
attention is average.
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).
The signs largely coincide in the special depiction of the letter ‘H’ that is tilted to the
right and has a longer left stem. There is a likelihood of confusion because the
differences between the signs are confined to secondary elements and aspects, such
as the small triangle in the contested sign and some minor details of the ‘H’ devices.
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested
mark as a sub-brand, a variation of the earlier mark, configured in a different way
according to the type of goods that it designates (23/10/2002, T-104/01, Fifties,
EU:T:2002:262, § 49).
The applicant refers to decisions by the General Court to support its arguments and
their reasoning and outcome should be duly considered when deciding upon a
particular case. However, each case has to be dealt with separately and with regard
to its particularities.
In the present case, the previous cases referred to by the applicant are not relevant
to the present proceedings, because they involve figurative signs which do not
coincide in a single letter. Therefore, the previous cases are not comparable to the
case at hand.
As to the applicant’s arguments regarding Article 8(5) EUTMR, the Opposition
Division points out that the opponent did not claim this ground. Insofar as the
applicant’s arguments should be interpreted to refer to the opponent’s claim of
enhanced distinctiveness, the Opposition Division points out that in the present case
there is no need to assess the enhanced degree of distinctiveness of the earlier
mark, since the opposition is successful on the basis of the inherent distinctiveness
of the earlier mark. The result of the decision would be the same even if the earlier
mark enjoyed an enhanced degree of distinctiveness.
Considering all the above, there is a likelihood of confusion on the part of the general
public that perceives the letter ‘H’ in both signs. 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.
Decision on Opposition No B 2 770 249 page: 6 of 6
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 6 490 429. It follows that the contested trade mark
must be rejected for all the contested goods.
As the earlier European Union trade mark registration No 6 490 429 leads to the
success of the opposition and to the rejection of the contested trade mark for all the
goods 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 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Julia SCHRADER Beatrix STELTER Lynn BURTCHAELL
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.