OPPOSITION No B 2 980 418

Entertainment One UK Limited, 45 Warren Street, London W1T 6AG, United Kingdom (opponent), represented by 24IP Law Group Sonnenberg Fortmann, Herzogspitalstr. 10 a, 80331 München, Germany (professional representative)

a g a i n s t

JinChannel Import & Export Co. LTD, Room 301, Unit 1,Block E, Building T4, Tian'an Cyper Park, Huangge North Road, Longgang District, Shenzhen, China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative)

On 12/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 980 418 is upheld for all the contested goods.

2. European Union trade mark application No 17 251 414 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 17 251 414 for the word mark ‘ROXZOOM’. The opposition is based on European Union trade mark registration No 15 996 218 for the word mark ‘RICKY ZOOM’. 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 headgear of all types, including clothing, footwear and headgear for sports, including all the aforesaid goods of leather (included in class 25); Belts of leather (garments); Bolo ties with precious metal tips.

The contested goods are the following:

Class 25: Singlets; Sports singlets; sports shoes; Headgear for wear; tee-shirts; Underwear; clothing; Wet suits for water-skiing; Cyclists' clothing; Clothing for gymnastics; Jerseys [clothing]; bath robes; Suits; Swimsuits; Bathing trunks.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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).

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 25

Clothing and headgear for wear are identically covered by both lists of goods (including synonyms).

The contested singlets; sports singlets; tee-shirts; underwear; wet suits for water-skiing; cyclists' clothing; clothing for gymnastics; jerseys [clothing]; suits; swimsuits; bathing trunks are included in the broad category of the opponent’s clothing of all types, including clothing for sports, including all the aforesaid goods of leather (included in class 25). Therefore, they are identical.

The contested sports shoes are included in the broad category of the opponent’s footwear of all types, including footwear for sports, including all the aforesaid goods of leather (included in class 25). Therefore, they are identical.

The contested bath robes are similar to the opponent’s clothing of all types, including clothing for sports, including all the aforesaid goods of leather since they can have the same methods of use, share the same distribution channels, target the same relevant public and be produced by the same undertakings.

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 and the degree of attention will be average (see to this effect, inter alia, 31/05/2018, R 2022/2017-5, ORDEAL EST. 2012 (fig.) / ORDEAN (fig.), § 39).

3. The signs

RICKY ZOOM	ROXZOOM
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 the word mark ‘RICKY ZOOM’ and the contested sign is the word mark ‘ROXZOOM’, both depicted in upper case letters.

As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58).

In this respect, the common element ‘ZOOM’ is a basic English word meaning, inter alia, a photographic lens that is adjustable to make the details larger or smaller while always keeping the picture clear and is also commonly used with this meaning in most, if not all, territories throughout the European Union. Therefore, and since the letters ‘ZOOM’ in the contested sign will be perceived as referring to a word that is generally known to the public throughout the European Union, at least a significant part of the public in the relevant territory will perceive this element in both signs as consisting of the word ‘ZOOM’ and associate it with the meaning outlined above. Since this concept has no particular meaning in relation to the goods concerned, it is distinctive to a normal degree.

As regards the word ‘RICKY’ of the earlier mark, it is a male given name of English origin which will also be perceived as having this meaning by at least a significant part of the public throughout the relevant territory. Since it has no particular meaning in relation to the goods concerned, it is also distinctive.

As regards the element ‘Rox’ of the contested sign, the opponent argues that it will be perceived as referring to the female given name ‘Roxanne’. However, the diminutive of ‘Roxanne’ is usually ‘Roxie’ and not ‘Rox’ and ‘Roxanne’ is not a common name in most of the Member States of the European Union. Therefore, the Opposition Division considers that the element ‘Rox’ of the contested sign will rather be perceived as a fanciful word without any meaning, at least by a significant part of the public in the relevant territory. Since this element will be perceived as having no meaning, it is also distinctive.

Since a significant part of consumers in the European Union will perceive the verbal elements of both signs in the ways described above, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public in the relevant territory.

Visually, the signs coincide in the distinctive word ‘ZOOM’ depicted at the end of both signs as well as in the letter ‘R’ at the beginning of their respective first words. However, they differ in the remaining letters of their respective first words ‘RICKY’ in the earlier mark and ‘ROX’ in the contested sign, which are also distinctive.

It is true that consumers generally pay greater attention to the beginning of a mark rather than to the end (17/03/2004, T-183/02 and T-184/02, Mundicor, EU:T:2004:79, § 81) as argued by the applicant. Nonetheless, even if the initial part of word marks is more likely to capture the attention of consumers, that cannot call into question the principle that the examination of the similarity of trade marks must take into account the overall impression produced by them (26/062008, T-79/07, Polaris, EU:T:2008:230, § 42) and the coinciding element ‘ZOOM’ plays an independent distinctive role and will be clearly perceived in both signs by consumers for the reasons set out above.

Therefore, 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 distinctive word ‛ZOOM’, present identically in both signs. The pronunciation differs in the sound of the distinctive words ‛RICKY’ and ‛ROX’ respectively which will be pronounced as ‛RI-KI’ and ‛ROKS’ by the part of the public under analysis and are therefore also similar to the extent that they both share the same sound of the letters ‛R’ and ‛K’ in the same position and order within both signs.

The applicant argues that whereas the two words ‛RICKY’ and ‛ZOOM’ of the earlier mark are depicted with a space between these words to stress a pause when pronouncing the earlier mark, there will be no such pause when pronouncing the verbal element ‛ROXZOOM’ of the contested sign because it is depicted as one verbal element without a space. However, for the reasons already set out above, the relevant public under analysis will break ‛ROXZOOM’ down into the elements ‛ROX’ and ‛ZOOM’ and will therefore also pronounce it as two words in the way already described above. As a result, the fact that the contested sign is depicted as one verbal element whereas the earlier mark is depicted as two words separated by a space will produce no material aural difference between them.

Therefore, the signs are also aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public under analysis, both signs will be associated with the distinctive concept of ‘zoom’ as outlined above but, whereas the earlier mark will also be associated with the concept of a given name, the additional word in the contested sign will not be perceived as having any meaning.

Therefore, the signs are conceptually 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

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).

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.

In the present case, the goods are identical or similar and the degree of attention of the relevant public is average.

Even if both signs include a different distinctive word placed at their beginning, ‛RICKY’ and ‛ROX’ respectively, the signs have been found visually, aurally and conceptually similar to an average degree on account of the coincidence in the distinctive word ‛ZOOM’, which plays an independent distinctive role in both signs for the part of the public under analysis for the reasons set out above in section c) of this decision. Furthermore, the distinctiveness of the earlier mark is normal.

Consequently, even if consumers may recall that the signs contain additional words at their beginnings which are different, in view of their coincidence in the distinctive word ‛ZOOM’ and the overall average degree of similarity between the signs, consumers would still be likely to assume that the identical or similar goods offered under the signs in dispute originated from the same or economically linked undertakings and therefore attribute the same commercial origin to the goods concerned.

Considering all the above, there is a likelihood of confusion on the part of the public under analysis in the relevant territory. 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 mark registration No 15 996 218. 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

Benoit VLEMINCQ

Sam GYLLING

Justyna GBYL

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.