OPPOSITION No B 2 723 727

CKL Holdings N.V., Leeuwenstraat 4, 2000 Antwerp, Belgium (opponent)

a g a i n s t

Yiwu zhenghao E-Commerce Co., Ltd., unit 3-305, building 50 Beiyuan chunhan 4, Yiwu, The People’s Republic of China (applicant), represented by Bellavista Legal, S.L., Av. Diagonal 463 bis 3r 4a, 08036 Barcelona, Spain (professional representative).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 723 727 is upheld for all the contested goods.

2.        European Union trade mark application No 15 233 547 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 233 547 namely against all the goods in Class 25. The opposition is based on Benelux trade mark registration No 984 577. 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 on  the following:

Class 25:        Clothing; footwear; headgear; swimwear; sportswear; leisurewear.

The contested goods are the following:

Class 25:        Layettes [clothing]; shoes; caps [headwear]; hosiery; gloves; scarfs; girdles; skirts; masquerade costumes; men's and women's jackets, coats, trousers, vests.

The contested layettes [clothing]; hosiery; gloves; scarfs; girdles; skirts; masquerade costumes; men's and women's jackets, coats, trousers, vests are all included in the broad category of the opponent’s clothing.

Therefore, they are identical.

The contested shoes are included in the broad category of the opponent’s footwear.

Therefore, they are identical.

The contested caps [headwear] are included in the broad category of the opponent’s headgear.

Therefore, they are identical.

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 are directed at the public at large. The degree of attention is average.

3. The signs

Kevin
Earlier trade mark	Contested sign

The relevant territory is Benelux.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

The earlier mark is the word mark ‘Kevin’. The contested sign is a figurative mark, consisting of the words ‘KEVIN YUN’ written in a stylised typeface. Above this is a stylised letter ‘K’ depicted in a frame.

The signs have no elements that could be considered more dominant (visually eye-catching) than other elements.

The word ‘KEVIN’, contained in both signs, is a widely known male name in Europe including Benelux.

Although the word ‘YUN’ in the contested sign is not a common name or surname in the relevant territory, the word combination ‘KEVIN YUN’ in the contested sign will be perceived as a name and surname, because of the familiarity of the word ‘KEVIN’ as a male name. The words in both signs and the figurative element, namely the stylised letter ‘K’ depicted in a frame which refers to the first letter of the word ‘KEVIN’ in the contested sign, has no meaning that would be directly related to the relevant goods. This makes them distinctive to an average degree.

Visually, the signs coincide in the word ‘KEVIN’, which constitutes the entire earlier mark and plays a distinctive role in the contested sign. However, the marks differ in the additional word contained in the contested sign, ‘YUN’, and the figurative device which is not particularly striking and will be perceived as the first letter of the word ‘KEVIN’ and it will reinforce the attention of the relevant public to the name ‘KEVIN’.

Additionally when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘KEVIN’, present identically in both signs and will be pronounced in two syllables. The pronunciation differs in the sound of the additional word in the contested sign, ‘YUN’, which is relatively short. It will be pronounced in a single syllable and has no counterpart in the earlier mark. Also the figurative device of the contested sign will not be pronounced.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the word ‘KEVIN’, constituting the entire earlier mark and being the first word element of the contested sign, will be understood as a male name by the relevant public. The word ‘YUN’ will be perceived as a foreign (possibly Asian) surname since it is used with the widely known name ‘KEVIN’. Also, the stylised letter ‘K’ in the contested sign increases the perception of the word ‘KEVIN’ shared by both marks.  

Consequently, the relevant public will perceive the marks as names as they both refer to the male name ‘KEVIN’.

Therefore, they are conceptually similar to an average degree.

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 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.

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 EUTMR). 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).

Moreover, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that 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). This is particularly relevant in the present case as the conflicting goods are identical.

The goods are directed at the public at large, which has an average degree of attention. Furthermore, the earlier mark is considered to have a normal degree of distinctiveness in relation to the relevant goods.

The signs are visually, aurally and conceptually similar to an average degree due to the commonality in the name ‘KEVIN’, which constitutes the entire earlier trade mark and is the distinctive element of the contested sign.

Furthermore, the likelihood of confusion includes the likelihood of association with the earlier trade mark, 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. In the present case, it is conceivable that the relevant consumer would perceive the marks as variations of each other. It is, therefore, conceivable that the target public might regard the goods designated by the conflicting trade marks as coming from the same undertaking or economically linked undertakings.

Considering all of the above, the Opposition Division finds that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 984 577.

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

Erkki MÜNTER

Bekir GÜVEN

Judit NÉMETH

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.