OPPOSITION No B 3 091 770

CJ Corporation, 12, Sowol-ro 2-gil, Jung-gu, Seoul, Republic of Korea (opponent), represented by Maucher Jenkins, Liebigstr. 39, 80538 München, Germany (professional representative)

a g a i n s t

CJ London ApS, Skovvej 81, 2920 Charlottenlund, Denmark (applicant), represented by Lisbet Andersen, c/o Aumento Law Firm, Ny Østergade 3, 1101 København K, Denmark (professional representative).

On 28/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 770 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 042 801 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 and services of European Union trade mark application No 18 042 801 for the word mark ‘CJ LONDON’. The opposition is based on, inter alia, European Union trade mark registration No 17 923 534 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR. Initially the opponent also invoked Article 8(4) and Article 8(5) EUTMR, however, in its observations submitted on 31/12/2019, it stated that it had chosen not to substantiate these grounds as a basis for the opposition.

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 17 923 534 because it has broader protection.

a) The goods and services

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

Class 18: Cosmetic cases sold empty; clothing for pets; leather; imitation leather; bags; purses; boxes made of leather; canes; leather straps; labels of leather; Industrial packaging containers of leather; ruck sacks; straps for skates; umbrellas; parasols; walking sticks; reins for guiding children; leads for animals; bags [envelopes, pouches] of leather, for packaging; coverings (furniture -) of leather; feed bags for animals; valves of leather; saddlery.

Class 25: Clothing; footwear; sports wear; headgear for wear; uniforms; overcoats; Korean topcoats [Durumagi]; Korean traditional women's waistcoats [Baeja]; basic upper garment of Korean traditional clothes [Jeogori]; Korean outer jackets worn over basic garment [Magoja]; under garments; socks; knit face masks; belts [clothing]; waterproof clothing; aprons [clothing]; money belts [clothing]; golf clothing, other than gloves; fishing clothing; anoraks; leotards; tights; panties; shorts; briefs; hosiery; gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices.

Class 35: Retail store services relating to leather, pulp, bags, footwear, watches; retail store services relating to sporting articles, games and playthings, fishing tackle, clothing, jewelry, headgear for wear, sericultural machines, chemical fibers for textile use, yarn and thread for textile purposes, fabric; retail convenience stores in relation to gemstones, clothing, sporting goods, headgear, footwear, jewelry; Provision of an online marketplace for buyers and sellers of goods and services.

The contested goods and services are the following:

Class 14: Jewelry.

Class 18: Bags.

Class 25: Clothing, shoes.

Class 26: Clothing accessories.

Class 35: Retail services, including online retail services, relating to jewelry, bags, clothing accessories, clothing and shoes.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of services in Class 35, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services in Class 35 to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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 14

The contested jewelry is similar to the opponent’s retail store services relating to jewelry in Class 35. Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

Contested goods in Class 18

Bags are identically contained in both lists of goods.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

The contested shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

Contested goods in Class 26

The contested clothing accessories, including mainly small decorative items intended to adorn a variety of objects (e.g., birds' feathers, brooches, buckles), and the opponent’s retail store services relating to yarn and thread for textile purposes are similar to at least a low degree. The opponent’s retail services relate to haberdashery used for making or repairing of textile goods or clothes. The goods at issue can be used together in the processing or making of textile goods or any types of assembled items. The contested goods and the goods object of the opponent’s retail services are all commonly offered for sale in haberdasheries or in the same sections of department stores and belong to the same market sector. They are of interest to the same consumer and may have the same commercial origin (12/12/2014, R 1701/2013-4 FAIRIFY/ FIREFLY, § 20).

Contested services in Class 35

The contested retail services, including online retail services, relating to jewelry, bags, clothing and shoes include, as a broader category,or overlap with, the opponent’s retail store services relating to bags, footwear; retail store services relating to clothing, jewelry. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested retail services, including online retail services, relating to clothing accessories and the opponent’s retail store services relating to yarn and thread for textile purposes have the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. Similarity is found between the retail services of these specific goods, since the goods are commonly retailed together in the same outlets and they are directed at the same public. Therefore, these contested services are similar.

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 and services found to be identical or similar to varying degrees are directed at the public at large and at professionals in the textile sector, as dressmakers, as regards retail store services relating to yarn and thread for textile purposes and clothing accessories in Class 26 and the related retail services .

The degree of attention with respect to most of the goods and services at issue is average, with the exception of the goods in Class 14 and the related retail store services in Class 35, since in many cases these goods will be luxury items or will be intended as gifts. Hence, a high degree of attention on the part of the consumers may be assumed with respect to these latter goods and services.

c) The signs

	CJ LONDON
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 combination of the letters ‘CJ’, that the signs have in common, will not be associated with any clear and unambiguous meaning by the relevant public, aside from the letters of the alphabet that the signs depict. It is, therefore, distinctive.

The element ‘ENM’ of the earlier mark will not be associated with any meaning. It is distinctive.

The stylisation of the verbal elements of the earlier mark is minimal since it is quite standard, and will have only a very limited impact.

The earlier mark includes the figurative element in the form of three (red, blue and orange) triangle-like shapes. It has no clear meaning for the goods at issue and is, therefore, distinctive.

