OPPOSITION No B 3 070 980

The Echo Design Group Inc., 10 East 40th Street, 10016, New York, United States (opponent), represented by Withers & Rogers LLP, 4 More London Riverside, SE1 2AU, London, United Kingdom (professional representative)

a g a i n s t

Shenzhen Aikesidun Commercial and Trading Co., Ltd., 5/F, No. 480 Fanshen Road, Area 47, Fanshen Community, Xin'an Street, Bao'an District, Shenzhen City, Guangdong Province, People’s Republic of China (applicant), represented by Zeller & Seyfert Partg mbB, Friedrich-Ebert-Anlage 35-37 (Tower 185), 60327, Frankfurt am Main, Germany (professional representative).

On 08/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 980 is partially upheld, namely for all goods except for the following:

Class 25: Uppers (footwear -); footwear uppers; footwear soles.

2. European Union trade mark application No 17 954 716 is rejected for all the contested goods with the exception of the above goods, for which it may proceed.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 954 716 for the word mark ‘Echo Stone’. The opposition is based on, inter alia, European Union trade mark registration No 2 770 956 for the word mark ‘ECHO’. 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 2 770 956.

a) The goods

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; including handbags, tote bags, shoulder bags, sling bags, purses, wallets, key and credit card cases; overnight bags; soft sided accessories, including toiletry cases (sold empty), cosmetic cases (sold empty) and make up bags (sold empty).

Class 25: Clothing, headgear; including women's clothing and accessories, including, scarves, squares, shawls, stoles, shrugs, capes, ponchos, serapes, ruanas, wraps, mantles, mantilla, neckerchiefs, mufflers, hats, gloves, jackets, vests, weskits, boleros, belts, waist wraps, including sashes and obis, ties, blouses; men's neckwear, including men's ties, cravats, ascots, and western thongs; rainwear; and leather belts; hosiery; but not including shoes, insoles, boots, sandals, clogs, soled slippers and other soled products worn on the feet and replacement spikes for golf shoes.

The contested goods are the following:

Class 18: Bags; Purses; Backpacks; Vanity cases, not fitted; Briefcases; School bags; Handbags; Pocket wallets; Key cases; Bags for campers; Pouch baby carriers; Suitcases; Travelling sets; Card cases [notecases]; Leather, unworked or semi-worked; Animal skins, hides; Fur; Moleskin [imitation of leather]; Imitation leather; Umbrellas and parasols; Shoulder belts; Saddle belts; Leather shoulder belts; Belts (Leather shoulder -); Fitted belts for luggage; Shoulder belts [straps] of leather; Wallets for attachment to belts; Belt bags; Belt pouches; Belt bags and hip bags.

Class 25: Clothing; Headgear; Children's clothing; Clothing of imitations of leather; Knitwear [clothing]; Waterproof clothing; Wedding dresses; Clothing of leather; Costumes; Coats; Tee-shirts; Babies' pants [clothing]; Layettes [clothing]; Bathing trunks; Swimsuits; Outerclothing; Cheongsams (Chinese gowns); Skirts; Shirts; Trousers; Underpants; Corselets; Brassieres; Footwear; Trainers [footwear]; Pumps [footwear]; Beach footwear; Infants' footwear; Ladies' footwear; Footwear [excluding orthopedic footwear]; Casual footwear; Leisure footwear; Uppers (Footwear -); Footwear uppers; Golf footwear; Climbing footwear; Footwear soles; Rubbers [footwear]; Fishing footwear; Sneakers [footwear]; Athletic footwear; Athletics footwear; Sports footwear.

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). Therefore, as this expression does not affect the scope of protection of the earlier mark in this class, the Opposition Division will not explicitly list the whole specification in the comparison below.

However, the term ‘but not including’, used in the opponent’s list of goods is exclusive and restricts the scope of protection only to the goods that are not excluded.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 18

The below listed sets of contested and opponent’s goods are identical for the following reasons:

- The contested moleskin [imitation of leather] is included in the broad category of the opponent’s imitations of leather;

- The contested leather, unworked or semi-worked is covered by the opponent’s general category of leather;

- The contested imitation leather is synonymous to the opponent’s imitations of leather;

- The contested bags include, as a broader category the opponent’s travelling bags;

- The contested saddle belts are included in the broad category of the opponent’s saddlery;

- Animal skins, hides; umbrellas and parasols are contained in both lists of goods;

- The contested suitcases are included in the opponent’s broad category of travelling bags.

The contested fur is similar to a high degree to the earlier leather as they have the same purpose and nature. They usually coincide in producer, relevant public and distribution channels.

The contested purses; backpacks; vanity cases, not fitted; briefcases; school bags; handbags; pocket wallets; key cases; bags for campers; travelling sets; card cases [notecases]; shoulder belts; leather shoulder belts; belts (leather shoulder -); fitted belts for luggage; shoulder belts [straps] of leather; wallets for attachment to belts; belt bags; belt pouches; belt bags and hip bags are at least similar to the opponent’s travelling bags because they usually coincide in producer, relevant public and distribution channels. Furthermore, some of them may have the same purpose of carrying items while travelling.

The contested pouch baby carriers are similar to a low degree to the opponent’s clothing in Class 25 as they usually coincide in producer, relevant public and distribution channels; for example, shops specialised is selling infant clothing usually also sell baby-carrying goods, such as carriers and wraps.

Contested goods in Class 25

The contested children's clothing; clothing of imitations of leather; knitwear [clothing]; waterproof clothing; wedding dresses; clothing of leather; costumes; coats; tee-shirts; babies' pants [clothing]; layettes [clothing]; bathing trunks; swimsuits; outerclothing; cheongsams (Chinese gowns); skirts; shirts; trousers; underpants; corselets; brassieres are included in the broad category of the earlier clothing. Therefore, they are identical.

