OPPOSITION No B 2 731 134

55 DSL AG, Walchestrasse 27, 8006 Zürich, Switzerland (opponent), represented by Barzano’ & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Yu Duan, No. 39, Shangyaokou, Cenyang Town, Hengfeng County, Shangrao, Jiangxi, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 12/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 731 134 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 341 506, , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 583 716,, and Italian trade mark registration No 1 276 351,  . 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 European Union trade mark registration No 583 716.

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; Underwear; Shoes; sports shoes; Singlets; Swimsuits; tee-shirts; Running shoes; Waterproof clothing; Down jackets; Headgear for wear; Hosiery; Gloves [clothing]; Scarfs; Shawls; Neckties; Belts [clothing]; Leather belts [clothing]; Turbans; shower caps.

Clothing is identically contained in both lists of goods.

The contested underwear; singlets; swimsuits; tee-shirts; waterproof clothing; down jackets; hosiery; gloves [clothing]; scarfs; shawls; neckties; belts [clothing]; leather belts [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested shoes; sports shoes; running shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested headgear for wear; turbans; shower caps 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

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 earlier mark is a figurative mark consisting of a highly stylised black figurative element which for at least part of the public would resemble the profile of a person turned towards the left with a sharply pointed arm and leg both extended beyond the circular border. For other parts of the public, this element may resemble pliers or a cutting tool with a ball balanced on top. This figurative element is set against a white circular background with a black border.

The contested sign is also a purely figurative mark and consists of two highly stylised shapes separated from each other. For part of the public, these shapes could resemble a torso and a thin pointed arm slanting upwards. For another part of the public, these forms may be perceived as a ball on a rolling track or simply as a black circle above a pointed black device.

The figurative elements of the marks may be perceived by at least a part of the public as a moving person, a tool or sporting equipment. As they are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

Neither of the marks has any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their sharp-edged shapes that point towards the left and the circular forms at the top of each mark. However, they differ in the outlines and overall stylisation of the marks (e.g. the earlier mark has a circular outline enclosing most of the mark whereas the contested mark has no such feature), as well as in the softer edges, weaker stylisation and clear separation of the round shape at the top of the contested mark.

Therefore, the signs are visually similar to a low degree.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, although neither of the signs as a whole has any meaning for the public in the relevant territory, part of the public may associate the figurative elements of both signs with one of the meanings above: a moving person. However, the signs are depicted differently and it is also highly possible that the contested mark will be perceived as a fanciful device that does not depict anything at all or, for example, as a ball on a roller track, and that the earlier mark will be perceived as some kind of tool. Therefore, the signs are conceptually similar to only a low degree. For the part of the public that does not perceive any meaning in the marks, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity between 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 contested goods are identical to the opponent’s goods.

The signs are visually similar to a low degree and, for part of the public, conceptually similar to a low degree.

Generally in clothes shops, customers can either choose the clothes they wish to buy themselves or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by their different and specific depictions are particularly relevant when assessing the likelihood of confusion between them.

Despite some similarities between the signs, such as the leftward-pointing shapes and small circular forms above these shapes, the overall designs of the marks are different. The earlier mark consists of a circle and two pointed forms, with the sharp ends of the device extending beyond the circular black outline. The contested sign has no such outline around the figure and the circle at the top is separated from the rest of the figurative element. Even though the goods are identical, the Opposition Division finds that the differences between the marks are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks.

This finding will hold even truer in relation to the part of the relevant public that does not perceive the signs as having the concept of a moving person in common, as, for that part of the public, the signs are visually similar to a low degree and are not conceptually similar.

Considering all the above, and even for identical goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade mark:

Italian trade mark registration No 1 276 351 for the figurative mark .

Since this mark is identical to the one which has been compared and covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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 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.

The Opposition Division

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

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.