OPPOSITION No B 3 049 261

El Corte Ingles, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010 Madrid, Spain ((professional representative)

a g a i n s t

Wang Zhaobo, No. 819 Yangri Community, Yangri Town, Lin Dist.,Shennongjia City Hubei, China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 18/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 261 is partially upheld, namely for the following contested goods:

Class 25: Clothing for children; bodices [lingerie]; underwear; long-sleeved sweaters; shirts; clothing; trousers; skirts; sports jerseys; underpants; tee-shirts; bathing suits; masquerade costumes; footwear; hats; corselets.

2. European Union trade mark application No 17 517 319 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 517 319 for the word mark ‘OTS’. The opposition is based on Spanish national trade mark registration No 12 783 47 for the word mark ‘O.T.S.’ 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, footwear, headgear.

The contested goods are the following:

Class 14: Movements for clocks and watches; charms [jewellery, jewelry (Am)]; jewelry; ornaments [jewellery, jewelry (Am)]; clocks; wristwatches; watch bands; dials [clock- and watchmaking]; watch chains; chronographs [watches]; chronometric instruments; clock cases; watches; alarm clocks; boxes for timepieces.; wristwatches; watch bands; dials [clock- and watchmaking]; watch chains; chronographs [watches]; chronometric instruments; clock cases; watches; alarm clocks; boxes for timepieces.

Class 25: Clothing for children; bodices [lingerie]; underwear; long-sleeved sweaters; shirts; clothing; trousers; skirts; sports jerseys; underpants; tee-shirts; bathing suits; masquerade costumes; footwear; hats; corselets.

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 14

The contested movements for clocks and watches; charms [jewellery, jewelry (Am)]; jewelry; ornaments [jewellery, jewelry (Am)]; clocks wristwatches; watch bands; dials [clock- and watchmaking]; watch chains; chronographs [watches]; chronometric instruments; clock cases; watches; alarm clocks; boxes for timepieces” are all dissimilar to the opponent´s goods in Class 25, contrary to the views of the opponent in this regard.

Their nature and main purpose are different. The main purpose of clothing, footwear and headgear is to dress and protect the human body, whereas jewellery is for personal adornment, and the main purpose of chronometric goods is to tell the time. They do not generally share the same distribution channels, neither are they generally in competition or complementary. Even though some fashion designers nowadays also sell jewellery and watches under their marks, this is not the rule; it tends to apply only to (commercially) successful designers.

Contested goods in Class 25

Footwear and clothing are identically included in both lists of goods .

The contested hats are included in the opponent´s headgear. Therefore, they are identical.

The remaining contested goods in Class 25 are all 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

O.T.S.	OTS
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).

The signs are made up of the same three letter string OTS. In the case of the earlier mark, these letters are punctuated. Neither sign has any meaning for the relevant public, and is likely to be perceived as a distinctive acronym, regardless of whether or not there is punctuation present.

Visually, the signs coincide in ‘OTS’. They differ only in that the earlier mark contains punctuation, which will have a very minor role in the consumer's perception. Therefore, the signs are visually almost identical.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛OTS’, present identically in both signs and distinctive. The letters do not form a word for the relevant public. Therefore, they will both be pronounced as an acronym i.e as three distinct letter sounds regardless of punctuation.

Therefore, the signs are aurally 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.

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

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).

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).

The goods are either identical or dissimilar, while the signs are aurally identical and visually almost identical. In addition, the earlier mark has normal distinctiveness. The relevant public is the public at large with an average degree of attention. A likelihood of confusion exists because the differences between the signs are confined to punctuation which has a very minor role in the consumer's perception.

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 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

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

The Opposition Division

Riccardo RAPONI

Keeva DOHERTY

Edith Elisabeth VAN DEN EEDE

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.