OPPOSITION Nо B 3 088 878

 

Helsinki Sock Company Ab, Eirastranden 5B, 00150 Helsinki, Finland (opponent), represented by Dottir Attorneys Ltd, Pohjoisesplanadi 35 Aa, 00100 Helsinki, Finland (professional representative) 

 

a g a i n s t

 

Liang Sun, C/ Murillo, 3 P01A, 28233 Pozuelo de Alarcón, Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via, 69 -4° Of. 412, 28013 Madrid, Spain (professional representative).

On 25/09/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

  1. Opposition No B 3 088 878 is partially upheld, namely for the following contested goods:

Class 24: Textile goods; fabrics; filtering materials of textile; cloth.

Class 25: Underwear; shirts and slips; headgear; headgear; footwear; clothing.

 

2.	European Union trade mark application No 18 028 620 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 028 620 ‘AIMMIA’ (word mark). The opposition is based on EUTM registration No 17 955 281, ‘AIM By Mia’ (word 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.

 

 

a) The goods

 

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

 

Class 25: Clothing; footwear; hats; socks; children's wear.

Class 35: Retail sale of the following goods: clothing, headwear, footwear, bags, wallets and handkerchiefs, socks and underwear; retail sale of the following goods on the internet: clothing, headwear, footwear, bags, wallets and handkerchiefs, socks and underwear.

The contested goods are the following:

 

Class 24: Textile goods, and substitutes for textile goods; fabrics; filtering materials of textile; lingerie fabric; lingerie fabric; lingerie fabric; lingerie fabric; quilts; comforters; bed covers of terry cloth; bed covers of paper; curtains; curtains made of textile fabrics; curtains for showers; curtains for showers; curtain linings; pelmets; duvets; comforters; duvet covers; cloth.

Class 25: Underwear; shirts and slips; headgear; headgear; cap peaks; footwear; clothing.

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 24

The opponent’s services consist, inter alia, of retail sale of the following goods: handkerchiefs; retail sale of the following goods on the internet: handkerchiefs. Handkerchief is ‘a small square of soft absorbent material, such as linen, silk, or soft paper, carried and used to wipe the nose, etc’ (information extracted from Collins Dictionary on 24/09/2020 at https://www.collinsdictionary.com/dictionary/english/handkerchief) and is included in the broader category of textile goods. Moreover, it is not excluded that fabrics and cloth, which are normally raw materials, to be used to make the handkerchiefs. As far the filtering materials of textile, these could be used for the same purpose as the handkerchiefs, namely to block the dust for example.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the natures, purposes and methods of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested textile goods are similar to the opponent’s retail sale of the following goods: handkerchiefs; retail sale of the following goods on the internet: handkerchiefs in Class 35.

Moreover, there is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores. Furthermore, they are directed at the same consumers. Therefore, the contested fabrics; filtering materials of textile; cloth are similar to a low degree to the opponent’s retail sale of the following goods: handkerchiefs; retail sale of the following goods on the internet: handkerchiefs in Class 35.

The same does not apply to the contested substitutes for textile goods; lingerie fabric [listed four times]; quilts; comforters; bed covers of terry cloth; bed covers of paper; curtains; curtains made of textile fabrics; curtains for showers (listed twice); curtain linings; pelmets; duvets; comforters; duvet covers, which are household textiles and covers. As it is explained above, similarity between retail services of specific goods and other goods which are similar to a low degree can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are directed at the same consumers. Here these conditions are not fulfilled, since the goods concerned are not sold in the same specialist shops, or the same sections of department stores. Admittedly, like most goods, they can now be found in large retail stores. However, in such outlets the goods at issue are sold in specialist departments which, even though they may be close, are nonetheless separate. In such circumstances, the distribution channels of the goods and services cannot be considered to be the same (04/12/2019, T‑524/18, Billa / BILLABONG et al., EU:T:2019:838, § 51).

