OPPOSITION No B 2 704 834

Sisufilm AB, Hagagatan 20, 113 48 Stockholm, Sweden (opponent), represented by Noréns Patentbyrå AB, Narvavägen 12, 115 22 Stockholm, Sweden (professional representative)

a g a i n s t

Little Concepts, Prinsengracht 786, 1017LG Amsterdam, The Netherlands (applicant), represented by DLA Piper Nederland N.V., Amstelveenseweg 638, 1081 JJ Amsterdam, The Netherlands (professional representative).

On 06/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 704 834 is upheld for all the contested goods.

2.        European Union trade mark application No 15 106 776 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 106 776. The opposition is based on European Union trade mark registration No 10 768 539. The opponent invoked Article 8(1)(a) and (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 are the following:

Class 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 25:        Footwear; Clothing.

Footwear and clothing 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.

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

RUFFIE	RAFFIE’S
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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the general public in the European Union, for which the signs have substantial aural similarities and, at the same time, are conceptually neutral, for the reasons given below.

Both signs are word marks; therefore, it is the words as such that are protected and not their written form. Neither of the two words has any clear meaning in the relevant territory and therefore they are both distinctive.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘R-FFIE-’, present identically in both signs. The pronunciation differs in the sounds of the letter ‘U’ in the earlier sign and of the letters ‘A’ and ‘S’ in the contested mark. However, it should be noted that the differing vowels ‘U’ and ‘A’ are unstressed, which makes their pronunciation similar. Therefore, the signs are aurally highly similar.

Conceptually, the applicant argues that the apostrophe followed by the letter ‘S’ in the contested sign will be perceived by the English-speaking part of the public as indicating the possessive case of a word. The applicant argues that this renders the signs conceptually dissimilar. The Opposition Division notes that, even if the public perceives the contested sign as being in the possessive case, this would not create any specific semantic content that would be mentally registered by the public.

Therefore, neither of the signs has a clear meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in the letters ‘R-FFIE-’. However, they differ in their second letters – ‘U’ in the earlier mark and ‘A’ in the contested sign – and in that the contested sign has an apostrophe and the letter ‘S’ at the end. Since most of the letters (including the first letters) in the two words coincide, the signs are visually 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.

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

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. The signs are visually and aurally highly similar and the conceptual aspect does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark 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). Therefore, the limited differences between the signs are incapable of ruling out a likelihood of confusion, especially given that the relevant goods are identical.

The applicant argues that the goods at issue are not in competition with each other, as the applicant’s goods are shoes with LED lights on the outer soles, and that the contested sign is a brand that targets teenagers and children, whereas the opponent’s company and trade mark are associated with a Swedish boxer/TV personality. Furthermore, the applicant implies that the earlier mark is not used on the market in relation to the goods at issue.

In this regard, the Opposition Division notes that the comparison of the goods must be based on the wording indicated in the respective lists of goods. Any actual or intended use not stipulated in the list of goods is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods on which the opposition is based and which it is directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). As regards the applicant’s arguments regarding the actual use of the earlier mark, the Opposition Division points out that this matter has no material bearing on the case, since the earlier mark is not subject to the proof of use requirement within the meaning of Article 42(2) EUTMR and the applicant did not request that the opponent furnish such proof of use. Therefore, the applicant’s arguments are dismissed.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 10 768 539. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Solveiga BIEZA

Milda CERNIAUSKAITE

Ana MUÑÍZ RODRÍGUEZ

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.