OPPOSITION No B 3 010 579

Huechem Textiles Private Limited, K.K. Chambers, 3rd Floor Sir Purshottamdas Thakurdas Marg, Fort, Mumbai 400 001, India (opponent), represented by Dahl Lawfirm P/S, Kaj Munks Vej 4, 7400 Herning, Denmark (professional representative)

a g a i n s t

Chromoxxome Lda, Av. 5 de Outubro, 112, 4820-115 Fafe, Portugal (applicant).

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

DECISION:

1. Opposition No B 3 010 579 is upheld for all the contested goods.

2. European Union trade mark application No 17 195 009 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 17 195 009 for the figurative trade mark , filed for goods in Class 25. The opposition is based on European Union trade mark registration No 4 141 362 ‘CHROMOZOME’. 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: Clothing, footwear and accessories therefor, for children and adults.

The contested goods are the following:

Class 25: Clothing; Headgear; Footwear.

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 clothing and footwear include, as broader categories, the opponent’s clothing, footwear and accessories therefor, for children and adults. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested headgear is similar to the opponent’s clothing for children and adults. They have similar purposes, since headgear is seen not only as a means of protecting the head against weather influences, but also as a fashion article that may match an outfit and for this reason is sometimes chosen as a complementary item to clothing. Therefore, not only the end users but also the purposes of the respective goods are the same in this regard. Moreover, their distribution channels are sometimes identical, since they are often sold in the same or at least closely connected sales outlets or retail departments.

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 considered to be average.

3. The signs

CHROMOZOME
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 sign consists of the word ‘CHROMOZOME’.

The contested sign is a figurative trade mark consisting of the word ‘CHROMOXXOME’ in bold black slightly stylised lower case letters and a device consisting of two curved black lines twisted around each other, which may resemble two letters ‘X’ or a double helix.

The earlier mark, ‘CHROMOZOME’, and the contested mark, ‘CHROMOXXOME’, despite the misspellings, will be perceived as the English word ‘chromosome’, which means ‘part of a cell in an animal or plant. It contains genes which determine what characteristics the animal or plant will have’ (information extracted from Collins Dictionary on 21/09/2018 at https://www.collinsdictionary.com/dictionary/english/chromosome).

A considerable part of the relevant public, when encountering the conflicting signs, will perceive the concept ‘chromosome’, since, as it is a scientific word of Greek origin, it is very close to the equivalent word in most of the official languages in the relevant territory such as ‘chromosome’ in French, ‘Chromosom’ in German, ‘chromozóm’ in Czech and Slovak, ‘chromosoom’ in Dutch and ‘chromosoma’ in Lithuanian.

The word elements in both signs are distinctive and so is the figurative element of the contested sign, since there is no direct link with the relevant goods.

The contested sign has no element that could be considered clearly more dominant than other elements, due to the length of the verbal element and the upper central position of the figurative element.

Visually, the marks have in common a significant number of letters (nine) in the same order at the beginning and at the end of each sign, namely ‘CHROMO*OME’. However, they differ in the letters in the middle, ‘Z’ in the earlier sign and ‘XX’ in the contested sign.

It is important to note that 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. Moreover, the signs are not short (ten- and eleven-letter marks); therefore, the differences in the middle of the signs have a limited impact, as they will not be readily perceived by the public.

They also differ in the distinctive figurative element of the contested mark, which is co-dominant and has no counterpart in the earlier sign. In any event, 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).

Therefore, the signs are visually similar to a higher than average degree.

Aurally, the signs coincide, irrespective of the different pronunciation rules in different parts of the relevant territory, in the sounds of the letters ‘CHROMO*OME’, and they differ in the sounds of the other consonants, ‘Z’ versus ‘XX’. They have the same number of syllables, structure and rhythm.

The difference in the letters in the middle has a varying impact on the signs’ pronunciation, since, depending on the language of the public concerned, the difference may be greater or smaller. For the English-speaking part of the public, such as consumers in Ireland, Malta and the United Kingdom, for example, these letters have similar pronunciations and the degree of similarity will be higher. However, regardless of the way in which the differing letters are pronounced, this difference in itself is not sufficient to offset the similarity in the pronunciation of the beginnings and ends of the signs.

Therefore, the signs are aurally similar to a higher than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, namely that both signs will be perceived as misspellings of the word ‘chromosome’. Moreover, the distinctive figurative element of the contested EUTM, the double helix, reinforces that concept, since it is a common depiction of DNA.

Therefore, the signs are conceptually similar to a very high 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 contested goods are identical or similar to the opponent’s goods and they target the public at large. The signs under comparison are visually and aurally similar to a higher than average degree and conceptually similar to a very high degree. The earlier sign 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).

The Opposition Division considers that the differences between the signs — which are only the differing middle letters ‘Z’/‘XX’ and the figurative element of the contested sign — are clearly not sufficient to outweigh the strong visual, aural and conceptual similarities between them. Therefore, it is concluded that the relevant public could believe that the goods found to be identical and similar come from the same undertaking or economically linked undertakings.

Moreover, in this case the distinctive figurative element of the contested sign supports the similarities between the marks, since it reinforces the idea of ‘chromosome’, and 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). This finding takes into account the principle that the visual impressions of marks must be given due consideration for items of clothing because such items are usually examined visually or may be tried on before being bought.

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 4 141 362 ‘CHROMOZOME’. 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

Denitza STOYANOVA-VALCHANOVA

Sofía Modesta SACRISTÁN MARTÍNEZ

Martin EBERL

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.