Therefore, the contested substitutes for textile goods; lingerie fabric [listed four times]; quilts; comforters; bed covers of terry cloth; bed covers of paper; curtains; curtains made of textile fabrics; curtains for showers (listed twice); curtain linings; pelmets; duvets; comforters; duvet covers and the opponent’s retail sale of the following goods: handkerchiefs; retail sale of the following goods on the internet: handkerchiefs are dissimilar to the opponent’s opponent’s retail sale of the following goods: handkerchiefs; retail sale of the following goods on the internet: handkerchiefs in Class 35. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs and purposes. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary.

 

Moreover, the contested substitutes for textile goods; lingerie fabric [listed four times]; quilts; comforters; bed covers of terry cloth; bed covers of paper; curtains; curtains made of textile fabrics; curtains for showers (listed twice); curtain linings; pelmets; duvets; comforters; duvet covers are dissimilar to the opponent’s clothing; footwear; hats; socks; children's wear in Class 25 and to rest the retail services in Class 35. They are directed at other consumers, are neither complementary nor in competition with the opponent’s goods and services and neither share distribution channels, method of use or purpose.

 

The main point of contact between the contested goods mentioned in the paragraph above in Class 24 and the opponent’s clothing, footwear and hats in Class 25 is that they are made of textile and fabric material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing, footwear and hats are meant to be worn by people, for protection and/or fashion, whereas substitutes for textile goods; lingerie fabric [listed four times]; quilts; comforters; bed covers of terry cloth; bed covers of paper; curtains; curtains made of textile fabrics; curtains for showers; curtains for showers; curtain linings; pelmets; duvets; comforters; duvet covers are mainly for household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking.

Contested goods in Class 25

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

The contested underwear; shirts and slips are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested headgear includes, as broader categories, or overlap with, the opponent’s hats. 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 cap peaks are parts of headgear which are used during the manufacturing process of these goods. Therefore, these contested goods and the opponent’s ones (in Class 25) being finished products have different natures, manufacturers, distribution channels and customers, and they are neither complementary nor in competition. Consequently, these contested cap peaks are dissimilar to the opponent’s goods; the same applies to the opponent’s services in Class 35.

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 to varying degrees are directed at the public at large. The degree of attention is average.

c) The signs

 

AIM By Mia	AIMMIA
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both signs are word marks, where the earlier mark is depicted in a combination of lower case and capital letters and the contested sign in capital letters. Nevertheless, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess. Therefore, it is irrelevant whether the signs are depicted in upper- or lower-case letters or in a combination thereof (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43).

The elements ‘AIM’, ‘BY’ and ‘MIA’ of the earlier mark and the contested sign ‘AIMMIA’ are meaningless in certain territories, for example in those countries where French and Hungarian are understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French- and Hungarian-speaking parts of the public.

None of the marks have any meaning for the relevant public and are, therefore, distinctive.

 

Visually and aurally, the signs coincide in the letters ‘AIM(**)MIA’, composing entirely the contested sign and the initial and final elements of the three verbal elements of the earlier mark. 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. However, they differ in the middle verbal element ‘By’ of the earlier mark. The signs also differ in their structures: the earlier mark is composed of three words and the contested sign of one word.

 

Therefore, the signs are visually and 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 and services 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).

The goods are partly identical, partly similar to varying degrees and partly dissimilar and target the general public, who possesses an average degree of attention. The distinctiveness of the earlier mark must be seen as normal. 

The signs are visually and aurally similar to an average degree, due to the common letters ‘AIM’, placed at the beginning of the signs where the consumers pay more attention and ‘MIA’, placed at the end of the signs. However, they differ in the middle verbal element ‘BY’ of the earlier mark and the structure of the signs. The conceptual aspect does not influence the assessment of the similarity of the signs.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings. Indeed, 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).

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French- and Hungarian-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.  As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar, even to a low degree, to the goods and services of the earlier trade mark.

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). In the present case, the average visual and aural similarity offset the low similarity between some of the contested goods and the opponent’s services.

 

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.

 

 

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

 

 

Sylvie ALBRECHT

Francesca DRAGOSTIN

Rosario GURRIERI

 

 

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.