OPPOSITION No B 3 072 255

Sozzi Calze S.r.l., Via Pecchio, 14, 20131 Milano (MI), Italy (opponent), represented by Jacobacci & Partners S.P.A., Via Senato, 8, 20121 Milano (MI), Italy (professional representative)

a g a i n s t

Soizzi.Com Limited, 3B, China Fen Hin Building, 5 Cheung Yue Street, Cheung Sha Wan, Kowloon, Hong Kong (applicant), represented by Duncan Andrew Welch, Balkerne House, North Hill, Colchester CO1 1PA, United Kingdom (professional representative).

On 25/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 255 is upheld for all the contested goods.

2. European Union trade mark application No 17 938 205 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 17 938 205 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 4 573 945 ‘SOZZI’. 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 European Union trade mark registration No 4 573 945 ‘SOZZI’.

a) The goods

The goods on which the opposition is based are the following:

Class 25: Articles of clothing, footwear and headgear.

The contested goods are the following:

Class 25: Tops; men's wears, women's wears, and child's tops.

The contested tops; men's wears, women's wears, and child's tops are included in the broad category of the opponent’s articles of 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 average.

c) The signs

SOZZI
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements ‘SOZZI’ and ‘SOIZZ’ or ‘SOIZZI’ are not meaningful in certain parts of the relevant territory, for example in those countries where Italian is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public, such as the Swedish- and Danish-speaking part of the public.

The earlier mark is a word mark, ‘SOZZI’. As said above, it has no meaning for the relevant Swedish- and Danish-speaking public and is, therefore, distinctive. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant.

The contested sign is a figurative mark in black lower case and increasingly bold letters. A part of the relevant public will see the word ‘SOIZZ’ and an exclamation mark (!), placed a bit low, in the sign. Another part of the public may perceive the last symbol in the mark as the letter ‘i’, placed upside down, and therefore perceive the entire verbal element as ‘SOIZZI’. This element might even be read as ‘SO EASY’ by a part of the public. However read and/or perceived, the element ‘SOIZZ/SOIZZI’ is distinctive for the entire public under analysis, as not being descriptive or otherwise weak for the relevant goods. For the part of the public that perceives an exclamation mark, this will be understood as such. It is a basic punctuation mark, used to emphasise an immediately preceding word or phrase. The exclamation mark has a rather ancillary character in the contested sign in that it only emphasises the word ‘SOIZZ’ for this part of the public. Consequently, this element is weak.

Visually, for a part of the public that see the last symbol as an exclamation mark, the signs coincide in all five letters, namely ‘SO*ZZ*’ and an additional letter ‘i’, however in different positions. In the earlier mark, this letter ‘i’ is placed at the end, and in the contested sign, in the middle. The signs differ in an exclamation mark at the end of the contested sign, which is weak as explained above, and in the stylisation of this sign.

For the part of the public that perceives a last letter ‘I’ placed upside down in the contested sign, this mark will be read as ‘SOIZZI’. The marks still coincide in five letters, and differ only in the letter ‘i’ placed in the middle of the contested sign and in the stylisation of this mark.

However, in any of these scenarios, the signs are visually similar to a high degree.

Aurally, for the part of the public that perceive an exclamation mark last in the contested sign, the pronunciation of the signs coincides in the sound of the letters ‘SO*ZZ*’, present identically in both signs, and the sound of a letter ‘I’ in different positions in the signs. The marks will therefore be pronounced [SOSSI] versus [SOISS].

Therefore, for this part of the public, the signs are aurally similar to an average degree.

For the part of the public that perceive a letter ‘I’ last in the contested sign, it will be pronounced as [SOISSI], and the earlier sign as [SOSSI], as described above. For this part of the public, the signs are therefore aurally similar to a high degree.

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).

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.

In the present case, the goods are identical. The marks are visually similar to a high degree and aurally similar to an average degree for a part of the public and aurally similar to a high degree for the remaining part, due to the coincidence in all five letters for a part of the public and differing only in an extra letter ‘i’ for another part, as described above. The conceptual aspect does not influence the assessment of the similarity of the signs.

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).

Considering all the above, there is a likelihood of confusion on the part of the Swedish- and Danish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 573 945. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 4 573 945 ‘SOZZI’ 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).

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

Benoit VLEMINCQ

Lena FRANKENBERG GLANTZ

Katarzyna ZANIECKA

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.