OPPOSITION No B 2 959 487

Forever 21, Inc., 3880 North Mission Road, Los Angeles, California 90031, United States of America (opponent), represented by Reed Smith LLP, Von-der-Tann-Straße 2, 80539 München, Germany (professional representative)

a g a i n s t

Jiping Feng, No.13 Shigang, Shigang Village, Fengtian Town, Anfu County, Ji’an City, Jiangxi Province, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative).

On 05/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 959 487 is partially upheld, namely for the following contested goods:

Class 18: Fur; fur-skins; purses; rucksacks; pocket wallets; shopping bags; beach bags; handbags; travelling bags; suitcases; trunks [luggage]; vanity cases, not fitted; key cases; net bags for shopping; valises; bags for sports; bags; umbrellas; straps of leather [saddlery].

Class 25: Layettes [clothing]; girdles; belts [clothing]; wedding dresses; caps [headwear]; shawls; bow ties; footwear; slippers; sports shoes; ankle boots; sweaters; clothing; furs [clothing]; outerclothing; waistcoats; sports jerseys; dresses; underwear; underpants.

2. European Union trade mark application No 16 985 814 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 985 814 for the figurative mark , namely against all the goods in Classes 18 and 25. The opposition is based on, inter alia, European Union trade mark registrations No 1 657 832 and No 5 853 015, both for the word mark ‘FOREVER 21’. 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 European Union trade mark registrations No 1 657 832 and No 5 853 015.

a) The goods and services

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

European Union trade mark registration No 1 657 832 (EM 1)

Class 14: Jewelry, precious stones; horological and chronometric instruments.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; travelling bags; umbrellas, parasols; handbags and wallets.

Class 25: Clothing, footwear, headgear.

Class 35: Retail store services featuring clothing and accessories, jewelry, handbags and wallets.

European Union trade mark registration No 5 853 015 (EM 2)

Class 9: Eyeglasses, sunglasses, clip-on sunglasses, goggles, frames for spectacles and sunglasses, cases for spectacles and sunglasses.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; handbags and wallets.

Class 25: Clothing, including ties, shawls, stoles and belts; footwear; headgear; headbands.

Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; clothing accessories, in particular feathers, brooches, buckles, as far as contained in class 26.

Class 35: Advertising; business management; business administration; office functions; retail and internet store services featuring clothing, footwear, headgear and accessories, leather goods, jewelry, handbags and wallets; advertising and commercial information as well as ordering services, via the internet.

The contested goods are the following:

Class 18: Fur; fur-skins; purses; rucksacks; handbag frames; pocket wallets; shopping bags; beach bags; handbags; travelling bags; suitcases; trunks [luggage]; vanity cases, not fitted; key cases; net bags for shopping; valises; bags for sports; bags; umbrellas; straps of leather [saddlery].

Class 25: Layettes [clothing]; girdles; belts [clothing]; wedding dresses; caps [headwear]; shawls; bow ties; footwear; slippers; sports shoes; ankle boots; sweaters; clothing; furs [clothing]; outerclothing; waistcoats; sports jerseys; dresses; underwear; underpants.

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

The term ‘including’, used in the opponent’s list of goods and services (EM 2), 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).

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

The contested pocket wallets are included in the broad category of the opponent’s wallets (EMs 1 and 2). Therefore, they are identical.

The contested handbags; travelling bags; umbrellas are identically contained in the opponent’s lists of goods (EMs 1 and 2).

The contested suitcases; valises are included in the broad category of the opponent’s travelling bags (EMs 1 and 2). Therefore, they are identical.

The contested trunks [luggage] are included in the broad category of the opponent’s trunks (EMs 1 and 2). Therefore, they are identical.

The contested bags include, as a broader category, the opponent’s handbags (EMs 1 and 2). Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested straps of leather [saddlery] are included in the broad category of the opponent’s saddlery (EM 2). Therefore, they are identical.

The contested fur; fur-skins are highly similar to the opponent’s animal skins (EM 2). These goods have the same nature and purpose. Furthermore, they have the same producers and distribution channels. Finally, they target the same public.

The contested purses are highly similar to the opponent’s wallets (EMs 1 and 2). These goods are produced by the same undertakings and are sold through the same distribution channels. Furthermore, they target the same public.

