OPPOSITION No B 2 370 669

Fame Jeans Inc., 850 McCaffrey, St-Laurent, Quebec H4T 1N1, Canada (opponent), represented by V.O., Carnegieplein 5, 2517 KJ The Hague, Netherlands (professional representative)

a g a i n s t

sunhee koo, via alberto franchetti N20, int C6, 00124 Rome, Italy (applicant)

On 27/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 370 669 is upheld for all the contested goods.

2. Community trade mark application No 12 770 905 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 of Community trade mark application No 12 770 905. The opposition is based on Community trade mark registration No 10 061 224. The opponent invoked Article 8(1)(b) and 8(5) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 and services

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

Class 3: Fragrances, namely, perfumes, cologne and eau de toilette; essential oils for personal use; cosmetics, namely, lip balm.

Class 9: Sun glasses, sun glass cases; protective cases, covers and carrying cases, all for use with portable music players, digital players, mobile phones, tablet computers, personal digital assistants and portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files.

Class 14: Jewellery, namely: bracelets, necklaces, rings, earrings, watches.

Class 18: Umbrellas, Handbags, shoulder bags, sport bags, purse belts, belts.

Class 25: Clothing, accessories, footwear and headgear for men, women, kids and babies, namely: sports shirts, dress shirts, suits, trousers, sweaters, pajamas, underwear, bodysuits, bras, robes, pants, shorts; outerwear, namely: jackets, windbreakers, parkas, coats, duffles and vests, skirts, ties, gloves, scarves, hats, caps, toques, socks, tights; swimwear, bathing costumes, bathing trunks and bikinis; footwear, namely, boots, slippers, leather shoes, sports shoes, gymnastic shoes, bathing shoes, boots, dress shoes and sandals.

Class 35: Operation of retail outlets selling men's, women's, children's and babies' clothing and accessories.

The contested goods are the following:

Class 9: Spectacles; Frames for spectacles and sunglasses; Spectacle cases; Spectacle frames; Reading glasses; Sunglasses.

Class 18: Bags; Leather cases; Leather bags.

Class 25: Clothing; Shoes.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 9

The contested Sunglasses are identically contained in both lists of goods. The contested Spectacles overlap with the opponent’s Sunglasses. This because some sunglasses have both sun protection and sight correction characteristics. Therefore, these sets of goods are considered identical.

The contested Reading glasses are similar to the opponent’s Sunglasses. They have the same nature and can coincide in producers, distribution channels and relevant public. For the same reasoning, it is considered that the contested spectacle cases are similar to the opponent’s sun glass cases.

The contested Frames for spectacles and sunglasses; Spectacle frames are parts for spectacles and sunglasses. These goods are similar to the opponent’s sun glasses; sun glass cases. This is because both sets of goods can have the same producers, distribution channels and/or relevant public. Furthermore, they are complementary.

Contested goods in Class 18

The contested Bags include, as a broader category, the opponent’s Handbags, shoulder bags, sport bags. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested Leather bags overlap with the opponent’s Handbags, because both sets of goods may be handbags made of leather. Therefore, they are considered identical.

The contested Leather cases are goods made of leather used for carrying/storing various items. They are highly similar to the opponent’s Handbags, as both sets of goods can be made from the same material; they have the same method of use and serve similar purposes (carrying/storing items). They can coincide in producers, distribution channels and relevant public.

Contested goods in Class 25

The contested Clothing includes, as a broader category, the opponent’s sports shirts, dress shirts, suits, trousers, sweaters. Likewise, the contested Shoes include, as a broader category, the opponent’s boots, slippers, leather shoes, sports shoes. It is impossible for the Opposition Division to filter these goods from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad categories of the applicant’s goods, they are considered identical to the opponent’s goods.

2. The signs

NUMERO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 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.

Visually, the earlier sign is a word mark consisting of the word element ‘NUMERO’. In the case of word marks, the word, per se, is protected and not its written form, which means that differences in the use of lower or upper case letters are immaterial. The contested sign is figurative and consists of the verbal element ‘Numero’, written in stylised, title-case letters, preceded by a device element placed in its upper left side. Depending on its interpretation, the device can be seen as a cross or a plus, and the small letters ‘he’, or as the verbal element ‘the’ where the letter ‘t’ is highly stylised and bigger than the letters ‘he’.

