OPPOSITION No B 2 597 337

Dechics, S.L., C. San Blas, 1, 03640 Alicante, Spain (opponent), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Chun Au Knitting Factory Limited, 5/F. Unit a-1, Eastern Sea Industrial Bldg., 29-39 Kwai Cheong Road, Kwai Chung, n.t., Hong Kong SAR, People’s Republic of China (applicant), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative).

On 13/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 597 337 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 407 712. The opposition is based on Spanish trade mark registration No 3 504 755. 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.

1. The goods

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

Class 25: Clothing, footwear, belts, headgear.

The contested goods are the following:

Class 25: Clothing, footwear, headgear.

Clothing, footwear, headgear are identically contained in both lists of goods.

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 considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 composed of a stylised depiction of the joined words ‘DeChics’, in which the letters are in bright colours (red, yellow, blue and green) and the dot over the ‘i’ is a red star. A part of the relevant public will perceive the element ‘Chics’ in the earlier mark as a misspelling of the Spanish plural form of the noun ‘chicas’ or ‘chicos’, meaning ‘girls’ or ‘boys’. The initial element ‘De’ is a Spanish preposition, meaning ‘of’. Therefore, it is reasonable to assume that a part of the relevant public is likely to interpret the earlier mark as a whole as referring to something intended for or related to boys or girls.

Taking into account the relevant goods, the compound ‘DeChics’ will have some allusive connotations insofar as it will be seen as a reference to the targeted customer by the part of the relevant public that perceives the abovementioned semantic content in the mark. Its distinctive character is therefore below average for that part of the relevant public.

For the part of the relevant public that does not connect the earlier mark’s verbal element ‘DeChics’ with ‘boys’ or ‘girls’, the mark as a whole lacks any clear meaning.

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

The contested sign is a composite mark featuring a large figurative element comprising fanciful characters (suggestive of Asian language characters) next to a depiction of an even larger chick. Below these, the word ‘CHICKS’ is depicted in very small letters in a fairly standard typeface. The word ‘CHICKS’ does not have a meaning for the relevant public. Unlike the earlier mark, this element will not be recognised as a misspelling, since the contested sign has no other elements that support a Spanish interpretation of the sign. Moreover, the use of the letters ‘ck’ reinforces the impression of a foreign language, since this combination is not used in Spanish.

The fanciful characters and the image of a chick in the contested trade mark overshadow the verbal element of the mark by virtue of their central position and size. They are the visually co-dominant elements of the contested mark and will be perceived as such. Furthermore, these elements enjoy a normal distinctiveness in relation to the relevant goods.

Visually, the signs coincide in the letters ‘CHIC*S’. However, they differ in the bright colours, the beginning of the earlier mark, namely the letters ‘De’, the red star above the letter ‘i’, and the letter ‘K’ of the contested sign, none of which has counterparts in the other sign. The signs further differ in the stylisation of the letters, the fanciful characters and the image of a chick in the contested sign.

Although, 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, the word ‘CHICKS’ of the contested sign is here overshadowed by the figurative elements. Therefore, the overall structures and the specific arrangements of the elements in each of the signs are strikingly different.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CHIC(K)S’ (the pronunciation of ‘c’ and ‘ck’ is the same in Spanish).

The pronunciation differs in the sound of the letters ‘De’ at the beginning of the earlier mark, which have no counterparts in the contested sign. The fanciful characters in the contested sign do not have counterparts in the earlier mark but will not be pronounced, since they will not be read or understood by the relevant public.

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

Conceptually, although part of the public in the relevant territory will perceive the joined words in the earlier mark as referring to ‘de chicas’ (of girls) or ‘de chicos’ (of boys), the word ‘CHICKS’ in the contested sign is meaningless. The figurative elements of the signs, namely the star in the earlier mark versus the fanciful characters (evoking Asia) and the chick in the contested sign, convey different concepts.

As the signs convey different concepts, they are conceptually dissimilar.

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, even though the word element of the earlier trade mark may be allusive for the relevant goods for part of the relevant public as stated above in section c) of this decision, its distinctiveness as a whole must be seen as normal on account of the specific combination and arrangement of its elements.

5. Global assessment, other arguments and conclusion

The 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 (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the conflicting goods are identical and the degree of attention paid by the relevant public is average.

The marks are visually similar to a low degree and aurally similar to an average degree. Conceptually, the signs are dissimilar.

Although the aural commonalities in the letters ‘CHIC(K)S’ and their corresponding sounds cannot be denied, it must be borne in mind that generally, in shops where clothing, footwear and headgear are sold, customers can either choose the garments and other fashion articles 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, footwear or headgear 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 fact that the signs have entirely different structures, as explained in detail in section c), is particularly relevant in the present case when assessing the likelihood of confusion. The fact that the earlier mark is depicted in bright colours, whereas the contested sign is a plain black-and-white image, makes the overall impressions given by the signs even more distinct. Contrary to the opponent’s arguments, the signs have immediately noticeable and striking differences especially in their figurative elements. These differences will be mentally registered by the relevant public when purchasing the relevant goods and encountering the signs. The Opposition Division considers that these differences are more than sufficient to enable the relevant public to not confuse or associate the signs, despite the goods being identical.

The opponent refers to a previous decision of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, previous case B 2 103 201, referred to by the opponent, is not relevant to the present proceedings, because the previous decision compares two word marks, the relevant territory is different and different goods are involved.

Consequently, in a global assessment of all the factors relevant to the present case, the relevant public is not likely to believe that the earlier mark and the contested sign originate from the same undertaking or economically-linked undertakings, and, as a result, there is no likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR.

Therefore, the opposition must be rejected.

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

Cecilie Leth BOCKHOFF

Cynthia DEN DEKKER

Solveiga BIEZA

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.