OPPOSITION No B 3 080 465

Sopropé - Organizações de Calçado, S.A., Rua da Garagem, nº 9, 2790-078 Carnaxide, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)

a g a i n s t

Shen Zhen Shuang Jie Long Dian Zi Shang Wu You Xian Gong Si, Cheng Shi Zhu Chang B Zuo 706, Ba Gua Er Lu, Yuan Ling Jie Dao, Fu Tian Qu, 0086-51800 Shenzhen, China (applicant), represented by Trade Mark Direct, 4 The Mews, Bridge Road, Twickenham, London TW1 1RF, United Kingdom (professional representative).

On 11/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 465 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 009 804 for the word mark ‘SEYSDE’, namely against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 11 357 423 for the figurative mark . 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 11 357 423.

a) The goods

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

Class 25: Clothing, footwear, belts (clothing), scarves and headgear.

The contested goods are the following:

Class 25: Clothing; Footwear; Headgear; Slippers; Sandals; Shoes; Sports shoes; Boots for sports; Boots; Skirts; Cyclists' clothing; Bathing caps; Trunks (Bathing -); Bathing drawers; Gloves [clothing]; Caps [headwear].

The contested clothing; skirts; cyclists' clothing; trunks (bathing -); bathing drawers; gloves [clothing] are identical to the opponent’s clothing, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested footwear; slippers; sandals; shoes; sports shoes; boots for sports; boots are identical to the opponent’s footwear, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested headgear; bathing caps; caps [headwear] are identical to the opponent’s headgear, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

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 considered to be average.

c) The signs

	SEYSDE
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 element ‘SEYSDE’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The element ‘SEASIDE’ of the earlier sign will be associated with ‘the margin or brink of the sea’ by the English-speaking part of the relevant public (see Oxford English Dictionary). Bearing in mind that the relevant goods are items of clothing, footwear and headgear, this element is weak for these goods as it indicates a characteristic of the goods, namely the place where the goods are to be worn. The figurative aspect of the earlier mark does not distract from the meaning as it is limited to a low degree of stylisation of the letters.

For the remaining part of the relevant public the earlier mark has no meaning and is, therefore, distinctive.

Visually, the signs coincide in the letters ‘SE*S(*)DE’. However, they differ in the third letters ‘A’ and ‘Y’ and in the additional letter ‘I’ in the earlier mark.

Therefore, the signs are similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘SE*S(*)DE’, present identically in both signs. In some languages, there may be further similarities, for example in English the first three letters ‘SEA’ and ‘SEY’ might be pronounced identically by part of the English-speaking public. In most languages, however, the pronunciation of the letters ‘A’ and ‘Y’ clearly differs and in all languages the marks differ in the sound of the additional vowel ‛I’ of the earlier sign, which has no counterpart in the contested mark.

Therefore, the signs are similar to a low degree for (part of the) English-speaking public and similar to a very low degree for the remaining part of the relevant public.

Conceptually, although the English-speaking part of the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the remaining part of the public in the relevant territory neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods for the English-speaking part of the relevant public.

The mark has a normal degree of distinctiveness for the remaining part of the relevant territory, where it has no meaning in relation to the goods in question.

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).

The goods under comparison are identical.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the additional and different letters are particularly relevant when assessing the likelihood of confusion between them.

The similarities between the signs are limited to certain letters within the signs and are secondary within the overall impression given by the signs.

The additional or different letters are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks.

As to the English-speaking part of the relevant public, the degree of aural similarity is higher than for the remaining relevant public. However, bearing in mind also the clear concept evoked by the earlier mark ‘SEASIDE’ for the English-speaking part of relevant public and the fact that this concept (not present in the contested mark) is of limited distinctiveness, the similarities are not sufficient to lead to a likelihood of confusion.

Considering all the above, even when taking into account that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the European Union trade mark No 13 636 659 for the figurative mark .

The second earlier mark invoked by the opponent is less similar to the contested mark. This is because it contains the additional word ‘Comfort’, which is not present in the contested trade mark. Moreover, this mark covers a narrower scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Octavio MONGE GONZALVO

Beatrix STELTER

Karin KLÜPFEL

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.