OPPOSITION No B 3 050 084

SE-Blusen Stenau GmbH, Ahauser Str. 79-87, 48599, Gronau-Epe, Germany (opponent), represented by Alpmann Fröhlich Rechtsanwaltsgesellschaft MBH, Verspoel 12, 48143, Münster, Germany (professional representative)

a g a i n s t

Heshan Top Eagle Garment LTD., Hall A\B\C\G\I\J\K,No.001,District 3 of Hecheng Industrial Park, Heshan City, Guangdong, China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556, Athens, Greece (professional representative).

On 20/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 084 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 479 321 for the figurative mark . The opposition is based on German trade mark registration No 2 029 577 for the word mark ‘SE’. 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.

a) The goods

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

Class 25: Clothing, especially women's wear and sports wear.

The contested goods are the following:

Class 25: Ready-made clothing; tops as clothing for children; bottoms as clothing for children; bathing suits; waterproof clothing; shoes; hats; hosiery; gloves [clothing]; scarves; belts [clothing].

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

The term ‘especially’, 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.

The contested ready-made clothing; tops as clothing for children; bottoms as clothing for children; bathing suits; waterproof clothing; hosiery; gloves [clothing]; scarves; belts [clothing] are included in the broad category of the opponent’s clothing, especially women's wear and sports wear. Therefore, they are identical.

The contested shoes; hats are similar to the opponent’s clothing, especially women's wear and sports wear as they have the same purpose. They usually also coincide in producer, relevant public and distribution channels.

b) 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.

c) The signs

SE
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 trade mark is a word sign consisting of two letters, ‘SE’.

The contested application is a figurative mark formed by a letter ‘E’ that contains a particularly stylized letter ‘S’ deprived of their respective lower and upper parts. The Opposition Division does not agree with the opponent that consumers will see in the contested sign the same ‘clearly distinguishable and legible letters as those making up the earlier mark’. On the contrary, taking into account that relevant public reads from left to right, it is reasonable to assume that the earlier sign will be perceived as a fanciful combination of the sequence of letters ‘ES’ or rather, given the peculiar stylization of the letter ‘S’, ‘ESS’.

The signs respective verbal elements ‘SE’ and ‘ES’ / ‘ESS’ have no meaning for the relevant public and are, therefore, distinctive.

Finally, it must be stressed that the length of signs may influence the effect of the differences between them. In principle, the shorter a sign, the more easily the public is able to perceive all its single elements.

Visually, the signs coincide to the extent that they are both containing the letter ‘E’ and ‘S’ which are, however, arranged differently within the structure of the marks namely, ‘SE’ in the earlier mark and ‘ES’ or rather ‘ESS’ in the contested application. Moreover, the signs differ in the contested application’s fanciful and peculiar arrangement of letters and in its slight stylization.

Therefore, also taking into account the above principles, the signs are visually similar only to a low degree.

Aurally, the pronunciation of the signs coincide insofar as they both contain the sound of the letters ‘E’ and ‘S’, being respectively pronounced as ‘SE’ (earlier trademark) and ‘ES’ or ‘ESS’ (contested application).

Therefore, independently from the number of letter ‘S’ pronounced in the contested sign (given that the second letter ‘S’ would not enhance significantly the phonetic difference between the marks), the signs are aurally similar at most to a low degree.

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.

d) 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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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).

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 goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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 have been found identical and similar. They target the general public whose degree of attention is considered average.

The signs under comparison have been found visually similar to a low degree and aurally similar at most to a low degree, insofar as they are both composed of the letters ‘E’ and ‘S’. However, the signs present substantial differences given by the different order on which the common letters are arranged and by the remarkable graphical arrangement of the contested application, which, contrary to the opponent’s claim, cannot be defined as confined to ‘decorative aspects’. In this regard, it must be stressed that when – as in the present case – signs are composed of two / three letters the comparison of these depends on their stylisation and, especially, on whether the letters are recognisable as such in the sign. Consequently, the visual overall impression of the signs may be different when two conflicting signs, albeit containing or consisting of the same combination of letters, are stylised in a sufficiently different way or contain a sufficiently different figurative element, so that their different overall graphical representation eclipses the common verbal element.

Moreover, the relevant goods are articles of clothing, footwear and headgear. Generally in clothes shops (and also in shops that sell footwear and headgear) customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03-T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50).

Therefore, the considerable visual differences between the signs are particularly relevant when assessing the likelihood of confusion between them. In particular, the abovementioned differences are enough to outweigh the similarities between the signs originating from the shared letters. It follows from the above that the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered reasonably well informed and reasonably observant and circumspect, might believe that the goods, which are identical or similar, come from the same undertaking or economically linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Riccardo RAPONI

Aldo BLASI

Michele M. BENEDETTI-ALOISI

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.