CANCELLATION No 14 642 C (INVALIDITY)

Sock It To Me, Inc., 9592 S.E. Main Street, Milwaukie, Oregon 97222, United States of America (applicant), represented by Ballester IP, Avda. de la Constitución, 16, 1°D, 03002 Alicante, Spain (professional representative)

a g a i n s t

SOCKTHEM S.A., C/ Innovación, Nº 3, 28906 Getafe Madrid, Spain (EUTM proprietor), represented by Ricardo Alcaide Díaz-Llanos, C/ Pérez Galdós, Nº 26, 35002 Las Palmas de Gran Canaria, Spain (professional representative).

On 25/07/2018, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 13 734 413 , namely against some of the goods in Class 25 and some of the services in Class 35. The application is based on international trade mark registrations No 1 213 716 ‘SOCK IT TO ME’ and No 1 232 569 , both designating the European Union. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the marks at issue in relation to identical and similar goods and services.

The earlier mark’s distinctiveness is normal both for English-speaking consumers who understand each mark as a phrase as well as for consumers for who the element ‘SOCK’ is meaningless.

The EUTM proprietor argues that the only similarity between the marks arises from the common element ‘SOCK’ which is, however, non-distinctive for the goods and services at hand and can, therefore, not lead to a likelihood of confusion. The earlier marks lack distinctiveness.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 and services

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.

The goods on which the application is based, and which are covered by both earlier marks, are the following:

Class 25: Socks and stockings.

The contested goods and services are the following:

Class 25: Socks; sock suspenders; stockings; clothing.

Class 35: Wholesale services in relation to clothing; retail services in relation to clothing; Retail store services in the field of clothing.

Contested goods in Class 25

Socks and stockings are identically contained in both lists of goods.

The contested clothing includes, as a broader category, the applicant’s socks. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested sock suspenders are narrow bands of fabric fastened about the leg, used to keep up the applicant’s socks. They are, therefore, complementary to the applicant’s goods, and can have the same producers, distribution channels and end users. Moreover, they are, to a certain extent, in competition with socks that do not require suspenders. Accordingly, it is considered that these goods are similar to a high degree.

Contested services in Class 35

Retail and wholesale 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 wholesale services in relation to clothing; retail services in relation to clothing and retail store services in the field of clothing are similar to a low degree to the applicant’s socks, which are included in and thus identical to clothing.

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 various degrees) are directed at the public at large. The degree of attention is, overall, average.

3. The signs

1) International registration No 1 213 716 SOCK IT TO ME 2) International registration No 1 232 569
Earlier trade mark	Contested trade mark

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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Earlier mark 1) is the word mark ‘SOCK IT TO ME’.

Earlier mark 2) is a figurative mark composed of the letter ‘S’ in slightly tilted, narrow standard typeface in white, placed against a black background in the shape of an irregular star, or a cartoon-like explosion.

The contested mark is a figurative mark composed of the letter ‘S’ in standard typeface in white against a circular black background and, thereunder, the verbal elements ‘SOCK’M’, all represented in standard typeface in black and white.

The marks have no elements that could be considered more dominant (visually eye-catching) than other elements.

The verbal element ‘SOCK’, contained in earlier mark 1) and in the contested sign, will be understood by the part of the public with at least some knowledge of the English language as meaning a cloth covering for the foot, reaching to between the ankle and knee and worn inside a shoe (https://www.collinsdictionary.com/dictionary/english/sock) and is, therefore, descriptive and thus non-distinctive for that part of the public in relation to some of the relevant goods and services, namely socks and related wholesale and retail services. It is weak in relation to the remaining relevant goods, which are closely related to socks.

The English-speaking part of the public will understand the expression ‘SOCK IT TO ME’ of earlier mark 1) as meaning to make a forceful impression on [the speaker]; give it to me; let me have it (https://www.collinsdictionary.com/dictionary/english/sock-it-to; https://www.collinsdictionary.com/submission/10565/Sock+it+to+me; https://en.oxforddictionaries.com/definition/sock).

