OPPOSITION No B 3 097 553

Beijing Xiaoxiyang Technology Development Co., Ltd., Rm.142,1F, Bldg.24, No.72 Qinghe 3rd St., Haidian Dist., Beijing, People’s Republic of China (opponent), represented by Ingenias, Av. Diagonal 514 – 1º, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Dongguan Breathwalker Shoes Co. Ltd., Room 1401, No.45 Houjie Avenue East, Houjie Town, Dongguan, Guangdong, People’s Republic of China (applicant), represented by Isern Patentes y Marcas S.L., Avenida Diagonal 463 bis 2° piso, 08036 Barcelona, Spain (professional representative).

On 08/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 097 553 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 18 085 113 for the figurative mark . The opposition is based on European Union trade mark registration No 16 444 937 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.

a) The goods

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

Class 25: Clothing; ready-made clothing; underwear; suits; inner soles; shoes; hats; hosiery; gloves [clothing]; girdles.

The contested goods are the following:

Class 25: Outerclothing; underwear; sandals; shoes; sports shoes; insoles; hats; hosiery; scarves; leather belts [clothing].

Underwear; inner soles; shoes; hats are identically contained in both lists of goods (including synonyms).

The contested outerclothing; hosiery; scarves; leather belts [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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

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

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 ‘zulijian’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive. Under this verbal element there is an inscription in Asiatic characters.

The contested sign consists only of Asiatic characters.

In both signs, the Asiatic characters, will be neither read nor therefore pronounced and remembered by the European public in general (22/03/2011, R 1718/2008-1, LINGLONG / LL (fig.) et al., § 25, 01/11/2010, R 144/2010-2, KUNGFU (fig.) / (fig.) et al., § 48 and the case-law cited in paragraph 28). Since the relevant public will not be able to verbalise the Asiatic characters, they will be rather perceived as figurative devices with normal degree of distinctiveness.

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). To this extent, considering also its position within the earlier mark (in the upper part), the verbal element ‘zulijian’ is the more influential one in the earlier mark and will carry more weight in the comparison of the signs.

It is, however noted that the earlier mark does not have elements that are clearly more dominant than other ones.

The main argument of the opponent for a visual similarity between the signs is that the contested sign include two of the three Chinese characters of the earlier mark, namely the first and the last one and this in the same order.

The Opposition Division recalls that the average European consumer neither speak the Chinese language nor have the ability to read the respective alphabet and will perceive the three characters of the earlier mark and the contested sign merely as characters from an Asian alphabet, illegible and incomprehensible (04/09/2017, R 1780/2016-5, DEVICE OF CHINESE CHARACTERS (fig.) § 39 and the cited case law).

Even if the elements in question (the first one and the last one) represent some visual commonalities, it is rather unrealistic to assume that this will readily be noticed by the average consumer without a meticulous examination of the signs side by side. It has to be borne also in mind that consumers usually perceive a mark as a whole and do not proceed to analyse its various details (judgment of 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). The characters in question are visually quite difficult to be memorized since they are composed of more than 10 intersecting lines, some of which are curved and some straight, which constitute a relatively complex figurative pattern. To this extent, the said characters will be perceived as an abstract combination of lines and shapes.

However, as similarity between these characters is the only possible scenario for any visual similarity, the present assessment will be carried out from the perspective of those consumers, who, upon significant mental effort and close inspection of the signs, would visually find the first and the last Asian characters of the signs similar.

Considering, the impact and weight of each of the elements addressed above, it must be concluded, contrary to the opponent’s opinion, that in this case there is a very low degree of visual similarity between the signs, owing to the presence of some commonalities between the first and the last Asiatic characters of the signs discoverable only upon detailed examination. However, the rest of the elements (the verbal element written in Latin characters in the earlier mark, the font of the Asian characters and their second characters) are clearly dissimilar. In addition, the signs present different compositions. While the earlier one consists of two independent elements, placed over two lines, the contested sign consists of one element only.

The two decisions referred to by the opponent are not relevant since in those proceedings the signs under comparison contained indeed clearly recognisable figurative images stylised in a similar way (fighting man in case R 144/2010-2 and a deer in cases T-81/03, T-82/03 and T-103/0). However, the Asian characters in the case at hand will be perceived as abstract figurative elements.

Aurally, the earlier mark will be referred to as ‘zulijian’. On the other hand, the relevant public will not be able to read and pronounce the contested sign in any specific manner. To this extent, the signs are aurally not similar.

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 are identical. They target the public at large with an average degree of attention.

The earlier mark is of a normal distinctiveness.

As explained in detail in section c) above, the comparison of the signs has only revealed a very low degree of the visual similarity and this on account of possible similarities between some of the Asian characters of the signs discoverable only upon side by side inspection of the signs. The signs are aurally not similar and the conceptual comparison could not be carried out.

However, this remote visual coincidence is not sufficient to lead to a likelihood of confusion since the consumers rarely have the chance to make a direct comparison between different marks (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). So, the fact that some elements would be recognised only with the help of the other mark is of little relevance, if any. The differentiating elements of the signs, (particularly ‘zulijian’ of the earlier mark) are clearly perceptible and undoubtedly outweigh and counteract any possible coincidences in some of the Asian characters. In fact, the element ‘zulijian’ of the earlier mark is the only one written in Latin characters and will primarily focus and retain the consumers’ attention and function as the main indicator of commercial origin in the earlier mark. On the other hand, since the Asian characters have no identifiable concept, it would be difficult to describe their appearance and to refer to them.

To this extent, any likelihood of confusion on the part of the public can safely be excluded, even taking into account that the goods are identical and the degree of attention is average.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

Sofia SACRISTAN MARTINEZ

Meglena BENOVA

Valeria ANCHINI

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.