OPPOSITION No B 2 686 031

Le Tanneur & Cie, 128-130 quai de Jemmapes, 75010 Paris, France (opponent), represented by Astine, 34 rue Godot de Mauroy, 75009 Paris, France (professional representative)

a g a i n s t

Hoco Technology Development (Shenzhen) Co., Ltd, Rm 1012, Building 105, SEG Science and Technology Park, Futian Dist., Shenzhen 518000, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 686 031 is upheld for all the contested goods, namely:

Class 9: Cases for mobile phones; protective covers and cases for cell phones, laptops and portable media players.

Class 18: Travelling trunks; backpacks; bags for climbers; bags for campers; handbags; travelling bags; travelling sets [leatherware]; valises; suitcase handles; trunks [luggage]; haversacks; bags for sports; bags; mountaineering sticks.

2. European Union trade mark application No 14 686 323 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 686 323, namely against some goods in Class 9 and all the goods in Class 18. The opposition is based on French trade mark registration No 1 361 435. 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 18: Leather and imitations of leather; goods made of these materials not included in other classes; trunks and valises; umbrellas, parasols and walking sticks; harness and saddlery.

The contested goods are the following:

Class 9: Cases for mobile phones; protective covers and cases for cell phones, laptops and portable media players.

Class 18: Travelling trunks; backpacks; bags for climbers; bags for campers; handbags; travelling bags; travelling sets [leatherware]; valises; suitcase handles; trunks [luggage]; haversacks; bags for sports; bags; mountaineering sticks.

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

In the present case, the opponent’s goods made of these materials [leather and imitations of leather] not included in other classes of Class 18 do not include the contested cases and covers, namely cases for mobile phones; protective covers and cases for cell phones, laptops and portable media players. However, this category includes many goods such as boxes, other cases, attaché cases, billfolds or pochettes. These goods may have the same purpose of carrying, covering and/or protecting objects and the same commercial origin; in some cases, they can be found in the same outlets. Therefore, the contested cases for mobile phones; protective covers and cases for cell phones, laptops and portable media players are similar to the opponent’s goods made of these materials [leather and imitations of leather] not included in other classes.

Contested goods in Class 18

Valises are identically contained in both lists of goods.

The contested travelling trunks are included in the broad category of the opponent’s trunks. Therefore, they are identical.

The contested backpacks; bags for climbers; bags for campers; handbags; travelling bags; travelling sets [leatherware]; suitcase handles; trunks [luggage]; haversacks; bags for sports; bags are included in the broad category of, or overlap with, the opponent’s goods made of these materials [leather and imitations of leather] not included in other classes. Therefore, they are identical.

The contested mountaineering sticks are included in the broad category of the opponent’s walking sticks. Therefore, they are identical.

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 or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

SOCO
Earlier trade mark	Contested sign

The relevant territory is France.

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 elements ‘SOCO’ of the earlier mark and ‘hoco’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The earlier sign is a word mark; therefore, it is the word itself that is protected, not its written form. It is irrelevant whether it is depicted in lower or upper case letters. The contested mark is a figurative mark, but the typeface used is standard.

The dot at the end of the contested sign is considered less distinctive than the verbal element ‘hoco’ because it is an ordinary punctuation mark that has a low capacity to identify the commercial origin of the goods and thus to distinguish them from those of other undertakings. Moreover, the dot also has less impact than the verbal element because it is smaller than the letters ‘hoco’. This punctuation mark does not affect the length of the sign.

The earlier mark consists of a single verbal element of four letters. It has no element that is more dominant than any other element.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the signs coincide in their last three letters, ‘-OCO’, and in their length. However, they differ visually in their first letters, namely ‘S’ in the earlier mark and ‘H’ in the contested sign, as well as in the dot at the end of the contested sign, the impact of which on the relevant public, as seen above, will be negligible. Aurally, the signs differ only in the first letter, ‘S’, of the earlier mark because the letter ‘H’ of the contested sign is silent in French and, like the dot, will not be pronounced. The signs, composed of two syllables, /SOCO/ versus /HOCO/, which contain the same vowels, have the same rhythm and intonation. Therefore, the signs are visually similar to an average degree and aurally similar to a higher than 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark is normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods, which are partly identical and partly similar, target the public at large, whose degree of attention is considered average.

The verbal elements of the signs are composed of single four-letter words with, in the case of the contested sign, an additional dot, which has a much lower impact. The length of these words and the coincidence in the sequence of letters ‘*OCO’ result in significant visual and aural similarities. In particular, aurally, not only do the signs coincide in the sounds of the letters they have in common, but they are both composed of two syllables containing the same vowels, which contributes to the marks having the same rhythm and intonation. Moreover, aurally, the letter ‘H’ and the dot of the contested sign will not be pronounced and, from that point of view, cannot serve to differentiate the signs.

Therefore, the differences arising from the differing first letters and the dot are not sufficient to counteract the aural and visual similarities between the signs, especially since consumers rarely have the chance to make a direct comparison between different marks and must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 1 361 435. It follows that the contested trade mark must be rejected for all the contested goods.

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

Sandra IBAÑEZ

Benoit VLEMINCQ

Frédérique SULPICE

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.