OPPOSITION No B 3 037 531

Xiuming Shi, Room 9007, Yabao Road Tianya Clothing Market, No. 2 Yabao Road, Chaoyang District, Beijing, People’s Republic of China (opponent), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, Leeds LS2 8PA, United Kingdom (professional representative)

a g a i n s t

Inci Deri Mamülleri Sanayi Ve Ticaret Anonim Sirketi, Flatofis, Otakçilar Caddesi, No:78, Kat:1/10-11, Eyüp – Istanbul, Turkey (applicant), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq. 28020 Madrid, Spain (professional representative).

On 06/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 037 531 is partially upheld, namely for the following contested goods and services:

Class 18: Goods made of leather, imitation leather or synthetic materials, namely, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel; make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty; book bags; carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes.

Class 25: Clothing, including underwear and outer clothing, other than special purpose protective clothing; socks, mufflers [clothing], shawls, bandanas, scarves, belts [clothing]; footwear, shoes, slippers, sandals; headgear, hats, caps with visors, berets, caps [headwear], skull caps.

Class 35: Advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services; providing office functions; business management; business administration; import and export agencies; business investigations, evaluations, expert business appraisals; auctioneering; the bringing together, for the benefit of others, of goods made of leather, imitation leather or synthetic materials, namely, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty, book bags, carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of clothing, including underwear and outer clothing, other than special purpose protective clothing, socks, mufflers [clothing], shawls, bandanas, scarves, belts [clothing], footwear, shoes, slippers, sandals, headgear, hats, caps with visors, berets, caps [headwear], skull caps, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

2. European Union trade mark application No 17 231 523 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 231 523 for the figurative mark . The opposition is based on European Union trade mark registration No 13 948 476 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.

1. The goods and services

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

Class 18: Pocket wallets; handbags; briefcases; trunks [luggage]; backpacks; travelling sets [leatherware]; bags for sports; school satchels; shopping bags; boxes of leather or leather board.

Class 25: Clothing; layettes [clothing]; bathing suits; football shoes; shoes; hats; hosiery; gloves [clothing]; neckties; girdles; sports shoes.

Class 35: Import-export agencies; sales promotion for others; auctioneering; procurement services for others [purchasing goods and services for other businesses]; advertising; publicity; business management assistance; commercial administration of the licensing of the goods and services of others; outsourcing services [business assistance]; distribution of samples.

The contested goods and services are the following:

Class 18: Leather and imitation leather, animal skins; animal hides, artificial leathers, stout leathers; goods made of leather, imitation leather or synthetic materials, namely, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel; make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty; book bags; carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes, umbrellas, sun umbrellas, namely, parasols and canes; whips, harnesses and saddlery, stirrups, horse bridles.

Class 25: Clothing, including underwear and outer clothing, other than special purpose protective clothing; socks, mufflers [clothing], shawls, bandanas, scarves, belts [clothing]; footwear, shoes, slippers, sandals; headgear, hats, caps with visors, berets, caps [headwear], skull caps.

Class 35: Advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services; providing office functions; business management; business administration; import and export agencies; business investigations, evaluations, expert business appraisals; auctioneering; the bringing together, for the benefit of others, of leather and imitation leather, animal skins, animal hides, artificial leathers, stout leathers, goods made of leather, imitation leather or synthetic materials, namely, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty, book bags, carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes, umbrellas, sun umbrellas, namely, parasols and canes, whips, harnesses and saddlery, stirrups, horse bridles, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of clothing, including underwear and outer clothing, other than special purpose protective clothing, socks, mufflers [clothing], shawls, bandanas, scarves, belts [clothing], footwear, shoes, slippers, sandals, headgear, hats, caps with visors, berets, caps [headwear], skull caps, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.

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 applicant’s list of goods and services, 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods and services 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 and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 goods made of leather, imitation leather or synthetic materials, namely, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel; book bags; carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes are identical to the opponent’s pocket wallets; handbags; briefcases; trunks [luggage]; backpacks; travelling sets [leatherware]; bags for sports; school satchels; shopping bags; boxes of leather or leather board, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty are highly similar to the opponent’s travelling sets [leatherware], as these goods typically serve the same purpose and share the same distribution channels, relevant public and producer.

The contested goods leather and imitation leather, animal skins; animal hides, artificial leathers, stout leathers refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for bags) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s goods in Class 18 (essentially bags, wallets and boxes) and are therefore, dissimilar. The same reasoning applies with regard to the opponent’s goods of Class 25. The fact that the above mentioned, contested goods might be used for manufacturing the opponent’s goods in Class 25 is not sufficient to render them similar.

Furthermore, the Opposition Division does not see any point of contact between the above mentioned contested goods and the opponent’s services in Class 35, which could potentially render them similar. This includes the opponent’s services relating to advertisement and publicity. These services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. and are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity.

Thus, the above mentioned contested goods are dissimilar to all of the opponent’s goods and services.

The contested umbrellas, sun umbrellas, namely, parasols and canes; whips, harnesses and saddlery, stirrups, horse bridles are specific goods that do not have anything in common with the opponent’s goods or services. They serve different purposes, have different methods of use, relevant publics and distribution channels, and are neither complementary nor in competition with each other. Therefore, they are dissimilar.

