OPPOSITION No B 2 678 467

Lin Qingmu, Maestrat, 35, Nave 6 y 7, Poligono Industrial ‘La Cova’, 46940 Manises, Spain (opponent), represented by Newpatent, Puerto, 34, 21001 Huelva, Spain (professional representative)

a g a i n s t

Marian Verenciuc, Strada Horia 24, Dorohoi, Romania (applicant), represented by Bogdan Alecu, Brasov, Strada Paducelului 18, 600012 Brasov, Romania (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 678 467 is upheld for all the contested goods, namely:

Class 25:        Clothing, footwear.

2.        European Union trade mark application No 14 817 696 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 817 696 for the figurative mark , namely against all the goods in Class 25. The opposition is based on Spanish trade mark registration No 3 018 252 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In a communication to the Office dated 11/11/2016 the applicant argues that the opposition should be rejected because the opponent has not proved that the mark on which it relies is in use.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.

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 are the following:

Class 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 25:        Clothing, footwear.

Contested goods in Class 25

Clothing, footwear are identically contained in both lists of goods.

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.

The applicant argues in its observations that the contested goods target specialist consumers whose degree of attention is very high, as they are extremely careful and cautious when purchasing fashion items. However, clothes and footwear are among the basic items one purchases on a regular basis. Therefore, the goods found to be identical are directed at the public at large, which will have an average degree of attention.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier sign is a figurative mark that consists of the verbal element ‘MOOI’, written in large bold black letters. A stylised star is contained in each letter ‘O’. As these stars do not significantly alter the usual appearance of the letters ‘O’, they constitute a banal rather than a particularly original or striking stylisation of the letters ‘O’. Therefore, it cannot be concluded, as the opponent argues, that the stars confer on the earlier sign a high degree of distinctive character, since they are not particularly distinctive elements.

The contested sign is also a figurative mark, consisting of the words ‘MOI MOI’ and, underneath these, the word ‘PARIS’; the verbal elements are surrounded by a rectangular frame consisting of three parallel lines. As the verbal element ‘PARIS’ will be clearly understood by the relevant public as an indication of origin, especially in connection with the goods in question, clothing and footwear, it is descriptive for these goods and therefore lacks distinctiveness.

The verbal elements ‘MOI MOI’ are dominant (more visually eye-catching) in the contested sign. They are also more distinctive than the rectangular frame. 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).

Visually, the sign applied for includes three words and a total of eleven letters, while the earlier mark consists of only one word with four letters. The signs coincide in the letters ‘MO’ at their beginnings and in the letter ‘I’. In this regard, it should be borne in mind that consumers tend to pay more attention to the first part of a trade mark, as the perception of signs is not the result of a careful and attentive examination but a consequence of a general examination involving the identification of common patterns. For this reason, the Opposition Division finds the signs to be visually similar to an average degree.

Aurally, the earlier sign will be pronounced ‘MOI’ and the contested sign ‘MOI MOI PARIS’. Therefore, the pronunciation of the signs coincides in the sound of the letters ‛MOI’, present in the same sequence in both signs. The additional letter ‘O’ in the earlier sign may result in a longer pronunciation of the sound ‘O’, which does not, however, result in a striking difference in the pronunciation of the signs. As mentioned above, the verbal element ‘PARIS’ in the contested sign is non-distinctive and therefore has a limited impact in the aural comparison of the signs.

For these reasons, the conflicting signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the verbal element ‘PARIS’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs 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.

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 contested goods are identical and the conflicting signs are visually and aurally similar to an average degree. The coincidences between the signs are found in the letters ‘MO’ and ‘I’, which form the distinctive verbal elements ‘MOI MOI’ of the contested sign. The signs differ in the stylisation of the letters ‘O’ in the earlier sign, and in the additional letters ‘M’ and ‘I’, the additional word ‘PARIS’ and the rectangular frame in the contested sign. As mentioned above in section c) of this decision, the stylisation of the letters ‘O’ in the earlier sign is of an immaterial character and the word ‘PARIS’ and the rectangular frame in the contested sign are non-distinctive or of limited distinctiveness. Therefore, these differing elements are of secondary importance for the comparison of the signs.

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).

Furthermore, 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).

Considering all the above, 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 Spanish trade mark registration No 3 018 252. 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.

The Opposition Division

Martin EBERL

Alexandra APOSTOLAKIS

Beatrix STELTER

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.