OPPOSITION No B 2 776 444

Peacocks Stores Limited, Waverley Mills, Langholm DG13 0EB, United Kingdom (opponent), represented by Page White & Farrer, Bedford House, John Street, London WC1N 2BF, United Kingdom (professional representative)

a g a i n s t

Xiamen Mingsiyuan Trade Co., Ltd., Zone K, Room ST-310, 3F, Pacific Plaza, No. 329, Jiahe Road, Siming District, 361000, Xiamen, Fujian, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831, Seregno (MB), Italy (professional representative).

On 11/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 776 444 is upheld for all the contested goods.

2. European Union trade mark application No 15 796 303 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 796 303 for the word mark ‘Peacoco’. The opposition is based on European Union trade mark registration No 9 797 473 for the word mark ‘PEACOCKS’ and the non-registered trade mark ‘PEACOCKS’ used in the course of trade in all Member States of the European Union. The opponent invoked Article 8(1)(b) and 8(5) EUTMR in relation to the European Union trade mark registration and Article 8(4) EUTMR in relation to the non-registered trade mark.

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 and services

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

Class 18: Articles of leather and imitations of leather including bags, wallets, purses, belts and cases; bags including backpacks, clothing bags, sports bags, beach bags, clutch bags, tote bags, shoulder bags, handbags, weekend bags, evening bags, haversacks, overnight bags, satchels, work bags; purses; wallets; brief cases; cases including cases for keys, cases for toiletries, cases for cosmetics, beauty cases; jewellery rolls; key holders; music cases; vanity cases; articles of luggage; luggage tags; belts; umbrellas; parasols.

Class 24: Textile articles and textile fabrics including for use in the manufacture of clothing; textiles and fabric for manufacturing men’s clothing; textiles and fabric for manufacturing women’s clothing; textiles and fabric for manufacturing children’s clothing; fabric and textiles for use in the manufacture of boots, shoes and bags; textile handkerchiefs.

Class 25: Articles of clothing; articles of headwear for men, women and children including hats, caps, sports caps, sun hats; articles of footwear for men, women and children including shoes, boots, sandals, sports shoes; clothing accessories for men, women and children (not included in other classes) including scarves, neckwear and ties; all excluding any peacock related articles and any goods made from peacock feathers.

Class 35: Store retail services connected with the sale of clothing, footwear, headgear, clothing, footwear and headgear accessories, jewellery, bags, holdalls, handbags, briefcases, articles of luggage, rucksacks, leather and imitations of leather, animal skins and imitation of animal skins, hides and imitation of hides, purses, wallets, belts, umbrellas and parasols, spectacles and sunglasses, clocks and watches, games and playthings, toys, tax disc holders, mobile phone accessories, apparatus for lighting, mirrors, soaps, perfumery, cosmetics, candles, diaries, stationery, printed matter, printed publications.

The contested goods are the following:

Class 18: Imitation leather; fur; bags; purses; school satchels; travelling trunks; sling bags for carrying infants; backpacks; rucksacks; pocket wallets; shopping bags; handbags; travelling bags; garment bags for travel; umbrellas; clothing for pets.

Class 25: Down jackets; children’s clothing; underclothing; layettes; dresses; footwear; shoes; sports shoes; caps; hosiery; socks; gloves; scarves; ear muffs; sleep masks.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 18

Purses and umbrellas are identically contained in both lists of goods.

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

Considering what has been said above regarding the use of the expression ‘including’ in the opponent’s list of goods, the contested bags are also considered to be identically included in both lists. Furthermore, the contested school satchels; sling bags for carrying infants; backpacks; rucksacks; shopping bags; handbags; travelling bags; garment bags for travel are included in the broad category of the opponent’s bags including backpacks, clothing bags, sports bags, beach bags, clutch bags, tote bags, shoulder bags, handbags, weekend bags, evening bags, haversacks, overnight bags, satchels, work bags. Therefore, they are identical.

The contested travelling trunks are a type of luggage and are therefore included in the opponent’s articles of luggage. Therefore, they are identical.

The contested imitation leather; fur are similar to an average degree to the opponent’s textile fabrics including for use in the manufacture of clothing in Class 24. These sets of goods have the same purpose (materials used for making, inter alia, clothing), usually coincide in their relevant public (e.g. manufacturers, designers of clothing) and furthermore are in competition.

Retail 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. The contested clothing for pets is similar to a low degree to the opponent’s retail services in Class 35, in particular the opponent’s store retail services connected with the sale of clothing. The wording of the opponent’s services in Class 35 does not specify whether the clothing is for humans or animals and therefore includes both options. Therefore, the contested clothing for pets is similar to a low degree to the opponent’s store retail services connected with the sale of clothing.

Contested goods in Class 25

The contested down jackets; children’s clothing; underclothing; layettes; dresses; hosiery; gloves; scarves; socks overlap with the opponent’s articles of clothing, all excluding any peacock related articles and any goods made from peacock feathers. Therefore, they are identical.

The contested footwear; shoes; sports shoes are identical to the opponent’s articles of footwear for men, women and children including shoes, boots, sandals, sports shoes; all excluding any peacock related articles and any goods made from peacock feathers, as they are all footwear items despite the limitations regarding their material or type. Therefore, they are identical.

