OPPOSITION No B 3 081 350

Comercial Macys Canarias, S.L., Punta Arena Nave B6, 35100 San Bartolome Tirajana, Spain (opponent), represented by Rafael Ortega Pérez, Diego A. Montaude, 7, 1º Of 11, 35001 Las Palmas de Gran Canaria, Spain (professional representative)

a g a i n s t

Yuan Feng Ying, No.69, XiaTang, LiShui Village, LiShui Town, NanHai District, 528244 FoShan City, GuangDong Province, People’s Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).

On 18/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 081 350 is upheld for all the contested goods.

2. European Union trade mark application No 17 963 117 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 17 963 117 for the word mark ‘MINTLIMIT’. The opposition is based on, inter alia, Spanish trade mark registration No 2 996 858 for the figurative mark .The opponent invoked Article 8(1)(a) and (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 Spanish trade mark registration No 2 996 858.

a) The goods

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

Class 25: Clothing, Shoe Articles.

The contested goods are the following:

Class 25: Clothing of imitations of leather; Clothing; Trousers; Stuff jackets [clothing]; Camisoles; Skirts; Coats; Pullovers; Suits; Outerclothing; Knitwear [clothing]; Sports jerseys; Body linen [garments]; down clothing; Singlets; Tee-shirts; Shirts; Topcoats; Corsets.

Clothing is identically contained in both lists of goods.

The contested clothing of imitations of leather; clothing; trousers; stuff jackets [clothing]; camisoles; skirts; coats; pullovers; suits; outerclothing; knitwear [clothing]; sports jerseys; body linen [garments]; down clothing; singlets; tee-shirts; shirts; topcoats; corsets are included in the broad category clothing of the opponent’s. 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 for the relevant goods (clothing) is considered to be average.

c) The signs

	MINTLIMIT
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 sign is a figurative mark composed of the word ‘mint’ in black lower case letters and the dot on the letter ‘i’ in green. This word is meaningless in Spanish and has an average degree of distinctiveness. The sign has no element that could be more dominant than other elements.

The contested sign is a word mark composed of one word, ‘MINTLIMIT’, in upper case letters, which is meaningless in Spanish and has an average degree of distinctiveness. As a word mark its scope of protection covers different forms or representation, such as upper and lower case. However as the second part of the word, ‘LIMIT’ is almost identical to the Spanish word ‘LIMITE’, which has the same meaning (a point or level beyond which something does not or may not extend or pass), a part of the relevant public will dissect the word into ‘MINT’ and ‘LIMIT’. Account must be taken of the fact that, indeed, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). As both words are meaningless in relation with the relevant goods, they have an average degree of distinctiveness.

Visually, the earlier trade mark is wholly included as the beginning of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. The signs differ in the additional element of the contested sign, ‘LIMIT’, and in the earlier mark’s stylisation and colour.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MINT’, present identically in both signs and which are the earlier mark’s sole element. The pronunciation differs in the sound of the letters ‛LIMIT’ of the contested 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. Although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘LIMIT’, will be associated with the meaning explained above, by a part of the relevant public, and as the signs will be associated with a dissimilar meaning, the signs are conceptually not similar.

For the remaining part of the relevant public, 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

The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the signs must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the signs by the average consumer of the goods in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35 and case-law cited).

The goods are identical and the public’s degree of attention is average.

The signs are visually and aurally similar to an average degree and conceptually not similar for a part of the public or the conceptual aspect does not influence the assessment of the similarity of the signs at least for a part of the relevant public. The signs coincide in the earlier mark’s sole and distinctive verbal element, which is the first part of the contested sign. This common element is placed at the beginning, where the attention is usually higher. The typeface and colours of the earlier mark are simply used to embellish the trade mark and will not detract the public’s attention from the verbal element.

Consumers will perceive the second element of the contested mark (‘LIMIT’) that differentiates the trade marks. This differentiating element, however, will be seen as an indication of a sub-brand of the opponent’s products, which is used for another line of the goods.

Furthermore, 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 marks may be offset by a greater degree of similarity between the goods and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). This is applicable to the present case.

Bearing in mind the identity between the goods and the earlier mark’s average degree of distinctiveness, the differences between the signs are not sufficient to outweigh their average degree of visual and aural similarity, resulting from the common element ‘MINT’, which constitutes the earlier mark’s sole element.

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 Spanish trade mark registration No 2 996 858. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right ‘Spanish trade mark registration No 2 996 858 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).

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(1)(a).

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

Andrea VALISA

Aurelia PEREZ BARBER

Michele M. BENEDETTI-ALOISI

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.