OPPOSITION No B 3 055 363

J. Choo Limited, 10 Howick Place, London SW1P 1GW, United Kingdom (opponent), represented by A.A. Thornton & Co., 10 Old Bailey, London EC4M 7NG, United Kingdom (professional representative)

a g a i n s t

Jingshangcheng (Beijing) Science and Technology Co. Ltd., Room 6733, 6F, Building A, No. 2, Gaochang Village, Huangtugang, Fengtai District (County), Beijing, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 26/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 363 is upheld for all the contested goods.

2. European Union trade mark application No 17 868 400 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 17 868 400 for the figurative mark , namely all the goods in Class 3. The opposition is based on, inter alia, United Kingdom trade mark registration No 3 278 641 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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 abovementioned United Kingdom trade mark registration.

a) The goods

The goods and services on which the opposition is based are, inter alia, the following goods:

Class 3: Soaps, bath gel, shower gel; perfumery, fragrances, eau de toilette, colognes, aftershave, perfumes in solid form; cosmetics, make up preparations; essential oils, body oils, body lotion, body cream, hair lotions, hair conditioners, foot lotions; bath preparations not for medical purposes, balms not for medical purposes; nail care preparations, nail varnish, nail polish, nail varnish and nail polish removing preparations; talcum powder; sunscreen preparations; sun-tanning preparations; pumice stone; emery; dentifrices; shoe cream, shoe polish, shoe wax; cleaning and polishing preparations, including cleaning and polishing preparations for leather, footwear, handbags, sunglasses; room fragrance, room fragrancing preparations, aromatics for indoor use.

The contested goods are the following:

Class 3: Soap; cakes of toilet soap; almond soap; stain removers; shoe cream; grinding preparations; perfumery; ethereal oils; almond oil; cosmetics; lipsticks; dentifrices; breath freshening sprays; incense; cosmetics for animals; air fragrancing preparations; Cleaning preparations; Shining preparations [polish]; Abrasives; Fumigation preparations [perfumes]; Aromatics for household purposes.

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.

Soap; perfumery; shoe cream; cosmetics; dentifrices; cleaning preparations are identically contained in both lists of goods (including synonyms).

The contested cakes of toilet soap; almond soap; stain removers; ethereal oils; almond oil; lipsticks; cosmetics for animals; incense; air fragrancing preparations; fumigation preparations [perfumes]; aromatics for household purposes; shining preparations [polish] are included in, or overlap with, the broad categories of the opponent’s soaps; essential oils; cosmetics; perfumery; room fragrancing preparations; aromatics for indoor use; polishing preparations. Therefore, they are identical.

As regards the contested grinding preparations; abrasives, these are cleaning agents used to clean or polish (a surface) by washing and rubbing. These contested goods are included in the broad category of the opponent’s cleaning and polishing preparations. Therefore, they are identical.

The contested breath freshening sprays are considered similar to the opponent’s dentifrices. These goods have a similar purpose, namely to improve one’s oral hygiene, and are usually produced by the same companies, sold through the same shops and intended for the same public.

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

Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

Both marks are figurative marks. However, the figurative characteristics of the marks, being the stylisation of the verbal elements, are very limited as they do not really depart far from standard font, and are therefore considered to possess very limited, if any, distinctive character.

The coinciding element of the marks, namely the verbal element ‘CHOO’, may be perceived by part of the public, due to an increasing internationalised society in the UK, as a surname with Asian origin. For the remaining part of the public, this word does not convey any meaning. In any case, the word ‘CHOO’ does not indicate or allude to any of the characteristics of the relevant goods and is, therefore, distinctive.

The additional verbal element of the contested sign, ‘LINA’, will be perceived as a female given name. As it does not indicate any of the relevant goods or their characteristics, it is also considered distinctive.

Visually and aurally, the signs coincide in the letters and the sound of the distinctive verbal element ‘CHOO’, which is the only element of the earlier mark and is entirely reproduced at the end of the contested sign. They differ in the additional verbal element ‘LINA’ of the contested sign. Furthermore, they differ in slight stylisation of the verbal elements in both signs, which for the reasons mentioned above will only have very limited, if any, impact on the visual aspect of the comparison of signs. Aurally, figurative elements have no impact on the pronunciation of the signs.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that will perceive the coinciding element ‘CHOO’ as a surname of Asian origin, the signs are conceptually highly similar. Even if the contested sign also includes the female given name ‘LINA’, there is no counterpart in the earlier mark. Therefore, it cannot be excluded from the perspective of the relevant public that the marks actually refer to the same individual or entity.

As regards the part of the public that will perceive the element ‘CHOO’ as an inventive word, only the contested sign will be associated to a female given name due to the element ‘LINA’. Since one of the signs will not be associated with any meaning, the signs are, for this part of the public, not conceptually similar.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

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.

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).

In the present case, the goods are partly identical and partly similar. The relevant public consists of the public at large, whose degree of attention is deemed average.

The signs are visually and aurally similar to an above average degree as the only verbal element of the earlier mark, ‘CHOO’, is fully included in the contested sign, where it plays and independent distinctive role.

In addition, for the part of the public that perceives ‘CHOO’ as a surname, the signs are conceptually highly similar. In fact, since the earlier mark does not include any additional given names, it cannot be excluded that from the perspective of the relevant public that the marks may refer to the same individual or entity. Furthermore, for this part of the public, bearing in mind that the relevant territory is the UK, ‘CHOO’ will not be perceived as a common surname. On the contrary, ‘LINA’ is far more commonly used as a given name. Therefore, it is more likely that it is ‘CHOO’ that will attract the consumers’ attention.

As for the differences between the signs, although the contested sign contains the additional female given name ‘LINA’, which is also distinctive and is placed in the beginning of the contested sign, as well as the signs being conceptually not similar for part of the public, these differences are not sufficient to counteract the visual and aural similarity between the signs, deriving from the common element ‘CHOO’. As far as the slight differences of stylisation of the verbal elements of the signs, they have limited, if any, impact as mentioned above.

In addition, it is a common practice for manufacturers to make variations of their trade marks, for example by altering the typeface or colours or adding verbal or figurative elements, to denote new product lines or to endow their trade mark with a new, modernised image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices.

In this regard, the Opposition Division finds that it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark (see, by analogy, 23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Consequently, the public may attribute the same (or an economically-linked) commercial origin to the goods that have been found identical or 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 opponent’s United Kingdom trade mark registration No 3 278 641. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Furthermore, as the earlier right assessed above leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was 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).

Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Claudia MARTINI

Tu Nhi VAN

Peter QUAY

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.