The contested key cases are highly similar to the opponent’s wallets (EMs 1 and 2). Although the main purpose of wallets is not to hold and protect business cards or keys, it is quite common to buy a wallet designed to hold these goods. Furthermore, they may coincide in purpose, producer, end user and distribution channels.

The contested rucksacks; shopping bags; beach bags; vanity cases, not fitted; net bags for shopping; bags for sports are similar to the opponent’s handbags (EMs 1 and 2). These goods have the same purpose (to carry things) and can have the same producers, distribution channels and relevant public.

The contested handbag frames are dissimilar to the opponent’s goods and services in Classes 9, 14, 18, 25, 26 and 35. More specifically, in regards to the comparison between these goods and the opponent’s handbags, the fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts. Similarity will be found only in exceptional cases and requires that at least some of the main criteria for a finding of similarity, such as the goods having the same producers and/or public and/or being complementary, be fulfilled. However, these goods do not have the same nature or purpose and do not originate from the same producers. They are neither complementary nor in competition. Most of these goods also target different consumers and are marketed through different trade channels. The contested goods are also dissimilar to the opponent’s remaining goods and services in Classes 16, 18, 25, 26, 35 and 39. They do not have the same nature, purpose or method of use. Furthermore, they are neither complementary nor in competition. They do not have the same producers and are not sold through the same distribution channels.

Contested goods in Class 25

The contested clothing; footwear are identically contained in the opponent’s lists of goods (EMs 1 and 2).

The contested layettes [clothing]; girdles; belts [clothing]; wedding dresses; shawls; sweaters; furs [clothing]; outerclothing; waistcoats; sports jerseys; dresses; underwear; underpants; bow ties are included in the broad category of the opponent’s clothing (EM 2). Therefore, they are identical.

The contested slippers; sports shoes; ankle boots are included in the broad category of the opponent’s footwear (EMs 1 and 2). Therefore, they are identical.

The contested caps [headwear] are included in the broad category of the opponent’s headgear (EMs 1 and 2). 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 or similar to various degrees are directed at the public at large.

The degree of attention is average (in relation to furs, see 23/10/2015, T‑714/14, ATHEIST / ATHÉ, EU:T:2015:802, § 17; in relation to the remaining goods, see 13/09/2018, T‑94/17, tigha., EU:T:2018:539 § 69).

c) The signs

FOREVER 21
Earlier trade marks	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 word ‘FOREVER’ is meaningful for the English-speaking part of the public. As this word will influence the concepts conveyed by the marks, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.

The earlier marks are word marks consisting of the word ‘FOREVER’ followed by the number ‘21’. The number ‘21’ might be perceived as referring to the age of the target public and therefore it has a lower degree of distinctiveness.

The contested sign is a figurative mark composed of the word elements ‘MISS’ and ‘FOREVER’ written in black or grey upper case letters. Between these two words is a pink figurative element that could be perceived either as a letter ‘X’ or as a fanciful element. In any case, this element has an average degree of distinctiveness. Nevertheless, as it increases the degree of aural similarity between the signs, the Opposition Division will focus on the part of the public that will perceive this element not as the letter ‘X’ but instead as a fanciful element.

As indicated above, the word ‘FOREVER’, present identically in the marks, is an English word that is meaningless from the relevant public’s perspective and is thus distinctive to an average degree.

The word ‘Miss’ is an English word that refers to a girl, a young woman or an unmarried woman; it is used in English as a title preceding the name of an unmarried woman or girl. It also denotes the title given to a young woman winning a beauty contest, such as ‘Miss World’. Even though it is an English word, the relevant public in all of the Member States where the earlier marks are protected will also perceive this meaning of ‘Miss’, namely as the English form of addressing an unmarried woman or girl and as the title of a beauty queen (05/07/2011, R 1527/2010-1, MiSSR (FIG. MARK) / miss H, § 23).

It cannot be excluded that part of the public could perceive the word ‘Miss’ as alluding to the intended use of the relevant goods, namely that they are for young or beauty-conscious women (05/07/ 2011, R 1527/2010-1, MiSSR (FIG. MARK) / miss H, § 30). Taking the above into account, this element is weak in relation to all the relevant goods.

