OPPOSITION No B 2 977 596

Constetix, C/ Balanço o Boter 22, 08302, Mataro, Spain (opponent), represented by Aguilar i Revenga, Consell de Cent, 415 5° 1ª, 08009, Barcelona, Spain (professional representative)

a g a i n s t

Shenzhen Wancheng E-commerce LLC., 6411A Saige Plaza No. 1002, Huaqiang North Rd., Huaqiangbei St., Futian Dist., Shenzhen, People’s Republic of China (applicant), represented by Teodoru I.P. Srl, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176, Bucharest, Romania (professional representative).

On 06/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 977 596 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 919 607 ‘JURSTON’. The opposition is based on Spanish trade mark registrations No 3 505 650 and No 3 673 157 for the word marks ‘CONSTON’. 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.

a) The goods

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

Spanish trade mark registration No 3 505 650

Class 25: Clothing, footwear and headgear

Spanish trade mark registration No 3 673 157

Class 28: Games, toys and playthings; gymnastic and sporting articles; decorations for Christmas trees; video game apparatus; rubber balls; balls for games; sport balls; exercise balls.

The contested goods are the following:

Class 25: Coats; skirts; football boots; bath slippers; caps [headwear]; headgear for wear; gloves; ski gloves; boas [necklets]; neck scarfs [mufflers].

Class 28: Toys; building blocks [toys]; spinning tops [toys]; remote-controlled toy vehicles; toy robots; candle holders for Christmas trees; Christmas tree stands; artificial fishing bait; rods for fishing; twirling batons.

Contested goods in Class 25

The contested coats; skirts; gloves; ski gloves; boas [necklets]; neck scarfs [mufflers] are included in the broad category of the opponent’s clothing (Spanish trade mark registration No 3 505 650). Therefore, they are identical.

The contested football boots; bath slippers are included in the broad category of the opponent’s footwear (Spanish trade mark registration No 3 505 650). Therefore, they are identical.

The contested headgear for wear is synonymous with the opponent’s headgear (Spanish trade mark registration No 3 505 650). Therefore, they are identical.

The contested caps [headwear] are included in the broad category of the opponent’s headgear (Spanish trade mark registration No 3 505 650). Therefore, they are identical.

Contested goods in Class 28

Toys are identically contained in the list of contested goods and in the list of goods of the opponent’s Spanish trade mark registration No 3 673 157.

The contested building blocks [toys]; spinning tops [toys]; remote-controlled toy vehicles; toy robots are included in the broader category of the opponent’s toys (Spanish trade mark registration No 3 673 157). Therefore, they are identical.

The contested artificial fishing bait; rods for fishing; twirling batons are included in the broad category of the opponent’s sporting articles (Spanish trade mark registration No 3 673 157). Therefore, they are identical.

The contested candle holders for Christmas trees; Christmas tree stands are holders for candles and stands for Christmas trees. These goods are similar to the opponent’s decorations for Christmas trees, as they usually have the same relevant public, distribution channels and method of use, being articles that can be commonly placed on or under a Christmas tree.

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

c) The signs

CONSTON	JURSTON
Earlier trade marks	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 verbal elements of the signs in conflict have no meaning for the relevant public and are, therefore, distinctive.

Visually and aurally, the signs coincide in their last four letters, ‘STON’. However, they differ in their first three letters, ‘CON’ in the earlier marks and ‘JUR’ in the contested sign. The difference in the beginning of the signs is particularly relevant for the assessment of the degree of similarity between the marks, as 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 attention of the reader.

In its observations, the opponent states that the signs are visually almost identical because they have the same number of letters. In this regard, however, the General Court has held that the presence of the same number of letters in two marks — as in the present case — is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82, confirmed by 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Accordingly, the signs are found to be similar only to a low 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 likelihood of confusion will proceed.

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks 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/services covered are from the same or economically linked undertakings.

In the present case, the goods are identical or similar and they target the public at large, whose degree of attention is average.

The signs in conflict are visually and aurally similar only to a low degree, as the similarities between them result exclusively from their last four letters, ‘STON’. As explained above, the fact that the signs differs in their first three letters, ‘CON’ in the earlier marks and ‘JUR’ in the contested sign, plays a relevant role in the assessment of likelihood of confusion (15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30).

Finally, the relevant goods are, inter alia, articles of clothing, footwear and headgear. Generally in clothes shops (and also in shops that sell footwear and headgear) customers can themselves either choose the clothes 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). This conclusion also applies to the goods in Class 28, which are identical or similar, as they are commonly purchased in supermarkets or other establishments where consumers are guided in particular by the visual impact of the mark they are looking for.

Therefore, the considerable visual differences between the signs, caused by their differing first three letters, are particularly relevant when assessing the likelihood of confusion between them. In particular, the abovementioned differences are enough to outweigh the similarities between the signs originating from the sequence of letters that they have in common. It follows from the above that the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered reasonably well informed and reasonably observant and circumspect, might believe that the goods, which are identical or similar, come from the same undertaking or economically linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Paloma PERTUSA MARTÍNEZ

Aldo BLASI

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.