However, account is taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In this particular case, even though the figurative device is normally distinctive, it has a quite abstract nature and is not capable of overshadowing the verbal part of the sign. Considering also that consumers naturally look for the ‘name’ of the product/brand, the Opposition Division is of the view that the figurative device will have lesser impact when compared to the verbal part of the sign.

The element ‘LONDON’ of the contested sign will be identified and understood by the vast majority of consumers in the EU as the name of the capital of the UK. This understanding has also been confirmed by the applicant. As a very well-known geographical reference, it possesses a weak distinctive character as it may be an indication of the geographical origin of the goods at issue, seat of the company or a particular style of the goods (21/01/2020, R 1723/2019-5, adamo LONDON (fig.) / Adamont, § 28; 19/11/2019, R 0884/2019-5, HAUZ LONDON (fig.) / Houzz et al., § 37).

The earlier mark has no element that could be considered clearly more dominant than other elements. The Opposition Division agrees with the applicant that the verbal element ‘CJ’ is not the dominant element in the earlier mark. Also, it is noted that, contrary to the applicant’s claims, even if the figurative element is striking in terms of its size and colours, it is not that particularly eye catching to dominate the impression of the sign to the detriment of the verbal elements.

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.

Visually, the signs coincide in the distinctive verbal element ‘CJ’, which constitutes the first elements in both marks. The signs differ in their second verbal elements, namely ‘ENM’ in the earlier mark and ‘LONDON’ in the contested sign. The applicant argues that this additional element in the contested sign is visually longer than the coinciding element ‘CJ’. In this respect, it is pointed out that since it has weak distinctive character, as established above, its impact is only limited. The signs also differ in the minor stylisation of the verbal elements of the earlier mark and in the distinctive figurative element, the latter however having lesser impact in the overall visual impression of the mark.

Therefore, taking into account all the above, the signs are visually similar to a below average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters ‘CJ’, present identically in the signs. The pronunciation differs in the sound of the letters ‛ENM’ of the earlier mark and ‘LONDON’ of the contested sign. Since the coinciding sounds are at the beginning of both signs and the additional sounds, although they correspond to elements of different length, as claimed by the applicant, they concern an element of reduced distinctiveness or a short three letter element, the signs are considered aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘LONDON’ of the contested sign as explained above, the earlier mark has no meaning in that territory. Since the earlier mark will not be associated with any meaning, the signs are not conceptually similar. This conceptual difference being, however, of relative importance since it derives from the presence of an element of reduced distinctiveness, as established above.

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.

While in its notice of opposition the opponent did claim that the earlier mark enjoys reputation, in its following observations it relied on the inherent distinctiveness of the sign. For the sake of completeness, it did not file any evidence to support that the earlier mark has 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

According to established case-law, the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

Further, 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 contested goods and services are partly identical and partly similar to varying degrees to the goods and services of the earlier mark. They are directed at the public at large and professionals. The public’s degree of attention is considered to vary from average to high. As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. The marks in dispute are visually similar to a below average degree, aurally similar to an average degree, while the signs are not conceptually similar.

The dissimilar elements of the signs cannot preclude the similarity between them for the reasons established above. Therefore, in an overall assessment, it is reasonable to assume that when confronted with the contested sign in relation to identical and similar to varying degrees goods and services, consumers are likely to confuse the marks and believe that these goods and services come from the same undertaking or, as the case may be, economically linked undertakings. This is in particular the case as the 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Furthermore, it is settled case-law that 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 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 and services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant refers to the judgment of 10/05/2011, T-187/10, G, EU:T:2011:202 to support its arguments. However, the cited judgment is not relevant as it must be noted that in the present case the visual similarities between the signs at issue are not such as to exclude the likelihood of confusion. As stated above, the coinciding element of the signs is clearly identifiable as a separate element in both signs. The fact that both signs include additional elements do not invalidate the impact of the element ‘CJ’, which is clearly seen and remembered as it is the first element in both signs. This coupled with weak distinctive character of the additional element of the contested sign, short second verbal element in the earlier mark and the figurative element of the earlier mark that does not dominate the impression of the sign to the detriment of its verbal elements, will lead to the likelihood of confusion between the signs.

In its observations, the applicant also argues that many trade marks include the element ‘CJ’. In support of its argument the applicant refers to the ‘Saegis’ search results concerning 98 trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘CJ’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that 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 European Union trade mark registration No 17 923 534. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right European Union trade mark registration No 17 923 534 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

For the sake of completeness, even if the submissions of the opponent dated 31/12/2019 are not considered as containing an explicit withdrawal of the opposition on the grounds of Article (8)(4) and (5) EUTMR, the opponent opted not to filed any evidence to substantiate these grounds, while according to Article 95(1) EUTMR the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought. Therefore, since the opponent has failed to prove the reputation of its mark, as well as inter alia that the sign claimed under Article 8(4) EUTMR has been used in the course of trade, the opposition on these grounds is unfounded.

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

Teodora TSENOVA- PETROVA

Marzena MACIAK

Eva Inés PÉREZ SANTONJA

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.