OPPOSITION No B 3 049 000

"Unix" Eood, "Kutlovica" № 6, 4003 Plovdiv, Bulgaria (opponent), represented by Nelly Pencheva & Partners, Ibar str. 21, 1st floor, 4003 Plovdiv, Bulgaria (professional representative)

a g a i n s t

Shenzhen Qianhai Zhongchuang Electronic Commerce Co., Ltd., Rm201, Bldg A, No.1, Qianwan 1st Rd, Qianhai Shenzhen-Hong Kong Cooperation Zone, Shenzhen, China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 21/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 000 is upheld for all the contested goods.

2. European Union trade mark application No 17 504 515 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 17 504 515 for the word mark ‘Indigo alpha’. The opposition is based on Bulgarian trade mark registration No 96 013 for the word mark ‘INDIGO’. 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; swimwear; underwear; body (underwear); boots; quilted vests, jackets, coats, ties; outerwear; gymnastic footwear; gymnastic shoes; gymnastic clothing; underwear /clothes/; leather clothes; leatherette clothing; long socks; fishing vests; climbing shoes; vests, jackets, coats; suspender straps, straps, suspenders; caps, kepi, hats; tights /pants/; leather collars; fur /clothing/, sun visors; belts, girdles, straps /clothing/ belts with purses attached; kits for newborns; ready-to-wear clothing; bodices; suits; swimming costumes; suits for water skiing; short socks; waterproof clothing; clothing for cyclists; clothing for motorcyclists; shoes; ski boots; sports shoes; footwear; coats; ribbons, headbands; pants; slippers; capes; pajamas, beach shoes; beachwear; skirts; poncho; sleeveless shirts; sweaters; shirts, blouses; dresses; gloves /clothing/; sandals; briefs; sports shirts; insoles; pinafores; bras; T-shirts; knitwear; knitted and crochet clothing; three quarter length stockings, turbans; headwear, hats; uniforms; football boots, bathrobes; bath slippers; tights; leotards; scarves; headscarves; cravats and neckwear; hats; shower caps; collars /clothing/.

The contested goods are the following:

Class 25: Clothing; Jeans; Underwear; Shoes; Hats; Socks; Neckties; Swimsuits; Belts [clothing]; Gloves [clothing].

Clothing; underwear; shoes; hats; swimsuits; gloves [clothing] are identically contained in both lists of goods (including synonyms).

The contested jeans; socks; neckties; belts [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is considered to be average.

c) The signs

INDIGO	Indigo alpha
Earlier trade mark	Contested sign

The relevant territory is Bulgaria.

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).

It should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T 254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether both signs are depicted in lower or upper case letters, or in a combination thereof.

The element ‘INDIGO’ of the earlier mark and contested sign even if it is in Latin characters rather than Cyrillic, Bulgarian consumers are used to seeing transliterations and therefore will be able to read the term and understand it as ‘a tropical plant’ and ‘the dark blue dye obtained from this plant’ by the relevant public. Although it is a colour, it is not used very often to describe garments or footwear, unlike other more common colours. As there is no connection with the relevant goods, it is therefore distinctive.

The element ‘ALPHA’ could be perceived as the first letter of the Greek alphabet. It has no clear and unequivocal meaning in relation to the relevant goods in Class 25, and therefore it is distinctive. It is secondary given its positioning at the end of the sign where it will be the last element to be perceived. The Opposition Division points out that ‘INDIGO’ is the prime element in the contested sign and consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that 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.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning because of the distinctive element ‘INDIGO’, and taking into account the presence of the additional concept of the contested sign ‘ALPHA’, the signs are considered similar to a high degree.

Visually and aurally, the signs coincide in the distinctive element ‘INDIGO’, which is the only element in the earlier trade mark and it is wholly included at the beginning of the contested sign. However, they differ in the letters and sounds of the element ‘ALPHA’ in the contested sign.

Therefore, the signs are visually and aurally similar to an above 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.

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 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

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, §16).

In the present case, the goods at issue are identical, and they target the public at large with an average degree of attention.

The conflicting signs are conceptually similar to a high degree and visually and aurally similar to an above average degree. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness.

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. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image.

In the present case, the differences between the conflicting signs are not sufficient to counteract their similarities, since the differences are confined to one word which is placed at the end of the contested sign. In this way, the likelihood that the public might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand or a word variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is, therefore, conceivable that the relevant public will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking

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 Bulgarian trade mark registration No 96 013. 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

Monika CISZEWSKA

Carlos MATEO PÉREZ

Stanislava STOYANOVA

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.