Contested goods in Class 25

The contested clothing, including underwear and outer clothing, other than special purpose protective clothing; socks, mufflers [clothing], shawls, bandanas, scarves, belts [clothing]; footwear, shoes, slippers, sandals; headgear, hats, caps with visors, berets, caps [headwear], skull caps are identical to the opponent’s clothing; shoes; hats, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

Contested services in Class 35

The contested import and export agencies; auctioneering; advertising agencies services, marketing and publicity bureaus services including commercial or advertisement exhibition and trade fair organization services are identical to the opponent’s import-export agencies; auctioneering; advertising; publicity services, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include or overlap with the contested services.

The contested services business management; business investigations, evaluations, expert business appraisals either include, are included in or overlap with the opponent’s business management assistance services, and are therefore, identical.

The opponent’s commercial administration of the licensing of the goods and services of others are specific services of business administration (given that business administration and commercial administration are synonyms), and are therefore identical to the contested business administration services.

The contested services of providing office functions are at least lowly similar to the opponents business management assistance services. These services may address the same relevant public and may originate from the same service provider.

The remaining, contested services are essentially retail services (the bringing together, for the benefit of others,…) of specific goods.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested the bringing together, for the benefit of others, of goods made of leather, imitation leather or synthetic materials, namely, travel bags, valises, wallets, handbags, backpacks for carrying babies, leather and stout leather boxes for storing greeting cards, leather hat boxes for travel, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of book bags, carrying cases for documents, briefcases, backpacks, school bags, leather shopping bags, leather cases for banknotes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of clothing, including underwear and outer clothing, other than special purpose protective clothing, socks, mufflers [clothing], shawls, bandanas, scarves, belts [clothing], footwear, shoes, slippers, sandals, headgear, hats, caps with visors, berets, caps [headwear], skull caps, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are similar to the opponent’s pocket wallets; handbags; briefcases; trunks [luggage]; backpacks; travelling sets [leatherware]; bags for sports; school satchels; shopping bags; boxes of leather or leather board; clothing; shoes; hats.

Furthermore, there is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Moreover, they are of interest to the same consumers.

Therefore, the contested bringing together, for the benefit of others, of make-up cases sold empty, toiletry bags sold empty, vanity cases sold empty, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are similar to a low degree to the opponent’s travelling sets [leatherware].

The remaining contested retail services, and the opponent’s goods are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled, since the goods sold at retail are dissimilar to the goods of the opponent.

The opponent’s import-export agencies services are related to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. They relate to business administration, and do not relate to the actual retail of the goods; they would be preparatory or ancillary to the commercialisation of such goods.

Auctioneering services are public sales at which goods are sold to the highest bidder, and these services are usually offered by specialised auctioneering companies.

The opponent’s sales promotion for others; advertising; publicity; business management assistance; commercial administration of the licensing of the goods and services of others; outsourcing services [business assistance]; distribution of samples are aimed at supporting or helping other businesses to do or improve business and are in principle directed at the professional public.

Furthermore, the opponent’s procurement services for others [purchasing goods and services for other businesses] consist of specific services such as contracting, purchasing, receiving goods, invoice verification, creditor accounting, just to mention a few, and essentially target business customers that want to improve efficiency. These services are usually rendered by companies specialised in this specific field.

Taking into account the above mentioned considerations, the contested services the bringing together, for the benefit of others, of leather and imitation leather, animal skins, animal hides, artificial leathers, stout leathers, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of umbrellas, sun umbrellas, namely, parasols and canes, whips, harnesses and saddlery, stirrups, horse bridles, enabling customers to conveniently view and purchase those goods; all of the aforementioned retail services are provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are dissimilar to all of the opponent’s goods and services. They typically serve a different purpose, have different methods of use, are neither in competition nor complementary, or they target different publics, do not have the same providers and are commercialised through different distribution channels.

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 and services found to be identical or similar to varying degrees are directed partly at the public at large as well as partly at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. 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).

Both signs are figurative marks consisting of the verbal element ‘inci’, which is written in lower case letters in a fairly standard typeface. The verbal element of the earlier mark is depicted in black letters, whereas for the contested sign it is depicted in white letters placed within a black square.

Although, both marks are figurative marks, the stylisation of the letters as well as the black square of the contested sign, being a simple geometric shape serving as background, are of decorative nature only, and as such, will be hardly paid attention by the relevant public, if at all. Moreover, 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 verbal element ‘inci’ has no meaning in the relevant territory and is therefore distinctive. Neither of the signs have elements, which could be considered clearly more dominant than other elements.

Visually, the signs coincide in their verbal element ‘inci’ and their typeface. The signs differ on account of the black square of the contested sign and the different colours of the word elements (black on white versus white on black). Taking into account the above mentioned considerations, in particular the fact that the signs only differ in elements and stylisations, which have been found to be of little impact on the consumers perception, the signs are visually similar to a high degree.

Aurally, the signs are identical.

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.

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 and services 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

In the present case, parts of the goods and services are identical or similar to varying degrees and target the public at large as well as professionals, whose degree of attention will vary from average to high. The distinctiveness of the earlier mark must be seen as normal. The signs are visually highly similar and aurally identical, whereas a conceptual comparison is not possible. The signs only differ on account of elements and stylisations, which however, have been found to have little impact, if any, on the perception of the relevant public.

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.

Indeed, it is highly conceivable in the present case, 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).

Moreover, account has to be 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, in particular the fact that the signs are visually highly similar and aurally identical, the Opposition Division finds that there is a likelihood of confusion on the part of the public, even for the services which have been found to be lowly similar, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 948 476.

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

The rest of the contested goods and services 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 and services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs are not identical.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Boyana NAYDENOVA

Holger Peter KUNZ

Martin INGESSON

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.