The expression ‘SOCK’M’ of the contested sign will be understood by that part of the public as a misspelling of the expression ‘sock ’em (= sock them)’, meaning to hit [them] forcefully (https://en.oxforddictionaries.com/definition/sock).

The part of the public that understands these expressions as a whole will, therefore, perceive them as puns in relation to the word ‘SOCK’, which confers at least some distinctiveness upon that element.

‘SOCK’ is distinctive for the part of the public that does not understand its meaning.

However, it has to be noted that earlier mark 1) contains a disclaimer with regard to the element ‘SOCK’. Where the earlier mark contains a disclaimer, the proprietor is prevented from successfully invoking rights in the disclaimed element. Therefore, similarity between two signs cannot be induced or increased because of coincidence or similarity in the disclaimed element (decision of 06/10/2008, R 21/2008-4, AUTENTICO JABUGO / FLOR SIERRA DE JABUGO JABUGO (fig.) et al., § 17, where JABUGO was disclaimed).

Moreover, the letter ‘S’ contained in both earlier mark 2) and the contested sign, taking into account also its position and representation in the latter, is likely to be perceived as indicating the size of the goods at issue, since abbreviations such as ‘S’, ‘M’ and ‘L’ are used in this way on clothing throughout the European Union, notwithstanding the fact that socks are also sold by shoe size. It is therefore non-distinctive in relation to those goods. It is however distinctive in relation to wholesale and retail services.

1. Earlier mark 1)

Any visual, aural and, for a part of the public, conceptual coincidences between earlier mark 1) and the contested sign arise solely from the element ‘SOCK’, whether perceived as a noun or as a verb.

However, since earlier mark 1) contains a disclaimer with regard to the element ‘SOCK’, no similarities between the marks can arise on account of this element.

Therefore, the signs are dissimilar.

Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application must be rejected insofar it is based on earlier mark 1).

2. Earlier mark 2)

Visually, earlier mark 2) and the contested sign coincide in the single letter ‘S’ contained in both signs. However, they differ in the additional verbal elements ‘SOCK’M’ in the contested sign, and in the particular representation of the letter ‘S’ and the background it is placed against in each sign.

Taking into account the different degrees of distinctiveness of the letter ‘S’, the signs are visually dissimilar in relation to the goods at issue, and similar to a very low degree in relation to the services.

Aurally, earlier mark 2) and the contested sign coincide in the sound of the single letter ‘S’ contained in both signs, if pronounced at all in the contested sign. They differ in the additional verbal elements ‘SOCK’M’ in the contested sign. The fact that the first letter of those elements is a letter ‘S*’ is considered a coincidence in irrelevant aspects.

Taking into account the different degrees of distinctiveness of the letter ‘S’, the signs are aurally dissimilar in relation to the goods at issue, and similar to at most a low degree in relation to the services.

Conceptually, the only coincidence between the signs arises from the letter ‘S’, contained in both marks.

Taking into account the different degrees of distinctiveness of the letter ‘S’, as well as the additional elements of the contested sign, their perception by the relevant public and their distinctiveness resulting therefrom, the signs are conceptually dissimilar in relation to the goods at issue, and at most similar to an average degree in relation to the services.

Since the signs are dissimilar in relation to the goods at issue, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the application must be rejected also insofar it is based on earlier mark 2) and directed against the contested goods.

As far as the contested services are concerned, the signs have been found similar in at least one aspect of the comparison. Therefore, the examination of likelihood of confusion will proceed insofar as the application is directed against the contested services.

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 applicant 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, it is only its particular stylisation which confers some distinctiveness on the earlier trade mark. Therefore, the distinctiveness of the earlier mark must be seen as low.

5. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

Taking into account that the distinctiveness of the earlier mark is low for the goods it covers, which have been found similar to only a low degree to the contested services, the similarities between the signs arising from the letter ‘S’ cannot lead to a finding of likelihood of confusion. The additional and differing elements of the marks are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks.

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

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Liliya YORDANOVA

Natascha GALPERIN

Ana MUÑIZ RODRIGUEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 Cancellation Division on request. According to Article 109(8) EUTMR, such a request must be filed within one month of 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.