OPPOSITION Nо B 3 103 035

 

Jiaqi Ma, Avda. Sant Esteve 16, 3º A, 08402 Granollers (Barcelona), Spain (opponent), represented by Intelect Legal Services, Diputació, 304, 1º 4ª, 08009 Barcelona, Spain (professional representative) 

 

a g a i n s t

 

Flr Shoes Ltd, 117 Hashmonaim St., 6713326 Tel Aviv, Israel (applicant), represented by Office Kirkpatrick N.V./S.A., Avenue Wolferslaan, 32, 1310 La Hulpe - Terhulpen, Belgium (professional representative).

On 24/09/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 103 035 is upheld for all the contested goods, namely: Class 25: Clothing; Footwear; Headgear.
2.		European Union trade mark application No 18 099 718 is rejected for all the contested goods. It may proceed for the remaining goods.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 099 718  (figurative mark), namely against all the goods in Class 25. The opposition is based on EUTM registration (EU) No 18 065 613, ’FLR’ (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: Headgear; footwear; clothing.

The contested goods are the following:

 Class 25: Clothing; footwear; headgear.

Headgear; footwear; clothing are identically contained in both lists of goods.

b) The signs

 

FLR
Earlier trade mark	Contested sign

 

 

The relevant territory is the EU.

 

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 earlier mark is the word mark ‘FLR’, whereas the contested sign is the figurative mark ‘FLR’, written in a slightly stylized typeface and the middle letter ’L’ is inserted in a square frame.

The signs fully coincide in their verbal elements ‘FLR’ which are meaningless and, therefore, distinctive. Nonetheless, even though these word elements would have a meaning and whether descriptive or not, this would be immaterial in the present case. In this respect, the degree of distinctiveness of these verbal elements is irrelevant, as they are the same in both marks and the signs only differ in the slightly stylised typeface of the contested sign, which will not detract the consumers’ attention away from the verbal element as such. Furthermore, the marks differ in the square frame of the contested sign, however, this element merely serves a decorative purpose with a very limited impact.

It follows that the signs are visually and conceptually quasi-identical. They are aurally identical.

 

c) Global assessment, other arguments and conclusion

 

A likelihood of confusion (including a likelihood of association) 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.

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

It has been established in the previous sections of this decision that the goods at issue have been found identical.

The signs are visually and conceptually quasi-identical. Aurally, identical. This (near) identity between the signs implies that consumers will not be able to distinguish between them. This conclusion would hold true even if the distinctiveness of the coinciding elements ‘FLR’ was very low and irrespective of the degree of attention paid by the relevant public at the time of purchasing the goods concerned. The earlier mark has inherently a normal degree of distinctiveness.

Taking into account all relevant factors, it is considered that the relevant public might be led to believe that the relevant goods come from the same undertaking or economically linked undertakings.

Considering all the above, 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 EUTM registration (EU) No 18 065 613 ’FLR (word mark). It follows that the contested trade mark must be rejected for all the contested goods.

 

 

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

 

 

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

Marzena MACIAK

 

 

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.