OPPOSITION No B 3 066 686

WE Brand S.à.r.l., 31-33 Avenue Pasteur, 2311, Luxembourg, Luxembourg (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX, Weesp, Netherlands (professional representative)

a g a i n s t

Quanzhou Kailang Garments Co. Ltd., Inside Liangzhong Farm Jinjiang, Fujian, People’s Republic of China (applicant), represented by Würth & Kollegen, Sögestr. 48, 28195 Bremen, Germany (professional representative).

On 28/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 686 is upheld for all the contested goods.

2. European Union trade mark application No 17 925 718 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 17 925 718 for the figurative mark. The opposition is based on Benelux trade mark registrations No 953 592 for the figurative mark and No 879 701 for the word mark ‘WE’. 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 Benelux trade mark registration No 953 592.

1. The goods

On 03/05/2019 the opponent limited the goods on which the opposition is based. After this limitation, the goods on which the opposition is based are the following:

Class 25: Clothing, footwear, headgear, hats, hats and caps; belts.

The contested goods are the following:

Class 25: Clothing; Trousers; Coats; Underwear; Sport coats; Waterproof clothing; Shoes; Sports shoes; Hats; Hosiery; Neckties; Girdles.

Clothing; hats are identically contained in both lists of goods.

The contested trousers; coats; underwear; sport coats; waterproof clothing; hosiery; neckties; girdles are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested shoes; sports shoes are included in the broad category of the opponent’s footwear. 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 are directed at the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the Benelux countries.

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 mark is a figurative mark consisting of the letters ‘WE’ depicted in slightly stylised upper case letters, in which the corners of the letter ‘W’ (lower left) and the ‘E’ (upper left) are rounded, within a black rectangular background.

The contested sign is a figurative mark composed of the verbal elements ‘WE RAGA’ written in quite standard characters within a rectangular background. The elements ‘WE’ and ‘RAGA’ are clearly separated as there is a space between them. Moreover, the verbal element ‘WE’ is in white characters and placed against a black background while the verbal element ‘RAGA’ is in black characters and placed against a white background. This contributes to further creating a clear visual distinction between the two verbal elements ‘WE’ and ‘RAGA’.

The element ‘WE’ (included in both signs) will be understood either as the English pronoun ‘we’ (i.e. first person plural pronoun) by a part of the public in the relevant territory with knowledge of English or as the Dutch word ‘we’ (with the same meaning that it has in English) for the Dutch-speaking part of the public. However, it cannot be excluded that part of the relevant public will perceive the earlier mark as a fanciful word or as the sum of the letters ‘W’ and ‘E’ (French-speaking part of the public with no knowledge of English). Irrespective of whether the verbal element ‘WE’ is understood or not, it is considered a distinctive element as it is not descriptive, allusive or otherwise weak for the relevant goods.

Contrary to the opponent’s opinion, the verbal element ‘RAGA’ has no meaning for the relevant public and it is therefore distinctive in relation to the goods at issue.

As a whole, the word combination ‘WE RAGA’ does not have a clear meaning and will be perceived by the relevant consumers as the mere combination of these two verbal elements.

The rectangular backgrounds, included in both signs, cannot be regarded as an element of particular importance as they have essentially a decorative role.

The signs have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘WE’, which is the sole verbal element of the earlier mark and is fully included as an independent element at the beginning of the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Even if the marks’ graphic arrangements and colours have a less relevance in the assessment of the visual similarities, the fact the common verbal element ‘WE’ is arranged in a similar manner in both marks (i.e. in white characters and placed against a black background) further increases the visual similarities between the signs.

The marks differ in the second verbal element ‘RAGA’ of the contested sign which has no counterpart in the earlier mark. They differ also in the stylisation of their verbal elements which, in any case, are not particularly elaborate.

Considering all the above and the fact that the sole and distinctive verbal element of the earlier mark, ‘WE’, retains an independent and distinctive role at the initial part of the contested sign, it is considered that the marks are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the syllable ‘WE’, constituting the earlier mark’s verbal element and present at the beginning of the contested sign. The pronunciation differs in the sound of the letters ‘RAGA’ in the contested sign, which have no counterpart in the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For that part of the public for which the element ‘WE’, included in both sings, is meaningless, 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.

For that part of the public for which the element ‘WE’, included in both signs, is meaningful, both signs will be associated only with the meaning of the element ‘WE’, taking into account that the additional element of the contested sign ‘RAGA’ is meaningless. Therefore, for this part of the public, the signs are conceptually similar to a high degree.

As the signs have been found similar in at least one aspect of the comparison, the examination 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.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, 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 (recital 11 of the EUTMR). 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).

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 under comparison are identical. The earlier mark has an average degree of inherent distinctiveness. The signs are visually, aurally and conceptually similar to the degrees explained above on account of the coinciding element ‘WE’, constituting the earlier mark’s only verbal element and fully included and clearly perceptible as an independent element at the beginning of the contested sign. The marks differ in the additional word, ‘RAGA’, of the contested sign, which will not go unnoticed by consumers, as well as some figurative features of the marks even if, as explained above, there is a certain similarity in the colours and graphic arrangement of the common verbal element ‘WE’ in both marks.

Therefore, given the reproduction of the distinctive and initial element ‘WE’ in the contested sign, it is likely that, the relevant public displaying an average degree of attention, will at least associate the contested sign with the earlier mark.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application may not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

In the present case, the relevant consumers may legitimately believe that the contested trade mark is a new version or a brand variation of the opponent’s mark, considering that it will be applied to goods that are identical to those protected by the earlier trade mark. In other words, consumers may confuse the origins of the goods at issue, assuming that they come from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that the differences between the signs are not sufficient to counteract the similarity resulting from their coinciding element, ‘WE’, and that, for identical goods, there is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 953 592. 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 extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Benelux trade mark registration No 953 592 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 right 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, 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

Boyana NAYDENOVA

Angela DI BLASIO

Meglena BENOVA

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.