OPPOSITION No B 3 077 362

Shenzhen Billifu Technology Co., Ltd. (formerly Shen Zhen Shi Bi Li Fu Ke Ji Co., Ltd), No.1005, Block A2, Shangzao New Village, Dalang Street, Longhua New District, 518100 Shenzhen, People’s Republic of China (opponent), represented by A.BRE.MAR. S.R.L., Via Servais, 27, 10146 Torino, Italy (professional representative).

a g a i n s t

Yiwu Weiside Import and Export Co. Ltd., Room 202, No.3, Building 6, Futian 3 district, Choucheng Street, Yiwu city, Zhejiang province, People’s Republic of China (applicant), represented by Newpatent, Puerto 34, 21001 Huelva, Spain (professional representative).

On 15/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 362 is upheld for all the contested goods.

2. European Union trade mark application No 17 986 919 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 17 986 919 (figurative mark), namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 17 979 488 (figurative mark). The opponent invoked Articles 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Cycling shoes; clothing; hats; bathing caps.

The contested goods are the following:

Class 25: Clothing; underclothing; layettes [clothing]; bathing suits; shoes; outerclothing; skirts; ready-made clothing; corselets; pyjamas; hats; hosiery; gloves [clothing]; scarfs; girdles; down jackets; raincoats; dance clothing; sleep masks; shower caps.

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.

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

The contested underclothing; layettes [clothing]; bathing suits; outerclothing; skirts; ready-made clothing; corselets; pyjamas; hosiery; gloves [clothing]; scarfs; girdles; down jackets; raincoats; dance clothing are included in the broader category of the opponent’s clothing. Therefore, they are identical.

The contested shoes include, as a broad category, the opponent’s cycling shoes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered to be identical to the opponent’s goods.

The contested shower caps overlap with the broader category of the opponent’s bathing caps, and are, therefore, identical.

The contested sleep masks are lowly similar to the opponent’s clothing as they usually coincide in producer and distribution channels.

b) The signs

Earlier trade mark	Contested sign

Both signs have identical structures, figurative device and verbal element ‘ESDY’, the latter depicted in upper-case letters in the same black colour; only the font differs, being in bolt and slightly more stylised in the earlier mark.

According to settled case-law, a European Union trade mark application should be considered identical to the earlier trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54). An insignificant difference between two marks is a difference that a reasonably observant consumer will perceive only upon examining the marks side by side.

In the present case, the difference between the marks, namely the font of their verbal elements, is insignificant; this difference will in all likelihood go unnoticed by the average consumer; it will not avoid compromising the function of the earlier mark as a means of identifying commercial origin. Therefore, despite this minor difference, and contrary to the applicant’s arguments, the signs are considered identical.

c) Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical to those of the opponent’s. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

Furthermore, the remaining contested goods were found to be similar to a low degree to those covered by the earlier mark. In respect of these goods, it is noted that 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). Taking this principle into account, and given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 979 488. 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

María del Carmen COBOS PALOMO

Alicia BLAYA ALGARRA

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.