OPPOSITION Nо B 3 097 269

DK Company Vejle A/S, Edisonvej 4, 7100 Vejle, Denmark (opponent), represented by Patrade A/S, Ceresbyen 75, 8000 Aarhus C, Denmark (professional representative)

a g a i n s t

Ce Lin, No. 22, Fanhua West Road, Li'ao Town, Ouhai District, Null Wenzhou, Zhejiang, People’s Republic of China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª Planta, 28050 Madrid, Spain (professional representative).

On 12/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 097 269 is partially upheld, namely for the following contested goods:

Class 18: Leather, unworked or semi-worked; bags; pocket wallets; vanity cases, not fitted; leather trimmings for furniture; rucksacks; travelling trunks; umbrellas; moleskin [imitation of leather]; bags for sports; bags [envelopes, pouches] of leather, for packaging; handbags; travelling bags; travelling sets [leatherware]; leather laces; haversacks; shoulder belts [straps] of leather.

Class 25: Belts [clothing]; underwear; brassieres; layettes [clothing]; children's clothing; bathing suits; raincoats; dance clothing; hats; hosiery; gloves [clothing]; turbans; shower caps; sleep masks; scarves; masquerade costumes; leather shoes; bibs, not of paper; clothing; shoes.

2. European Union trade mark application No 18 078 206 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 some of the goods of European Union trade mark application No 18 078 206 (figurative mark), namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 16 009 301 ‘B.YOUNG’ (word mark) and European Union trade mark registration No 1 260 553 ‘B-YOUNG’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

However, in its observations of 30/09/2020, the opponent withdrew the European Union trade mark registration No 1 260 553 as a basis of the opposition after a proof of use request.

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 and services

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

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas.

Class 25: Clothing, footwear, headgear.

Class 35: Retail store services in the field of clothing, footwear, headgear, bags and purses.

The contested goods are the following:

Class 18: Leather, unworked or semi-worked; bags; pocket wallets; vanity cases, not fitted; leather trimmings for furniture; rucksacks; travelling trunks; umbrellas; mountaineering sticks; clothing for pets; moleskin [imitation of leather]; bags for sports; bags [envelopes, pouches] of leather, for packaging; handbags; travelling bags; travelling sets [leatherware]; canes; leather laces; haversacks; shoulder belts [straps] of leather.

Class 25: Belts [clothing]; underwear; brassieres; layettes [clothing]; children's clothing; bathing suits; raincoats; dance clothing; hats; hosiery; gloves [clothing]; turbans; shower caps; sleep masks; scarves; masquerade costumes; leather shoes; bibs, not of paper; clothing; shoes.

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 18

The contested umbrellas; travelling bags are identically contained in both lists of goods.

The contested leather, unworked or semi-worked falls into the broad category of the opponent’s leather in Class 18 and is, therefore, considered identical.

The contested moleskin [imitation of leather] falls into the broad category of the opponent’s imitations of leather in Class 18 and is, therefore, considered identical.

The contested bags include, as a broad category, the opponent´s travelling bags in Class 18. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested travelling trunks fall into the broad category of the opponent´s trunks in the same class. Therefore, they are considered identical.

The contested travelling sets [leatherware] consist of a group of, inter alia, bags, trunks or other types of containers that are part of the same set (i.e. matching colour, materials, shape or other characteristics) and are aimed at containing/carrying things from one place to another during travel. Therefore, these contested goods include, as a broad category, the opponent´s travelling bags in the same class and are considered identical.

The contested leather trimmings for furniture; leather laces; shoulder belts [straps] of leather consist of bands of leather which are used in the manufacture of leather goods like the opponent’s leather. These goods have the same purpose and nature, the same commercial origin (the leather processing industry which provides both the raw material and the semi-finished goods of leather) and the same distribution channels. They also target the same public. Therefore, they are similar.

The contested pocket wallets; vanity cases, not fitted; rucksacks; bags for sports; handbags; haversacks are at least similar to the opponent’s trunks and/or travelling bags as they have the same purpose, namely to store and carry objects of various natures. They can coincide in producer, relevant public and distribution channels.

The contested bags [envelopes, pouches] of leather, for packaging are small leather containers in which small objects are placed to be protected or stored with the additional purpose of being transported. These can be, for instance, part of travelling sets, which include different kinds of goods that share one common purpose and match in colour and/or materials (e.g. leather). Therefore, they are considered similar to the opponent’s trunks and travelling bags since they can be manufactured by the same producers and can target the same public. Furthermore, they have the same distribution channels.

The contested mountaineering sticks; canes are used as aids for walking and have nothing in common with the opponent's goods in Class 18 (leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas) and Class 25 (clothing, footwear, headgear). They have different purposes, distribution channels, are directed at different consumers and do not usually originate from the same producers. Furthermore, they are neither in competition nor complementary. They also have no commonalities with the opponent’s services in Class 35 (retail store services in the field of clothing, footwear, headgear, bags and purses). They clearly differ in nature, since goods are tangible while services are intangible. The goods and services serve different needs, have different purposes and methods of use and do not share the same distribution channels. They are neither complementary nor in competition. They do not target the same consumers. Moreover, they are not likely to come from the same kind of undertakings. For these reasons, they are considered dissimilar.

The contested clothing for pets is meant to cover/protect the pets’ bodies, is sold in specialised shops or in specific areas of department stores and is directed at pet owners. These goods have nothing in common with the opponent's goods in Classes 18, 25 and 35, listed above, since they differ in nature, purpose, method of use, distribution channels and providers. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

The contested belts [clothing]; underwear; brassieres; layettes [clothing]; children's clothing; bathing suits; raincoats; dance clothing; hosiery; gloves [clothing]; scarves; masquerade costumes; bibs, not of paper are included in the broad category of the opponent's clothing. Therefore, they are identical.

