OPPOSITION No B 2 751 348
Guess? IP Holder L.P., 1444 South Alameda Street, Los Angeles, California 90021, United States of America (opponent), represented by Selarl Hoffman, 26, Avenue Kléber, 75116 Paris, France (professional representative)
a g a i n s t
Qingju Ye, Via Ugo Pesci n. 48, 00159 Rome, Italy (applicant).
On 29/06/2017, the Opposition Division takes the following
1. Opposition No B 2 751 348 is rejected in its entirety.
2. The opponent bears the costs.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 406 796, namely against all the goods in Class 25.
The opposition is based on European Union trade mark registration No 135 640. 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 signs
Earlier trade mark
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 word ‘GUESS’ will be understood by the English-speaking part of the public as an attempt to give an answer or provide an opinion which may not be true because you do not have definite knowledge about the matter concerned (definitions from Oxford Dictionaries online at http://www.oxforddictionaries.com). The question mark placed below the said word reinforces the concept of a kind of riddle to be guessed. Neither the word ‘GUESS’ nor the question mark are descriptive, allusive or otherwise weak for the relevant goods, therefore they are distinctive. For the remaining part of the relevant public, the word ‘GUESS’ has no meaning and is also distinctive.
The Opposition Division concurs with the opponent’s assertion that the word ‘JEANS’, referring to garments of a twilled cotton cloth (usually trousers), is likely to be understood by the public examined, despite their not being familiar with English, given that it equally exists in a number of languages other than English (e.g. Danish, Swedish, French, German, Italian, Dutch, Portuguese) and it is a widespread term used as such in the clothing and textile industries in general. Thus the word ‘JEANS’ in the contested mark is purely descriptive as regards clothing items in Class 25 (see, by analogy 13/07/2004, T-115/03, Gas Station, EU:T:2004:236, § 34). Consequently, its impact is very limited when assessing the likelihood of confusion between the marks at issue.
Furthermore, it should be pointed out that the inverted triangles in the marks under comparison are simple geometric shapes of a decorative nature. Therefore, the remaining elements of the marks, such as the term ‘GUESS’ along with the question mark of the earlier mark and a line of black and white dots placed along the interior of the triangular background of the contested sign are considered more distinctive than the common geometrical shape.
Visually, the signs coincide in the form of an inverted triangular background although the triangle is outlined in black in the earlier mark and is shaded grey in the contested sign. The signs differ in all the remaining elements, especially the verbal element ‘GUESS’ in the earlier mark, which is distinctive for the entire relevant public, the earlier mark’s question mark, the verbal element ‘JEANS’, although non-distinctive, and the additional figurative elements of the contested sign such as the line of black and white dots placed along the interior of the triangle. Consequently, the only coincidence between the signs is due to the use of an inverted triangle, which is however a simple geometric shape with a limited degree of distinctiveness as mentioned above. Taking into account the limited distinctiveness of the common figurative element in the form of an inverted triangle, and the additional distinctive elements in the marks, it is considered that the marks show significant differences which lead to an overall different visual impression. Thus, the marks are considered visually dissimilar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced as ‘GUESS’ whereas the contested sign will be pronounced as ‘JEANS’. Therefore the marks coincide solely in the sound of their last letter ‘S’. Contrary to the opponent’s claims, it is concluded that the signs are not aurally similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the earlier mark will be associated by the entire relevant public with the concept of the question mark, and by part of the relevant public also with the concept of the English word ‘GUESS’, while the contested sign will be associated with the concept of the non-distinctive word ‘JEANS’, the signs are not conceptually similar. For the sake of completeness, the Opposition Division points out that although both marks depict a triangle, it is a basic shape and does not lead to any conceptual similarity either.
In light of the foregoing, the signs have been found visually, aurally and conceptually dissimilar.
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected. Therefore it is not necessary to analyse the goods at stake.
Likewise, the question of an enhanced distinctive character does not come into play since the finding of dissimilarity would still be valid even if the earlier trade mark was to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the high distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
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.