OPPOSITION No B 2 948 134

Dopat, S.A., València Parc Tecnologic, C/ Charles Robert Darwin, 34-36, 46980 Paterna (Valencia), Spain (opponent), represented by Elisa Peris Despacho Profesional, S.L., C/ Profesor Beltran Baguena, Nº 4, Of. 116 (Edificio Trade Center), 46009 Valencia, Spain (professional representative)

a g a i n s t

Jia Xing Shun Yi Trading Co Ltd, Room 805, Zhi Di West Building, Jiaxing, Zhejiang Province, People’s Republic of China (applicant), represented by Eugene Johann Pienaar, 5 Cranwell Grove, Lightwater, Surrey, GU18 5YD, United Kingdom (professional representative).

On 18/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 948 134 is upheld for all the contested goods.

2. European Union trade mark application No 16 744 807 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 744 807 for the figurative mark . The opposition is based on, inter alia, Spanish trade mark registration No 1 097 334 for the word mark ‘ULANKA’. 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 Spanish trade mark registration No 1 097 334.

1. The goods

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

Class 25: Shoes of all kinds with exception of orthopedic shoes, and clothes manufactured for lady, gentleman and child, both interiors and exteriors in fabric and knitwear.

The contested goods are the following:

Class 25: Fur stoles; scarfs; shawls; knit shirts; sweaters; collars; tops.

An interpretation of the wording of the list of the opponent’s goods is required to determine the scope of protection of these goods.

The original Spanish expression ‘género de punto’, used in relation to a kind of clothing material or fabric, was translated into English as ‘point’, which appears to be an obvious mistranslation. For the purposes of the comparison, this expression is considered to be ‘knitwear’ in English, as it appears in the opponent’s submissions provided alongside the translation of the renewal certificate for substantiating the relevant earlier right.

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 contested scarfs; shawls; knit shirts; sweaters; collars; tops are clothing articles that are either knitted (in the case of knit shirts) or can be knitted and also be made of other fabrics or materials, such as fur. In this regard, they are included in, or overlap with, the opponent’s clothes manufactured for lady, gentleman and child, both interiors and exteriors in fabric and knitwear. Therefore, these goods are identical.

The contested fur stoles are highly similar to the opponent’s clothes manufactured for lady, gentleman and child, both interiors and exteriors in fabric and knitwear. Although the material of the goods under comparison is different (fur on the one hand and fabric and knitwear on the other) the nature and purpose of the goods is very similar, as they are all manufactured goods used to cover, protect and clothe the human body. They may also have the same method of use and are found in the same shops or in closely connected sections of department stores, targeting the same end users. In addition, these goods may be in competition (as regards, for instance, fur stoles versus knitted scarves) and may also have the same producers.

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 highly similar are directed at the public at large.

The degree of attention is considered average.

3. The signs

ULANKA
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 a word mark, consisting of the element ‘ULANKA’. It is noted that in the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The contested sign is a figurative mark consisting of the verbal element ‘Ushanka’ depicted in fairly standard title case black letters.

Neither the element ‘ULANKA’ of the earlier mark nor the element ‘Ushanka’ of the contested sign has a meaning for the relevant public. Therefore, both are considered distinctive.

Visually and aurally, the signs coincide in the sequence and sound of the letters ‘U**ANKA’. They differ in the second letter and sound, ‘L’, of the earlier mark and in the second and third letters and sound, ‘SH’, in the contested sign. The signs have the same rhythm, intonation and number of syllables (three). The typeface in the contested sign is fairly standard and does not contribute to the differences between the signs. Reference is made to the conclusion above regarding the distinctiveness of the elements of both signs.

As the signs coincide in the abovementioned sequence of letters, ‘U**ANKA’ (and the sound of it), they are visually and aurally similar to at least an average degree.

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 the 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 refers in its submissions to the ‘prestige’ of the earlier trade mark. However, it did not file any evidence to prove that the earlier mark enjoys enhanced distinctiveness 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.

5. 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/services covered are from the same or economically linked undertakings.

In the present case, the goods are identical or highly similar and the signs are visually and aurally similar to at least an average degree; while no conceptual comparison can be made, as neither sign has a meaning in the relevant territory. The earlier mark has a normal degree of distinctiveness.

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). Therefore, due to the similarities between the signs, resulting from their visual and aural commonalities, when consumers encounter the signs at different times, they may assume that the signs have the same origin or at least economically linked origins.

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 Spanish trade mark registration No 1 097 334. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier Spanish trade mark registration No 1 097 334 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 right invoked by the opponent, namely European Union trade mark application No 12 663 472 (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

María del Carmen COBOS PALOMO

Alicia BLAYA ALGARRA

Irina SOTIROVA

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.