OPPOSITION No B 3 013 391

Munay textil, S.L., Peguerinos 18, 28035, Madrid/Madrid, Spain (opponent), represented by Javier Serrano Irurzun, C/ Fomento, 12, bajo dcha., 28013, Madrid, Spain (professional representative)

a g a i n s t

Shenzhen MuNaFei Technology Co., Ltd, B305, Huabanli, Heaoshequ, Henggangjiedao, Longgang District, Shenzhen, China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018, Paris, France (professional representative).

On 15/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 013 391 is upheld for all the contested goods.

2. European Union trade mark application No 17 115 601 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 17 115 601 for the word mark ‘MUNAFIE’. The opposition is based on European Union trade mark registration No 14 660 054 for the figurative mark . 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.

1. The goods

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

Class 25: Hats; coats; car coats; cotton coats; evening coats; winter coats; sheepskin coats; coats of denim; mackintoshes; coats for women; fur coats and jackets; albs; bathrobes; burnouses; sleep masks; neckwear; bandanas [neckerchiefs]; overalls; lounging robes; smoking jackets; blazers; blouses; halter tops; chemise tops; blousons; boas [necklets]; boas; boleros; mufflers [clothing]; cashmere scarves; neck scarves; silk scarves; bustiers; socks; pants; shirts; button down shirts; collared shirts; short-sleeve shirts; dress shirts; shirts for suits; tee-shirts; bodices [lingerie]; nighties; capes; cloaks; hoods [clothing]; cowls [clothing]; chasubles; gilets; vests; shawls; shawls [from tricot only]; shawls and stoles; shawls and headscarves; jackets [clothing]; sleeved jackets; suede jackets; quilted jackets [clothing]; men's and women's jackets, coats, trousers, vests; morning coats; gym suits; oilskins [clothing]; waist belts; twin sets; slips [undergarments]; combinations [clothing]; neckties; corselets; corsets; shoulder wraps; aprons [clothing]; masquerade costumes; petticoats; stoles; fur stoles; dinner jackets; skirts; scarfs; jacket liners; short overcoat for kimono (haori); overcoats; gabardines; sports caps and hats; gabardines [clothing]; gloves [clothing]; party hats [clothing]; jerseys [clothing]; guernseys; leotards; maillots; lingerie; mantles; stockings; mittens; one-piece playsuits; playsuits [clothing]; ear muffs [clothing]; trousers shorts; dress pants; trousers; kerchiefs [clothing]; balaclavas; shirt fronts; pajamas (am.); furs [clothing]; chaps (clothing); polo shirts; ponchos; evening wear; knitwear [clothing]; nightwear; turtlenecks; pullovers; cuffs; cardigans; cashmere clothing; ready-made clothing; leather clothing; formalwear; menswear; woolen clothing; silk clothing; knitted underwear; sweat shirts; sweaters; polo sweaters; vest tops; shoulder wraps [clothing]; costumes; suits; veils [clothing]; dresses; sheepskin jackets.

The contested goods are the following:

Class 25: Underwear; sweaters; clothing; suits; ready-made clothing; trousers; outerclothing; knitwear [clothing]; coats; skirts; skorts; underpants; babies' pants [clothing]; layettes [clothing]; masquerade costumes; theatrical costumes; folk costumes [clothing]; costumes; footwear; hosiery; collars [clothing] / shoulder wraps; scarfs; belts [clothing]; girdles; wedding dresses; pants; vests; waistcoats / vests; singlets; pyjamas; jackets [clothing]; bath robes; tee-shirts; windbreakers; down jackets.

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 underwear; sweaters; clothing; suits; ready-made clothing; trousers; outerclothing; knitwear [clothing]; coats; skirts; skorts; underpants; babies' pants [clothing]; layettes [clothing]; masquerade costumes; theatrical costumes; folk costumes [clothing]; costumes; footwear; hosiery; collars [clothing] / shoulder wraps; scarfs; belts [clothing]; girdles; wedding dresses; pants; vests; waistcoats / vests; singlets; pyjamas; jackets [clothing]; bath robes; tee-shirts; windbreakers; down jackets are identical to the opponent’s goods, either because they are identically contained in both lists of goods, including synonyms (for example vests), or because the contested goods include or overlap with the opponent’s goods (for example clothing includes jerseys [clothing]), or at least similar to the opponent’s goods (for example the contested footwear is similar to the opponent’s jackets [clothing] or the contested hosiery is at least similar to the opponent’s lingerie) as they have the same purpose, target the same relevant public, share the same distribution channels and are produced by the same companies.

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

3. The signs

	MUNAFIE
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 earlier mark is a figurative mark composed by the verbal element ‘MUNAY’ in a grey typeface which has no meaning in the relevant territory and therefore it is considered distinctive to an average degree. Above the verbal element, a fanciful figurative element depicting a grey circle with lines inside. Although a small part of the public may perceive the combination of the letters ‘Y’ and ‘W’ inside the circle, the majority of the relevant public will perceive it as a purely figurative element. In either case, there is no link with the goods at issue hence the figurative element is also distinctive. The earlier mark has no elements that could be considered more dominant (visually eye-catching) than other elements. However, when signs consist of both verbal and figurative components, 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).

The word ‘MUNAFIE’ has no meaning in the relevant territory and is therefore considered distinctive.

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.

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.

Visually, the signs coincide in the sequence of letters ‘MUNA***’, which are present at the beginning of the signs. However, they differ in the ending of the verbal elements, ‘Y’ vs ‘FIE’, in the earlier and the contested mark respectively, and the grey typeface and figurative element, both in the earlier mark.

Therefore, and taking into account what has been said about the distinctiveness of the elements and components of the signs and their dominant positions within the signs (where applicable), the signs are visually similar to an average degree.

Aurally, for the vast majority of the public, the pronunciation of the signs coincides in the sound of the letters ‛MUNA’, present identically in both signs. The pronunciation differs in the sound of the letter ‛Y’, at the end of the contested mark, versus the sound of the letters ‘FIE’, at the end of the contested sign.

For another part of the public, such as the French-speaking part, the combination of the letters ‘AY’ at the end of the earlier mark will be pronounced as ‘É’. Therefore, for this part of the public the signs coincide in the sound of the letters ‘MUN’

In any case, the signs coincide in the pronunciation of at least three letters placed at the beginning of the verbal elements and it is considered that the signs are aurally similar to an average degree.

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 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.

5. 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).

The goods have been found to be identical or similar and are directed at the public at large who will display an average degree of attention when purchasing them.

The signs are visually and aurally similar to an average degree on account of the same beginning of the distinctive verbal element ‘MUNA***’. This coincidence is particularly relevant as consumers generally tend to focus on the beginning of a sign. The differences lie in the ending of the verbal elements and the figurative element and the grey typeface of the earlier mark, which however have a lower impact on the overall impression of the signs. Furthermore, there is no perceived conceptual difference to offset such similarities.

Overall, 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 into account the foregoing, it is considered that these differences are not sufficient to outweigh the similarities between the signs and in practice they do not contribute to consumer’s ability to safely distinguish between them.

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 European Union trade mark registration No 14 660 054. It follows that the contested trade mark must be rejected for all the contested 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.

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

Catherine MEDINA

Jorge ZARAGOZA GOMEZ

Begoña URIARTE VALIENTE

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.