The contested hats; turbans; shower caps are included in the broad category of opponent's headgear. Therefore, they are identical.

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

The sleep masks are similar to a low degree to the contested clothing as they usually coincide in producer and distribution channels.

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 and in part also at professionals, since some of the goods in Class 18 (e.g. the raw materials leather, unworked or semi-worked; moleskin [imitation of leather]) can be for professional use (e.g. for the manufacture of other goods) and may require specific professional knowledge or expertise.

The degree of attention is considered to be average.

c) The signs

B.YOUNG
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.

The verbal elements of the signs are meaningful in certain territories. For example, the English-speaking part of the public will mentally dissect the verbal element ‘BEYOUNG’ in the contested sign into the elements ‘BE’ and ‘YOUNG’, and is likely to see the first element ‘B.’ in the earlier mark as a voluntary misspelling of the verb ‘to be’ (‘BE’). For this part of the public, the signs could be considered somehow weak as they could be perceived as referring to the public they target, namely the younger people, or as being evocative of the goods’ style (e.g. modern).

However, for a significant part of the public, the signs are perceived as meaningless, for example for Spanish-speaking consumers. For this reason, both signs are invented words of average distinctiveness for them. Consequently, the Opposition Division considers it appropriate to focus the comparison of the signs on this part of the public, since it is considered the scenario in which likelihood of confusion is more likely to occur.

The dot separating the verbal components ‘B’ and ‘YOUNG’ in the earlier mark is only a punctuation mark and will not be attributed any particular trade mark significance by the relevant consumers. In fact, it is unlikely that the relevant public will perceive the earlier mark ‘B.YOUNG’ as an initial accompanied by a surname due to the dot, since ‘YOUNG’ is not considered to be a family name.

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 the present case, the figurative elements and aspects of the contested sign (i.e. the slightly stylised font with a barely perceptible branch crossing the letter ‘O’) have a reduced impact in the overall impression of the signs. This is due to the fact that the letters are only slightly stylised, are very close to regular upper-case letters and due to the branch’s very small size within the letter ‘O’, which leaves it clearly in a secondary position.

Therefore, it can be concluded that the contested sign is formed by the dominant word ‘BEYOUNG’ and by a figurative element (i.e. the branch within the letter ‘O’), which has a lesser visual impact due to its much smaller size.

Visually, the signs coincide in the string of letters ‘B*YOUNG’, which are all the letters of the earlier mark and all but one of the letters of the contested sign.

However, they differ in the dot after the first letter of the earlier mark and in the additional second letter ‘E’ of contested sign. The signs further differ in the figurative elements and aspects of the contested sign, which have no counterpart in the earlier mark.

Therefore, and taking into account that the signs coincide in almost the entirety of the letters forming them and the conclusions on the distinctiveness and the impact of the elements, the signs are visually highly similar.

Aurally, the letter ‘B.’ (with the dot) in the earlier mark is a single letter and will be pronounced by the Spanish consumers by spelling it, namely as ‘/bé/’. This is exactly the same pronunciation that Spanish consumers will use for the combination of letters ‘BE’ of the contested mark. Therefore, the Spanish consumers will pronounce ‘B.YOUNG” and ‘BEYOUNG’ identically, since the differences in spelling between the marks (the additional letter ‘E’ of the contested sign and the dot of the earlier mark) will not have an impact on the aural aspect.

The applicant argued that ‘the marks sound to the ear completely different’ and referred to a previous decision (27/06/2006, B 731 853, TANA/TANIT) to support its arguments. However, that case is not relevant to the present proceedings. The signs are not comparable to the ones in the present case, since the signs only coincided in the first syllable in the mentioned case.

Therefore, despite the applicant’s opinion, the signs are aurally identical.

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.

In its observations, the applicant argued that ‘the marks are dissimilar from a conceptual standpoint’ and referred to previous decisions of the Board of Appeal to support its arguments. However, the cases cited (11/09/2007, R 1595/2006‑2, MIMS/MIMO et al.; 20/10/2009, R 692/2009‑2, amival (FIG. MARK) / anibal (FIG. MARK)) are not relevant to the present proceedings because the signs at issue in those cases are not comparable to the present ones. In both those cases, one of the signs under comparison has a meaning. In the first case, ‘MIMO’ is the Spanish term for ‘care, delicacy’ and in the second case, ‘ANIBAL’ (the Spanish for Hannibal) refers to a well-known ancient warrior. Therefore, the applicant’s arguments cannot succeed.

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

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 and services are partly identical, partly similar to varying degrees and partly dissimilar. They target the public at large and professionals with an average degree of attention.

The signs are visually highly similar, aurally identical and the conceptual aspect does not influence the assessment of the similarity of the signs. The earlier mark enjoys a normal degree of distinctiveness.

The letters of the earlier mark are fully reproduced in the contested sign. The only differences between the signs are confined to the additional dot in the earlier mark and the second letter ‘E’ in the contested sign (both of them with no aural impact, as explained). At a visual level, the marks also differ in the figurative elements and aspects of the contested sign, which only have a limited impact, for the reasons explained above.

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 present case, the similarities between the signs are overwhelming and lead consumers to confusion as regards the commercial origin of the relevant goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part 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 to varying degrees to those of the earlier trade mark.

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

María del Carmen SUCH SÁNCHEZ

Sofía SACRISTÁN MARTÍNEZ

Manuela RUSEVA

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.