The contested caps overlap with the opponent’s articles of headwear for men, women and children including hats, caps, sports caps, sun hats; all excluding any peacock related articles and any goods made from peacock feathers. Therefore, they are identical.

The contested ear muffs and sleep masks are at least similar to the opponent’s goods in Class 25, such as various items of clothing, headgear or clothing accessories. These goods have the same nature and purpose (covering parts of the body to protect them from external effects), the same distribution channels (e.g. sleep masks sold in the nightwear sections of shops and ear muffs in the clothing and/or headgear sections) and the same consumers. Therefore, the contested ear muffs and sleep masks are at least similar to an average degree to the opponent’s articles of clothing; articles of headwear for men, women and children including hats, caps, sports caps, sun hats; clothing accessories for men, women and children (not included in other classes) including scarves, neckwear and ties; all excluding any peacock related articles and any goods made from peacock feathers.

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 partly directed at the public at large (e.g. clothing, footwear, bags) and partly at professionals with specific professional knowledge or expertise (e.g. manufacturers, designers of clothing in the cases of textiles and imitation leather materials).

The degree of attentiveness of the public at large is average, while the degree of attentiveness of the professional public may vary from average to high, depending on the price or other characteristics of the goods purchased (e.g. some raw materials for manufacturing clothing can be rather expensive and decisive for the quality of the goods).

3. The signs

PEACOCKS	Peacoco
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.

The earlier mark, ‘PEACOCKS’, refers to a type of bird in English. Despite its different ending, the contested mark could also be perceived as referring to the same bird due to the coincidence in a substantial number of letters at the beginning of the sign. The question of whether or not the perceived meaning (of a peacock) affects the distinctiveness of the words in relation to the goods at issue (e.g. whether it could be perceived as an indication common pattern of some goods) can remain open at this stage considering that a substantial part of the public in the European Union (whether professionals or not) would not associate the marks with any meaning and is unlikely to be aware of the English word ‘peacock’, since it is not part of the basic English vocabulary and is not sufficiently similar to the analogous words in other EU languages (e.g. Pfau in German, pavo real in Spanish, paw in Polish, povas in Lithuanian).

As indicated above, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking parts of the public such as the French-, German-, Spanish-, Polish- or Lithuanian-speaking parts.

Visually, the signs coincide in their structures (both are one-word marks of similar lengths, namely eight versus seven letters) and the identical initial six letters ‘PEACOC**’. However, they differ in their final letters, ‘KS’ and ‘o’, respectively. Although the endings are different, the impact of this difference is significantly diminished due to its position at the ends of rather long marks. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the reader’s attention.

Furthermore, although one mark is depicted in upper case and the other in title case letters, as both marks are word marks, these differences are immaterial, as in the case of word marks it is the word itself that is protected and not its depiction.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛PEACOC**’, present identically in both signs. Furthermore, in some languages (e.g. in Spanish) the letters ‘CK’ in the earlier mark would be pronounced as one sound, ‘K’, and, therefore, for this part of the public the signs differ only in their final sounds, ‘S’ versus ‘O’. However, another part of the public (e.g. Lithuanian speakers) would pronounce the letters ‘CK’ as two different sounds; thus the sound of the letter ‘K’ in the earlier mark would be an additional difference. It is also noted that the vowel ‘O’ at the end of the contested mark makes it one syllable longer than the earlier mark.

Overall, the substantial similarities at the beginnings of the signs result in at least an average degree of aural similarity for all the relevant public.

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.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness 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 and services 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. Global assessment, other arguments and conclusion

The contested goods are identical or similar to various degrees to the opponent’s goods and services. The goods and services target the general public with an average degree of attention, as well as professionals, whose degree of attention may vary from average to high. For the non-English-speaking public, on which the analysis is focused, the signs are visually similar to a high degree and aurally similar to at least an average degree, while conceptually they are not comparable. The distinctiveness of the earlier mark is normal.

The majority of the goods at issue (i.e. various items of clothing, footwear, headgear, bags and other carriers) are usually purchased after visual examination. Generally, in shops selling these goods, customers can themselves either choose the clothes (or shoes, bags, hats) they wish to buy 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 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 high degree of visual similarity is particularly relevant when assessing the likelihood of confusion between them.

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).

The Opposition Division considers that the commonality in the initial part of the signs, ‘PEACOC**’, is sufficient to conclude that a likelihood of confusion exists. This is especially true in relation to identical goods that could be marked with the signs at issue. 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).

As regards the goods that are similar to a low degree to the opponent’s services, as well as the goods aimed at professionals who might display a higher degree of attention, considering the principle of interdependence mentioned above, the Opposition Division considers that these circumstances are safely outweighed by the significant degree of similarity between the signs.

Considering all the above, there is a likelihood of confusion on the part of the non-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 Division considers it unnecessary to proceed with the analysis of the likelihood of confusion for the English-speaking part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 797 473. It follows that the contested trade mark must be rejected for all the contested goods, that is, in its entirety.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) EUTMR.

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

Vít MAHELKA

Vita VORONECKAITĖ

Cindy BAREL

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.