OPPOSITION No B 3 072 083

Fond Of GmbH, Vogelsanger Str. 78, 50823 Köln, Germany (opponent), represented by CMS Hasche Sigle Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Kranhaus 1, Im Zollhafen 18, 50678 Köln, Germany (professional representative)

a g a i n s t

Quanzhou Fangyuan Tourism Daily Co., Ltd, Dongyuan Industry District, Taiwanese Investment Zone, 362000 Quanzhou, Fujian Province, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno, Italy (employee representative).

On 21/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 083 is upheld for all the contested goods.

2. European Union trade mark application No 17 928 604 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 17 928 604 for the figurative sign . The opposition is based on German trade mark registration No 302 017 020 257 for the word sign ‘FOND OF’. 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, inter alia, the following:

Class 18: Umbrellas and parasols; walking sticks; luggage, bags, wallets and other carriers; saddlery, whips and apparel for animals; trunks and suitcases; travelling bags; travelling toiletry bags; travelling sets; luggage tags; passport covers [leather goods]; business card cases; portfolio or document cases; bags; handbags; backpacks; shoulder bags; school backpacks; school knapsacks; school bags; school pouches; sports bags; pouches; luggage, in particular hand and carry-on luggage; folio cases; briefcases; vanity cases; cosmetic bags; toiletry bags; toiletry cases; carrier bags; pocket wallets; purses; change purses; note wallets; key bags and cases; toilet bags; clutch bags; shopping bags; attaché cases; school satchels; ID cases [leather goods]; credit card cases [leather goods]; hip bags; carrying cases for water bottles, key and ID rings; garment bags; tie cases; belt pouches; covers for tablet computers as accessories to bags, handbags and backpacks; leather and imitation leather, furs and animal skins and products made of these materials, namely trunks and suitcases, travelling bags, travelling toiletry bags, travelling sets, luggage tags, passport covers, business card covers, portfolio or document cases, bags, handbags, backpacks, shoulder bags, school backpacks, school knapsacks, school bags, school pouches, sports bags, pouches, hand and carry-on luggage, folio cases, briefcases, vanity cases, cosmetic bags, toiletry bags, toiletry cases, carrier bags, pocket wallets, purses, change purses, note wallets, key bags and cases, toilet bags, clutch bags, shopping bags, attaché cases, school bags, school knapsacks, school satchels, ID card covers, credit card covers, hip bags, carrying cases for water bottles, key and ID rings, garment bags, tie cases, belt pouches, covers for tablet computers as accessories to bags, handbags and backpacks, labels; pouch baby carriers; slings for carrying infants; parts and accessories for all the aforesaid goods, included in this class.

The contested goods are the following:

Class 18: Leather, unworked or semi-worked; rucksacks; imitation leather; attache cases; travelling bags; bags for sports; pocket wallets; handbags; school bags; fanny packs; tool bags, empty; briefcases; travelling trunks.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

The contested leather, unworked or semi-worked are included in the broad category of the opponent’s leather. Therefore, they are identical.

The contested tool bags, empty are included in the broad category of the opponent´s bags. Therefore, they are identical.

Rucksacks; imitation leather; attache cases; travelling bags; bags for sports; pocket wallets; handbags; school bags; fanny packs; briefcases are identically contained in both lists of goods (including synonyms).

The contested travelling trunks are highly similar to the opponent’s travelling bags. They have the same purpose and nature. They usually coincide in producer, relevant public, distribution channels and method of use.

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 and highly similar are directed at the public at large, except for leather and imitation of leather, which are directed at business customers with specific professional knowledge or expertise.

The degree of attention is average with regard to goods directed at the general public and above average in relation to leather and imitation of leather, as these goods are specialized and special considerations in term of quality and characteristics could be applicable (e.g. depending on the goods for the production of which leather is purchased, particular requirements might be relevant).

c) The signs

FOND OF
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 mark is a word mark composed of the verbal elements ´FOND OF´ whereas the contested sign is a figurative mark consisting of the verbal element ‘FOND´ depicted in a standard upper-case font.

The English words ‘fond of’ and ‘fond’, for those who understand English, will be perceived respectively as ‘(fond of) having an affection or liking for’ and ‘affectionate; loving’ (extracted from Oxford Dictionary on 07/11/2019 at https://www.lexico.com). For the rest of the public they will be meaningless, as although the word ‘FOND’ exists in the German language meaning ‘background’ (extracted from Duden Dictionary on 07/11/2019 at https://www.duden.de), it is extremely rarely used by the public. In any case the words ‘fond of’ of the earlier mark and ‘fond’ of the contested sign, whether meaningless or meaningful, have no direct meaning for the goods in question and are, therefore, distinctive.

Visually and aurally, the signs coincide in ‘FOND’, where in fact the contested sign is entirely included in and represents the first verbal element of the earlier mark. However, they differ in the verbal element of the earlier mark ‘OF’, which has no counterpart in the contested sign and the fairly standard typeface of the contested sign.

Therefore, the signs are visually and aurally similar to a high average degree.

Conceptually, for the part of the public who does not understand the English words ‘FOND OF’ and ‘FOND’, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible for this part of the public, the conceptual aspect does not influence the assessment of the similarity of the signs. For the rest of the public, who will understand the words in question, the signs will be associated with a similar meaning, and, therefore, 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.

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. It only argued that ´the earlier mark already possesses an inherently high degree of distinctiveness as it does not convey any meaning in relation to the registered goods´. It is noted in this respect that when a sign is not related to the goods or services at issue, its distinctiveness is considered to be normal. Enhanced or increased degree of distinctiveness could be acquired only through use of the respective sign.

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 on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and 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).

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 services covered are from the same or economically linked undertakings.

Furthermore, 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). Even consumers who pay a higher degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the contested goods have been found either identical or highly similar to the opponent’s goods. The relevant public is the professional public with regard to leather and imitation of leather, whose degree of attention is above average and the general public for the rest of the goods whose degree of attention is average. The signs are visually and aurally similar to a high degree. Conceptually, the conceptual aspect either does not influence the assessment of the similarity of the signs (for those who do not understand English) or the signs are similar to a high degree (for those who understand English). The distinctiveness of the earlier mark is normal.

The verbal element of the contested sign is entirely included in the earlier mark as its first verbal element. The signs differ solely in the verbal element ‘OF’ of the earlier mark and the fairly standard typeface of the contested sign. Bearing in mind the fact that the signs coincide in their first four letters and the rule according to which verbal elements play a more important role in the comparison, there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 017 020 257. 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, 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

Teodora TSENOVA-PETROVA

Michal KRUK

Helen Louise MOSBACK

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.