OPPOSITION No B 3 075 639

Franco Austral, S.L., Calle Zamora, 103 Ático 1ª, 08018 Barcelona, Spain (opponent), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative).

a g a i n s t

Jianfeng Zheng, Via Nicolo Forteguerri 5, 00176, Roma, Italy (applicant).

On 28/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 075 639 is upheld for all the contested goods, namely

Class 25: Pyjamas; clothing; footwear; collar protectors; hats.

2. European Union trade mark application No 18 010 002 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all of the goods of European Union trade mark application No 18 010 002, for the word mark ‘SUANNA’, namely against all the goods in Class 25. The opposition is based on, inter alia, Spanish trade mark registration No 2 938 591, for the word mark ‘SURKANA’. 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 Spanish trade mark registration No 2 938 591.

a) The goods

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

Class 25: Tee shirts, shirts, blouses, trousers, skirts, jackets, coats, sweaters, waistcoats, dressing gowns, home suits, underwear, swimming costumes, dressing gowns, suits, headgear, stockings, socks, scarves, belts (clothing), gloves (clothing), ties, footwear (excluding orthopedic footwear).

The contested goods are the following:

Class 25: Pyjamas; clothing; footwear; collar protectors; hats.

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.

The contested clothing; footwear include, as broader categories, the opponent’s trousers, footwear (excluding orthopedic footwear) respectively. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested hats are included in the broad category of the opponent’s headgear, and are therefore identical.

The contested pyjamas are highly similar to the opponent´s dressing gowns as they have the same nature and are complementary to each other. They usually coincide in producer, relevant public and distribution channels.

The contested collar protectors are similar to the opponent´s shirts as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

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 or similar are directed at the public at large. The degree of attention is average.

c) The signs

SURKANA	SUANNA
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).

Both the earlier mark and the contested sign are meaningless, as claimed by the opponent and not refuted by the applicant, and are, therefore, distinctive.

Visually, the signs coincide in the letters ‘SU*A*NA’ and differ in the letters ‘RK’ of the earlier mark, which have no counterpart in the contested sign, in the additional letter ‘N’ of the contested sign and in the position of the common first letter ‘A’.

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. In this case, the signs have identical beginnings.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SU*ANA/ANNA’, since the additional letter ‘N’ of the contested sign will not alter the pronunciation for the relevant public. However, they differ in the sound of the consonants ‘RK’ of the earlier mark which have no counterpart in the contested mark.

Therefore, the signs are aurally similar to an average 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

The goods covered by the trade marks in dispute have been found to be partly identical and partly similar to varying degrees, and are directed at the public at large with an average degree of attention. The signs are visually and aurally similar to an average degree, while the conceptual comparison is not possible. The differences between the signs are found in the middle where the consumers will not focus most of their attention. The earlier mark has a normal degree of distinctiveness.

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

Likewise, 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).

In the light of all the foregoing and considering that the goods are identical and similar or highly similar, the Opposition Division deems that a likelihood of confusion exists on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 938 591. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 2 938 591 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

Alicia BLAYA ALGARRA

Helen Louise MOSBACK

Inés GARCIA LLEDO

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.