Clothing and headgear are identically contained in both lists of goods.

The contested footwear and specific types of footwear, namely trainers [footwear]; pumps [footwear]; beach footwear; infants' footwear; ladies' footwear; footwear [excluding orthopedic footwear]; casual footwear; leisure footwear; golf footwear; climbing footwear; rubbers [footwear]; fishing footwear; sneakers [footwear]; athletic footwear; athletics footwear; sports footwear are similar to the opponent’s clothing. Footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets and target the same public. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear.

The contested uppers (footwear -); footwear uppers; footwear soles are parts of footwear that are intended to be used in the manufacturing of footwear items. The opponent’s goods cover clothing and headgear (and explicitly exclude footwear and some specific fittings) in Class 25 as well as various containers, carriers, saddlery, umbrellas, parasols and raw materials (e.g. leather) in Class 18. The contested goods differ in nature, purpose and the method of use from the opponent’s goods. Moreover, they cannot be considered complementary, are not in competition and do not share the same distribution channels. Furthermore, they are usually produced by different companies. Therefore, these contested goods are dissimilar to all of the opponent’s goods in Classes 18 and 25.

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, except for a few goods, namely the raw materials (leather, imitation leather, fur, animal skins, hides) that are aimed at professionals, the remaining goods are aimed at the public at large.

The degree of attention of the public at large in relation to the general consumer goods (e.g. bags, clothing, footwear, umbrellas) is average while the level of attention of the professionals in relation to the raw materials is likely to be higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

ECHO	Echo Stone
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).

Both marks are word marks and in the case of word marks, it is the words as such that are protected and not their written form. Therefore, it is irrelevant whether they are presented in upper- or lower-case letters or a combination thereof (21/09/2012, T-278/10, Western Gold, EU:T:2012:1257, § 44, 46).

Both marks share the same word ‘ECHO’ which would be seen as referring to ‘a sound which is caused by a noise being reflected off a surface such as a wall’ by a part of the public (e.g. English or German speakers) while another part of the public may see it as meaningless. The second word ‘Stone’ of the contested sign has a meaning in English (e.g. ‘a piece of a rock’), however it is meaningless for the part of the public that does not understand English. The distinctiveness of both words is average as, even if perceived as meaningful, the concepts have no connection to the relevant goods. Furthermore, even if both elements of the contested mark are understood (e.g. by the English speakers), they do not form any logical conceptual unit and each word plays an independent distinctive role.

It is noted that 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.

Visually and aurally (irrespective of the different pronunciation rules in different parts of the relevant territory), the signs coincide in the letters/sounds ‘ECHO’ and differ in the sound of the additional letters ‘Stone’ of the contested sign. Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Depending on the perception of the part of the public, that is, whether all words, only the word ‘echo’ or none of the words are understood, the signs are, for a part of the public conceptually similar to at least an average degree (e.g. for the English or German speakers) and for another part - conceptually not comparable.

As the signs have been found similar from the visual, aural and for part of the public also conceptual points of view, 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 did however claim that the mark is inherently highly distinctive. In this regard it must be noted that when an earlier mark is not descriptive (or is not otherwise non-distinctive), the mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). Any higher degree of distinctiveness should be proved by the opponent by providing evidence of enhanced distinctiveness through use. Therefore, the opponent’s assertions regarding the high degree of inherent distinctiveness of the earlier mark are set aside.

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 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). Even consumers who pay a high 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).

The contested goods have been found partly identical or similar to various degrees and partly dissimilar to the goods of the opponent. The identical and similar goods target the general public and professional public with degrees of attention from average to higher than average. The signs are visually and aurally similar to an average degree while conceptually, depending on the part of the public, the signs are either conceptually not comparable or similar to at least an average degree.

In the light of those findings, and since likelihood of confusion covers, inter alia, situations where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings, 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). This is because the single verbal element of the earlier sign represents the first element of the contested sign and plays an independent distinctive role in it. The difference is confined to an element that, even though distinctive, is not capable of offsetting the existing coincidence.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s earlier European Union trade mark registration No 2 770 956.

It follows from the above that the contested trade mark must be rejected for all the contested goods found to be identical or similar to any degree. Even for the goods that are similar to a low degree (i.e. pouch baby carriers vs clothing) and for the goods for which the level of attention would be higher (e.g. various raw materials in Class 18), the overall similarity of the signs is such that there is a likelihood of confusion.

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 these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

- UK registration No 1 107 754 for the word mark ‘ECHO TOUCH’ registered for the goods in Class 25;

- EUTM registration No 9 430 695 for the word mark ‘ECHO TOUCH’ registered for the goods in Class 25;

- EUTM registration No 3 127 032 for the word mark ‘ECHO’ registered for the goods and services in Classes 14, 18, 25 and 35.

The list of goods in Classes 18 and 25 covered by these earlier rights is the same or covers a narrower scope of protection than the mark already compared, therefore, the comparison would not lead to a different conclusion as regards the goods found dissimilar earlier.

As regards the additional goods and services covered by one of the marks in Classes 14 and 35, these consist of precious metals, their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments (Class 14) and advertising, business management and administration, office functions, retail store services; but not including shoe store services (Class 35). It is recalled that the goods found to be dissimilar previously are parts of footwear that are intended to be used in the manufacturing of footwear items (uppers (footwear -); footwear uppers; footwear soles in Class 25). These contested goods and the opponent’s goods and services in Classes 14 and 35 are dissimilar as they differ in their nature, method of use, purpose, distribution channels, producers/providers. They are neither in competition nor complementary. Therefore, no likelihood of confusion exists with respect to those 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. 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

Helen Louise MOSBACK

Vita VORONECKAITE

Carlos MATEO PÉREZ

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.