OPPOSITION No B 3 029 983

La Sirena de Ibiza, A.I.E., C/ Del Vidrier, local 48, 07819 Jesus (Santa Eularia des Rius), Spain (opponent), represented by Padima, Calle Gerona, 17, 1º A-B, 03001 Alicante, Spain (professional representative)

a g a i n s t

Shanghai Sunway International Trade Co., Ltd , Room 623, 8 to 9 Floor., 1500 Figure, Lianhua South Road, Minhang District, 201100 Shanghai, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 029 983 is upheld for all the contested goods.

2. European Union trade mark application No 17 375 213 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 17 375 213 (figurative mark: ), namely all the goods in Classes 18 and 25. The opposition is based on, inter alia, Spanish trade mark registration No 3 528 117 (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.

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 Spanish trade mark registration No 3 528 117 (figurative mark: ).

1. The goods

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

Class 18: Leather and imitation leather; animal skins; trunks and suitcases; umbrellas and parasols; walking sticks; whips and saddlery.

Class 25: Clothes, shoes and headgear.

The contested goods are the following:

Class 18: School satchels; rucksacks; attaché cases; handbags; travelling bags; briefcases; imitation leather; umbrellas; mountaineering sticks; leather for harnesses.

Class 25: Clothing; shoes; headgear for wear; hosiery; gloves [clothing]; scarfs; neckties; girdles; wedding dresses; shower caps.

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

Imitation leather; umbrellas appear identically in both lists of goods.

The contested leather for harnesses is included in the broad category of the opponent’s leather. Therefore, they are identical.

The contested mountaineering sticks are sticks used by hikers. Many hikers, mountaineers and climbers use hiking or mountaineering sticks because they may aid walking up/downhill and may also ease the strain on the spine and the lower extremity joints particularly the knees. They are, in fact, a kind of walking stick and are included in the broad category of the opponent’s walking sticks. Therefore, they are identical.

The contested school satchels; rucksacks; attaché cases; handbags; travelling bags; briefcases are at least similar to the opponent’s trunks and suitcases. They have the same purpose, that is for carrying items. Distribution channels and relevant public may coincide.

Contested goods in Class 25

Clothes, shoes and headgear for wear appear identically in both lists of goods (despite different wording).

The contested hosiery; gloves [clothing]; scarfs; neckties; girdles; wedding dresses; are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested shower caps are included in the broad category of the opponent’s headgear. Therefore, they are identical.

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 at least similar are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. Wedding dresses, for example, are usually a once in a lifetime purchase and tend to be expensive. They will warrant a high degree of attention.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

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 earlier mark is a figurative mark with the verbal element ‘FUNTRIP’ which appears in a basic capital typeface, ‘FUN’ in grey and ‘TRIP’ in white over a yellowish orange background in the shape of a suitcase. To the left a figurative device in the form of a stylised sun forms around the letter ‘F and ends with a curved line that extends under the verbal element. The verbal elements are meaningless for the Spanish-speaking public and therefore distinctive. The stylised sun has no clear meaning in relation to the goods and is a distinctive element. The suitcase shape has a meaning in relation to part of the goods that may have a similar shape (such as suitcases) and has a limited distinctive character for such goods. It is distinctive for the remaining goods. No element is more dominant than others in the earlier sign.

The contested sign in the figurative mark with the verbal element ‘SUNTRIP’ which appears in a basic black capital font. ‘SUNTRIP’ is meaningless for the Spanish-speaking public and therefore distinctive. It cannot be ruled out that the word ‘SUN’, which could be considered a basic English word, may be recognised by part of the Spanish speaking public, as the opponent claims. For that part of the public, it has no meaning in relation to the goods and is distinctive. ‘TRIP’ is meaningless for the Spanish-speaking public and distinctive. Under the verbal element appears a black curved line which will be perceived as an unremarkable decorative element and is non distinctive. It is also the less dominant element of the mark.

Visually, the signs coincide in six out of seven letters ‘-UNTRIP’ and in the fact that the figurative devices of the signs contain curved lines that underline the verbal elements. They differ in the first letters, ‘F’ of the earlier mark and ‘S’ of the contested sign. They differ in addition in the stylised sun and suitcase of the earlier mark which have no counterpart in the contested sign, the colours and the typefaces.

Therefore the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in in the sound of the letters
‛-UNTRIP’, present identically in both signs. They differ in the sound of the first letter of the marks ‘F’ of the earlier mark and ‘S’ of the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meanings of the figurative devices in the earlier mark, as explained above, the other sign has no meaning for part of the public in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for that part of the public.

For the part of the public that dissects the basic English word ‘SUN’ in the contested sign, the signs are conceptually similar to an average degree, regarding that element that is present as a figurative device in the earlier mark.

As the signs have been found similar in at least one aspect of the comparison, the assessment 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, despite the presence of a weak element in the mark in relation to part of the goods, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

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). 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).

In the present case the goods are identical or at least similar. The signs are visually similar to an average degree and aurally highly similar. They are not conceptually similar for the part of the public that does not recognise the basic English word ‘SUN’ in the contested sign and conceptually similar to an average degree for those that do. The degree of attention of the relevant public varies from average to high and the earlier mark has a normal degree of distinctive character.

As mentioned, the verbal elements tend to have a greater impact on consumers than the figurative elements as consumers refer to the marks using the verbal elements. The marks coincide in six out of seven letters which makes their verbal elements highly similar. The differences between the marks, including the figurative devices in the earlier mark, are insufficient to avoid a likelihood of confusion on the part of the relevant public. The similarities between the marks outweigh their differences and a likelihood of confusion cannot be ruled out even for the part of the public that does not recognize the word ‘SUN’ in the contested sign and for which the signs are not conceptually similar.

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 Spanish trade mark registration No 3 528 117 (figurative mark: ). It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right No 3 528 117 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition is directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Beatrix STELTER

Lynn BURTCHAELL

Tobias KLEE

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.