OPPOSITION No B 2 977 943

Awec Europe, S.L., Carrer dels Vern, 3, 17004 Girona, Spain (opponent), represented by Garreta I Associats Agència de la Propietat Industrial, S.L., Gran Via de les Corts Catalanes, 669 bis, 1º 2ª, 08013, Barcelona, Spain (professional representative)

a g a i n s t

Queen Lilo LLC, 103 Foulk Road, Suite 202, 19803 Wilmington, United States (applicant), represented by Cooley (UK) LLP, Dashwood 69, Old Broad Street, EC2M 1QS, London, United Kingdom (professional representative).

On 31/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 977 943 is upheld for all the contested goods.

2. European Union trade mark application No 16 959 306 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 959 306 for the figurative mark . The opposition is based on the European Union trade mark registration No 15 493 166 for the figurative mark . The opponent invoked Article 8(1)(a) and (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 and services

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

Class 25: Clothing; Footwear; Headgear.

Class 35: Retailing, wholesaling and sale via global computer networks of footwear, clothing and headgear; Advertising; Business management; Business administration; Business management and organisation consultancy, in particular in relation to franchises.

The contested goods, pursuant a limitation filed by the applicant on 01/02/2019, are the following:

Class 25: Clothing, namely, denim jeans, denim trousers, blouses, shirts, t-shirts, sweatshirts, pants, slacks, trousers, shorts, skirts, tunics, tank tops, dresses, sweaters, jackets and coats, raincoats, belts, all of the aforesaid goods solely for denimwear.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

All of the contested goods are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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

c) The signs

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 sign’s common element ‘HALE’ will be perceived by the English-speaking part of the public with the meaning of a strong and healthy person. Since this meaning may enhance the conceptual similarities between the signs, the Opposition Division finds it appropriate to focus the comparison of the marks on the English-speaking part of the public where the likelihood of confusion may be higher.

As regards the contested sign, the applicant points out that, because of the inverted 'A', the consumer would not recognise the letter as such. The term 'HALE' is, however, also clearly recognizable despite the inverted ‘A’. Apart from this not very unusual stylization, the term is represented in a simple font in capital letters. Therefore, this argumentation is not well founded.

The framed letter ‘H’ in the contested sign above the term ‘HALE’ is likely to be perceived as an abbreviation of ‘HALE’ and thus, will immediately lead the consumer to read the verbal element ‘HALE’ underneath. This is because the acronym and word together are intended to clarify each other and to draw attention to the fact that they are linked (15/03/2012, joined cases C-90/11 and C-91/11, Strigl & Securvita, EU:C:2012:147, § 32, 34 and 40). Therefore, the perception of this element is closely linked to the perception of the word it precedes, and consequently as a whole the acronym must be considered distinctive. Since the framed letter ‘H’ will be perceived as abbreviation of ‘HALE’ it is somewhat subordinate to it and plays a secondary role.

The sign’s coinciding verbal element ‘HALE’ is distinctive to a normal degree, since its meaning is not directly related to the relevant goods in a clear way that could impair its distinctiveness.

The element ‘activewear’ will be perceived by the relevant public with the meaning of clothing for wear while engaging in sports, recreation, etc. Bearing in mind that the relevant goods are clothing this element is non-distinctive since it merely refers to their purpose.

On a final basis, the element ‘HALE’ in both signs is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the element ‘HALE’. However, they differ in the earlier sign’s component ‘activewear’ and the framed letter ‘H’ on top of the contested sign. The marks also differ in their particular typefaces and stylisation in the contested sign, which will be perceived as a graphical means of bringing the verbal elements to the attention of the public. Contrary to the applicant’s observations the Opposition Division considers that the stylisation and representation of the letters in the earlier mark are not sufficient to obscure or camouflage the common letters in the marks. Specifically, the stylization of the contested sign’s second letter ‘A’ would not refrain the relevant public to perceive it as such.

Therefore, and upon taking into account the above assertions on the distinctiveness, dominance and the role of the sign’s elements, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the word ‘HALE’, present identically in both signs. The term ‘activewear’ is not likely to be pronounced since it is non-distinctive and secondary (see, by analogy, judgment of 03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342). The pronunciation differs in the sound of the letter ‛H’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and the distinctiveness of their elements.

As the signs coincide in the meaning conveyed by the common element ‘HALE’ whereas they differ in the earlier mark non-distinctive element ‘ACTIVEWEAR’, and the distinctive but secondary element ‘H’ in the contested sign, the signs are conceptually identical.

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 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 must be seen as normal, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods have been found identical. The relevant public, consisting of the public at large, displays a degree of attention which is considered to be average.

Moreover, the signs are visually and aurally similar to a high degree and conceptually identical, to the extent that the contested sign’s most distinctive and dominant verbal element ‘HALE’ is entirely reproduced in the contested sign.

Furthermore, 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).

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical goods are likely to think that they come from the same undertaking or from economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant refers to several previous decisions of the office. 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, the previous cases referred to by the applicant are not relevant to the current proceedings. In specific, the provided decisions refer to cases where the sign’s differentiating elements were distinctive and/or visually prominent.

Furthermore, the applicant refers to the market reality and argues that he is concentrated on denim clothing whereas the opponent on activewear, so that there is no likelihood of confusion on that account. However, the comparison of the goods is based on the signs as registered and applied for and not as used or meant to be used. The earlier mark is protected for clothing in general, so that the explained identity of the goods exists. Furthermore, denimwear and activewear still belong to the same sector of clothing.

Considering all the above, there is a likelihood of confusion on the part of the 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 is well founded on the basis of the opponent’s European Union trade registration No 15 493 166. It follows that the contested trade mark must be rejected 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(1)(a) 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, 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

Aldo BLASI

Matthias KLOPFER

Ewelina SLIWINSKA

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.