OPPOSITION No B 2 704 743

Depeche S.r.l., Via dell'Agricoltura 47/49, 41012 Carpi MO, Italy (opponent), represented by Società Italiana Brevetti S.P.A., Corso dei Tintori, 25, 50122 Firenze, Italy (professional representative).

a g a i n s t

Wuxi Belobaby Cultural and Creative Development Co. Ltd., (Xizhang Station of Subway) 2-1001-1 No. 108 Huishan Ave, Huishan District, Wuxi, Jiangsu Province, People's Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo, 65 – Local 1 "Llopis & Asociados", 03012 Alicante, Spain (professional representative).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 704 743 is upheld for all the contested goods, namely

Class 25:        Clothing; ready-made clothing; masquerade costumes; layettes [clothing]; gloves [clothing]; swimsuits; footwear; headgear for wear; hosiery; scarfs; suspenders; sleep masks; ponchos.

2.        European Union trade mark application No 15 015 654 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 15 015 654, namely against all the goods in Class 25. The opposition is based on, inter alia, Italian trade mark registration No 1 487 886. 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 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 Italian trade mark registration No 1 487 886.

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; ready-made clothing; masquerade costumes; layettes [clothing]; gloves [clothing]; swimsuits; footwear; headgear for wear; hosiery; scarfs; suspenders; sleep masks; ponchos.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 25

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

The contested ready-made clothing; masquerade costumes; layettes [clothing]; gloves [clothing]; swimsuits; ponchos; hosiery; scarfs are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested headgear for wear is included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested suspenders are highly similar to the opponent’s clothing. The goods at issue are articles of fashion and there is the factor of aesthetical complementarity that contributes to the finding of similarity. The goods are directed at the same consumer circles and they move through the same commercial channels. Furthermore, consumers expect that the goods have the same trade origin.

The contested sleep mask is highly similar to the opponent’s clothing. These types of goods share the same purpose in that they are intended to be used to cover and protect part of the human body. They also share the same end consumers and distribution channels and can also have the same producers.

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 or similar are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

In should be noted that both marks are figurative marks however the figurative elements in both marks are limited to their fonts and are in fairly standard character which in the current case have a limited impact on the comparison between the marks.

The earlier mark has two verbal elements ‘TILL’ and ‘da’ separated with a dot. These words have no meaning in the relevant territory. Although the word ‘da’ means ‘from’ in Italian, it is highly unlikely that it will be perceived as a meaningful word in the context of the earlier mark, considering that this word is a preposition which is never used alone but is always used before a noun or pronoun to relate it grammatically or semantically to some other constituent of a sentence.

The contested mark has one verbal element ‘TILLYOU’ which has no meaning in the relevant territory.

It should be noted that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the fact that the letters that the signs have in common, ‘TILL’, are at the beginning of the verbal elements of both signs should be taken into account in the assessment of the overall impression of the signs.

Visually, the signs coincide in the first four letters ‘TILL’ of both marks. However, they differ in their respective endings. The earlier mark ends with ‘.da’ and the contested sign ends with ‘YOU’. They also differ in the stylisation of their verbal elements, which is minor in both marks and does not significantly alter the visual impression produced by the verbal elements.

Therefore, despite the differences in their structures, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛TILL’, present identically in the first part of both signs. The pronunciation differs in the sound of the letters ‘da’ in the earlier mark and the letters ‘YOU’ in the contested sign. Part of the public will pronounce the dot separating the elements ‛TILL’ and ‛da’ in the earlier mark which will distance the marks aurally further from each other. However, considering the relevant goods, the majority of the public will not pronounce the dot in the earlier mark which will result in a higher similarity between the signs.

Therefore, the degree of aural similarity may vary from low to average.

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

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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528§ 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods were found identical or similar to those of the earlier mark and are directed at the public at large with an average degree of attention. The marks in dispute have been found to be visually similar to a low degree and the aural similarity may vary from low to average. Since none of the marks have a meaning a conceptual comparison is not possible.

The signs are similar in that they have the same beginnings, ‘TILL’, and differ in their endings, ‘.da’ versus ‘YOU’. The first parts of the conflicting marks are identical. As stated above, consumers generally tend to focus on the first element of a sign when encountering a trade mark. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

It must be noted that consumers, in general, do not have both signs in front of them when confronted with either of them, such as in advertising, or when purchasing certain goods or services. When confronted with a sign, they rather compare it with their recollection of signs already known for the relevant area of goods. However, consumers do not clearly recollect all the details of the signs, but rather recall only their more distinctive and dominant components. The sign at hand and the ‘imperfect recollection’ of another sign are the basis on which consumers evaluate whether the respective signs are the same or similar ones or not (judgment of 22/06/1999, C-0342/97, ‘Lloyd’, paragraph 26).

Therefore, when encountering these figurative signs, ‘TILL.da’ and ‘TILLYOU’, it is likely that the public will keep in mind the overall impression of the signs, arising from the same beginning and the similar lengths of the signs.

As stated above there might be a lower aural similarity between the marks for the part of the public who will pronounce the dot in the earlier mark however, as mentioned, the majority of the public will not pronounce the dot which will result in a higher aural similarity between the signs. Notwithstanding this, the visual similarities together with the consumers ‘imperfect recollection’ is sufficient to find a likelihood of confusion. The differences in the final letters of the signs are not sufficient to differentiate the marks.

Considering all the above, 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 Italian trade mark registration No 1 487 886. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, Italian trade mark registration No 1 487 886 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 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

Boyana NAYDENOVA

Benjamin Erik WINSNER

Benoit VLEMINCQ

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.