OPPOSITION Nо B 2 519 190

 

Kunert Fashion GmbH, Julius-Kunert-Straße 49, 87509 Immenstadt, Germany (opponent), represented by Rüger Abel Patentanwälte Partgmbb, Webergasse 3, 73728 Esslingen am Neckar, Germany (professional representative) 

 

a g a i n s t

 

Hefeng Yang, C/ Cipriano Díaz El Herrero, 2 - Bloque 5 - 5º B, 28904 Getafe, Spain (applicant), represented by Aranzazu Jane Lowe, Via De Las Dos Castillas, 31 - Portal 3 - 3º Izq., 28224 Pozuelo De Alarcón, Spain (professional representative).

On 26/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 2 519 190 is upheld for all the contested goods.

 

2.	European Union trade mark application No 13 743 109 is rejected in its entirety.

 

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

 

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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

REASONS

 

On 06/05/2015, the opponent filed an opposition against all the goods of European Union trade mark application No 13 743 109 . The opposition is based on, inter alia, European Union trade mark registration No 12 993 218 Hudson’. 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 12 993 218.

 

a) The goods

 

The goods on which the opposition is, inter alia, based are the following:

Class 25: Clothing; Footless tights; Stockings; Stockings (Sweat-absorbent -); Hosiery; Socks and stockings; Tights; Outerclothing; Footwear; Headgear; Garters; Stockings (Sweat-absorbent -); Suspender belts for women.

The contested goods are the following:

 

Class 25: Headgear, Footwear and Clothing, excluding hosiery.

The applicant claims that both companies are active within two different fields, having diverse consumer types in mind, as well as different distribution channels. In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s claim must be set aside.

The contested clothing, excluding hosiery is included in the opponent's broad category of clothing. Therefore, they are identical.

Footwear; headgear are identically contained in both lists of goods.

b) 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.  

 

c) The signs

 

Hudson
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.

 

Some elements in the marks are meaningful in certain territories, for example in those countries where English is understood. In order to take that into account in the conceptual comparison, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The word HUDSON in both marks may be perceived, amongst others as the applicant also claims, as a male first name, a name of a river in North America. In any case, the word is distinctive and the Opposition Division will focus on the public that perceives it as a male first name.

The word CAPTAIN in the contested mark may refer to a master or commander of a ship. Considering that the goods may be specifically seafarers oriented, and that the word can also be seen merely as a courtesy title. The Opposition Division notes that, although the element ‘Captain’ has a normal degree of distinctiveness, it is somewhat subordinate and plays a supporting role with respect to the element ‘Hudson’. This is because it merely helps to define this element, aiming to emphasize the following word and qualify ‘Hudson’ as being a man in command of a ship. The contested mark also features a figurative element composed of a joined image of an anchor and a steering wheel. As it clearly alludes to ships and seafarers, and considering the goods, these elements are considered to be distinctive to a low degree. Also, the word CAPTAIN and the figurative element complement each other and reinforce their less distinctive perception.

The contested sign has no element that could be considered clearly more dominant than other elements.

The applicant argued that the opponent is using the earlier mark in a different manner than registered. However, when assessing identity or similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered/applied for. The actual or possible use of the registered marks in another form is irrelevant when comparing signs (09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38). Therefore, this applicant’s claim is dismissed and for the comparison of signs the earlier mark will be assessed as it is registered.

Visually, the signs coincide in that they both contain the same element HUDSON. They differ in the additional word CAPTAIN, and in the figurative elements of the contested sign.

It is noted, 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).

Therefore, and also considering the distinctiveness of the elements, the signs are visually similar to an average degree.  

 

Aurally, the pronunciation of the signs coincides in the sound of the word HUDSON and differs in the sound of the word CAPTAIN.

 

Therefore, and also considering the distinctiveness and the role played by the mark’s elements, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the similar concept related to the word HUDSON, the signs are conceptually highly similar. Both signs can be perceived to refer to the same person, Hudson, who might be addressed with or without the title ‘Captain’. The remaining elements, due to their less distinctive character do not alter this finding.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) 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.  

 

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods are from the same or economically linked undertaking. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the goods have been found identical.

The signs are visually, aurally and conceptually similar to an average degree since the earlier sign HUDSON is included in its entirety in the contested mark. The consideration that the consumers pay more attention to the beginning of the mark, as argued by the applicant, cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52). In the present case, although the contested sign contains an additional element in its beginning, namely CAPTAIN, this element is considered somewhat subordinate and it plays a supporting role with respect to the element ‘Hudson’. And in any event, it will be perceived as a modifier or a title for the common word HUDSON, thus hardly affecting the similarity between the marks which ultimately refer both to the same. The figurative element is seen as an embellishment with less distinctive value due to the concept it transmits, as explained above.

The applicant also refers to several earlier trade mark registrations containing the word Hudson. The Opposition Division notes, that it is, in principle, restricted in its examination to the trade marks in conflict. It is also noted, that also in case of possible coexistence, and according to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Therefore, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). In the present case it can be the same apparel line, one meant for seafarers.

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 12 993 218. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the earlier right, European Union trade mark registration No 12 993 218, 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 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

 

 

Angela DI BLASIO

Erkki MÜNTER

Aldo BLASI

 

 

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.