OPPOSITION No B 1 927 121

Suarez H, S.A., Gran Vía, 40 Bis - 3º, 48009 Bilbao (Vizcaya), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Ángel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Nanshan Group Co. Ltd, Nanshan Industrial Zone, Longkou City Shandong 265706, People’s Republic of China (applicant), represented by Barzano' & Zanardo Milano S.p.A., Via Borgonuovo 10, 20121 Milano, Italy (professional representative).

On 23/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 927 121 is upheld for all the contested goods and services.

2. European Union trade mark application No 10 037 117 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 10 037 117. The opposition is based on, inter alia, European Union trade mark registration No 9 105 768. 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 9 105 768.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, costume jewellery, precious stones; horological and chronomatic instruments.

Class 18: Leather and imitation leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear, expressly excluding stockings, tights and socks for ladies.

Class 35: Advertising; business management; business administration; office functions, in particular wholesaling and retailing in shops and via global computer networks of clocks and watches, chronometric instruments, silverware, jewellery and precious stones.

The contested goods and services are the following:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Retail services, rendered also on line, in respect of the following goods: leather and imitations of leather, animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; clothing, footwear, headgear.

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 18

Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery are identically contained in both lists of goods and services.

Contested goods in Class 25

Taking into account that stockings, tights and socks for ladies are items which belong to the category of clothing and that these items are expressly excluded from the opponent’s goods in Class 25, the contested clothing includes, as a broader category, the opponent’s clothing, expressly excluding stockings, tights and socks for ladies. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Footwear, headgear are identically contained in both lists of goods and services.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services, rendered also on line, in respect of the following goods: leather and imitations of leather, animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; clothing, footwear, headgear are similar to a low degree to the opponent’s leather and imitations of leather, animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; clothing, footwear, headgear.

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 and services found to be identical or similar to a low degree are directed at the public at large. The degree of attention is deemed average.

3. The signs

ARISTOCRAZY
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 relevant public.

The earlier mark is a word mark which has no elements that could be considered clearly more distinctive or more eye-catching (dominant) than other elements.

The contested sign is a figurative mark which consists of the word’ ARISTO’, written in standard white uppercase with the exception of the letter ‘S’ which is stylised with the help of two grey curves in such a way to form also as a number ‘8’. Below this word, the expression ‘ARISTO EIGHTEEN’ is portrayed in a much smaller standard white typeface. The whole is placed against a black background.

The element ‘EIGHTEEN’ of the contested sign can be associated with the age of the target public of the applicant. Bearing in mind that the relevant goods and services are related to fashion and can be directed at a specific age group such as youngsters, this element is weak for goods and services.

In addition, the initial and bigger element ‘ARISTO’ in the contested sign is the dominant element as it is the most eye-catching whereas the expression ‘ARISTO EIGHTEEN’ occupies a secondary position.

Visually, the signs coincide in the verbal sequence ‘A-R-I-S-T-O’, forming the distinctive and dominant element of the contested sign but which is repeated in a considerably smaller size in a secondary position in this sign. The signs differ further in their respective final letters, namely ‘C-R-A-Z-Y’ in the earlier mark and ‘E-I-G-H-T-E-E-N’, forming a weak element in the contested sign. The signs differ further in the graphic and figurative elements of the contested sign described above. In this respect, however, apart from not being particularly elaborate or sophisticated and therefore not having much of an impact on the consumer’s mind, it is to be noted in any event that 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).

In addition, it must be borne in mind that the beginnings of the conflicting marks are identical and that consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that 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.

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

Aurally, taking into account that element ‘ARISTO EIGHTEEN’ occupies a secondary position and that, in addition, its component EIGHTEEN’ is weak whereas the bigger element ‘ARISTO’ is distinctive and dominant, the Opposition Division considers it unlikely that the public should pronounce the former expression at all. However, precisely because of the presence of this expression and the stylisation of the letter ‘S’, which is preceded by a letter ‘I’ that can also be perceived as the digit ‘1’, the contested sign, as a whole, is likely to be referred to as ‘ARISTO EIGHTEEN’ (pronounced just once). Therefore, the pronunciation of the signs coincides in the sound of the letters ‘A-R-I-S-T-O’, present identically in both signs and differs in the sound of the letters, C-R-A-Z-Y’ in the earlier mark and ‘E-I-G-H-T-E-E-N’, which is weak and part of the secondary element in the contested sign. Nevertheless, the word ‘EIGHTEEN’ pronounced in view of the stylisation of the element ‘ARISTO’ will be perceived in the same way as in the smaller expression ‘ARISTO EIGHTEEN’, namely as a weak element.

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

Conceptually, the analysed public in the relevant territory will perceive the earlier mark as a play of words around the word ‘aristocracy’, meaning ‘a privileged class of people usually of high birth; the nobility’, by combining ‘ARISTO’ which is the informal way to refer to an aristocrat (see https://www.collinsdictionary.com/dictionary/english/aristo), and the word ‘CRAZY’ which means insane or stupid.

The element ‘ARISTO’ in the contested sign will also be perceived by the analysed public as the informal way to refer to an aristocrat and the weak and secondary element ‘EIGHTEEN’, whether perceived as a number or as a word in the sign, will be understood as the cardinal number that is the sum of ten and eight and the product of two and nine and associated with an age-group.

To the extent that the signs both contain a reference to aristocracy but differ in the remaining meaningful elements, the signs 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 and services 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the contested goods are identical to the opponent’s goods and the contested services are similar to a low degree to some of the opponent’s goods. The signs are visually, aurally and conceptually similar to an average degree to the extent that they have ‘ARISTO’ in common which, moreover, is dominant in the contested sign. The distinctiveness of the earlier mark is deemed normal and the attention of the relevant public average.

It must be pointed out that the likelihood of confusion includes the likelihood of association, in the sense that the public may believe that the goods and services come from the same undertaking or from economically related ones. In the present case, the main differences lay in the letters of ‘CRAZY’ of the earlier mark and in the weak secondary element ‘EIGHTEEN’ of the contested sign which is also reflected as a number in the dominant element of the sign. As explained above, the latter element will be perceived by the English-speaking public as a reference to an age-group to whom the goods and services in question are directed. Therefore, this part of the relevant public could believe that the marks at issue are declinations around the root ‘ARISTO’ to which one or more elements are added in order to distinguish different lines of goods and services, and believe that the goods and services at issue originate from the same undertaking or economically linked undertakings.

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 9 105 768. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right European Union trade mark registration No 9 105 768 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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

María Clara ÍBAÑEZ FIORILLO

Martina GALLE

Begoña URIARTE VALIENTE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.