The signs are visually similar to the extent that they coincide in the letters ‘NUMERO’. On the other hand, they differ in the additional elements of the contested sign (the device element, which might be seen as a cross or a plus and ‘he’ or as ‘the’, and in the stylised font of the letters).

Aurally, the pronunciation of the marks coincides in the sound of the letters ‘Numero’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘plus’, ‘he’ or ‘the’ (depending on the interpretation of the device element) of the contested sign, which have no counterparts in the earlier sign. However, in view of their smaller size and secondary positioning within the contested sign, it is possible that these are not pronounced by the relevant consumers. In that case, the signs will be aurally identical.

Conceptually, the word ‘NUMERO’ included in both signs has no specific meaning for the public in the relevant territory. As regards the contested sign, it contains the concept of the English definite article ‘the’ (for the part of the public who perceives the letter ‘t’) used to refer to a person, place, or thing that is unique; denoting one or more people or things already mentioned or assumed to be common knowledge, or the concept of a cross or a plus (mathematical symbol) and of the pronoun ‘he’, used to refer to a man, boy, or male animal previously mentioned or easily identified (definitions from Oxford Dictionaries online). Therefore, to the extent that the public in the relevant territory will perceive a meaning in the contested sign, while the earlier sign lacks any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no elements which could be considered clearly more distinctive or dominant (visually eye‑catching) than other elements.

The device element of the contested sign can be associated with the English definite article ‘the’ (used to refer to a person, place, or thing that is unique; denoting one or more people or things already mentioned) or with the pronoun ‘he’ (used to refer to a man, boy, or male animal previously mentioned or easily identified). Bearing in mind that the definite article ‘the’ is used to refer to, and, define the word that follows it, as well as the fact that the pronoun ‘he’ may serve as an indication that the goods are meant for male public, it is considered that this element is non‑distinctive for the goods. The public understands the meaning of the element (either as ‘the’ or as ‘he’) and will not pay as much attention to it as to the other more distinctive elements of the mark. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue.

The verbal element ‘Numero’ in the contested sign is the dominant element as it is the most eye‑catching. This is because the device element is smaller in size and shifted to the upper left side towards the edge of the sign.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness/ reputation but did not file any evidence in order to prove such a claim.

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. 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 and similar are directed mainly at the public at large. The level of attention is average.

6. Global assessment, other arguments and conclusion

The earlier trade mark and the contested sign are visually similar. They are aurally identical for those consumers who will not pronounce the device element of the contested sign, or aurally similar for those who will. The verbal element ‘Numero’ included in both signs is conceptually neutral, but the signs are not conceptually similar on account of the concept(s) contained in the device element of the contested sign.

The similarities between the signs are on account of the common element ‘Numero’, which is the only element of the earlier mark. The differences are found in the figurative elements of the contested sign, namely the device element, which might be seen as a cross or a plus and the small letters ‘he’, or as the verbal element ‘the’, and in the stylised font of the letters. However, the Opposition Division considers that these differences are not sufficient to safely exclude a likelihood of confusion between the signs for the following reasons.

With regard to the device element, it must be noted that it is not the dominant element of the contested sign. In addition, as mentioned above, it will not be paid as much attention as to the other more distinctive elements of the contested sign because of the non-distinctive definite article ‘the’ or the pronoun ‘he’ (depending on its interpretation). In addition, as regards the font of the letters of the contested sign and the consumers who will see a cross/a plus therein, it must be noted that it is generally acknowledged that the verbal component of a complex mark is of more importance when analysing the sign as a whole. Therefore, the consumers will not pay as much attention to the figurative elements as to the verbal elements.

The signs coincide in the verbal element ‘Numero’, which is the most distinctive and dominant element of the contested sign and is the only verbal element of the earlier mark.

Taking into account all the relevant circumstances of the case, the Opposition Division considers that the similarities between the marks are sufficient to trigger a likelihood of confusion on the part of the public. The relevant public might perceive the marks as variations of the same brand. Therefore, the consumers could be led to believe that the goods designated by the trade mark applied for come from the same undertaking or economically linked undertakings as the opponent’s goods.

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 b) 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 Community trade mark registration No 10 061 224. 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) CTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) CTMR.

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Julia TESCH

Liliya YORDANOVA

Ewelina SLIWINSKA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.