According to the case-law, the consumer normally attaches more importance to the first part of trade marks. It is only when the element placed in the initial part has a weak distinctive character in relation to the goods covered by the marks at issue that the relevant public will attach more importance to their final part, which is the most distinctive (27/02/2014, T‑225/12, LIDL express, EU:T:2014:94, § 73). In the earlier marks, the coinciding word, namely ‘FOREVER’, is at the beginning. In the contested sign, the consumer will attach more importance to the word ‘FOREVER’ than to the word ‘MISS’, as it is the more distinctive verbal element of the sign.

There is no element that could be considered dominant in the contested sign.

Visually, the signs coincide in the word ‘FOREVER’ and differ in their additional elements, namely ‘21’ in the earlier marks and ‘MISS’ in the contested sign. They further differ in the figurative element of the contested sign.

The differences stemming from the differing elements should not be overestimated. First, when a trade mark is composed of verbal and figurative elements, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The earlier marks and the contested sign are, respectively, composed of 9 and 11 characters (letters or numbers), of which seven are identical and in the same order.

Furthermore, the additional words and numbers in the marks, namely ‘MISS’ and ‘21’, have a low degree of distinctiveness.

Given the above and taking into account the fact that the most significant element of the marks (i.e. the first and/or more distinctive element in the marks) is identical, the signs are visually similar to an average degree.

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 word ‘FOREVER’, present identically in the marks, and differs in their additional elements, namely ‘MISS’ in the contested sign and ‘21’ in the earlier marks.

As explained above, the word ‘MISS’ and the number ‘21’ are weak for the relevant goods, as they indicate that the target public is feminine and young.

Furthermore, the rhythm of the marks is clearly dominated by the word ‘FOREVER’, as it is the first element of the earlier marks and the more significant element of the contested mark.

Considering the foregoing, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs as a whole do not have any meaning for the public in the relevant territory, since the coinciding element ‘FOREVER’ will be perceived as a fanciful term, the differing elements ‘MISS’ and ‘21’ will be understood by the relevant public, and therefore the signs are conceptually dissimilar.

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

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 contested goods are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods and services. The signs are visually similar to an average degree, aurally highly similar and conceptually dissimilar.

The earlier marks have an average degree of distinctiveness. The relevant public will display an average degree of attention when purchasing the goods and services.

The signs are similar overall because the more significant element in each of the mark, namely ‘FOREVER’, is identical.

The fact that the contested sign contains the more significant element of the earlier marks leads to the conclusion that the signs are sufficiently similar overall for the relevant public to be led to believe that the goods found to be identical or similar to various degrees have the same trade origin or that the undertakings in question are economically or industrially linked. This is the case, in particular, given that the relevant sector is the fashion industry, as it is not uncommon for the same mark to be configured in various ways according to the products it designates. In that sector, it is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various clothing lines from one another, in particular female and male clothing (25/05/2012, T‑233/10, Jumpman, EU:T:2012:267, § 53).

In addition, even if it were necessary to find that, in respect of the goods covered by the marks in question in Classes 18 and 25, the visual aspect was more important at the time that those goods were purchased, the fact would remain that the phonetic aspect is also still relevant to the assessment of the likelihood of confusion. Not only may the importance of certain visual dissimilarities be diminished by the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks at issue, and must rely on his imperfect recollection of them, but, in addition, the consumer may be prompted to choose goods from the categories in question in response to a television advertisement, for example, or because he has heard them being spoken about, in which cases he might retain the phonetic impression of the mark in question as well as the visual aspect (04/06/2013, T‑514/11, Betwin, EU:T:2013:291, § 74).

Finally, Article 8(1)(b) EUTMR states that, upon opposition, an EUTM is not to be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested sign denotes a new line of goods specifically targeting girls and provided under the opponent’s marks.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade marks.

For the sake of completeness, there is no need to address the opponent’s claim regarding its family of marks, because the opposition is upheld.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

- European Union trade mark registration No 11 848 331 for the word mark ‘FOREVER 21 CONTEMPORARY’, registered for goods in Class 25;

- European Union trade mark registration No 5 554 341 for the word mark ‘XXI FOREVER’, registered for goods and services in Classes 14, 25 and 35.

These other earlier rights cover the same or a narrower scope of goods and services. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cristina CRESPO MOLTO

Birgit FILTENBORG

Julie, Marie-Charlotte HAMEL

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.