OPPOSITION Nо B 3 105 399

Tod’s S.P.A., Via Filippo Della Valle, 1, 63811 Sant’Elpidio a Mare (FM), Italy (opponent), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative)

a g a i n s t

Wei Jia Shan, No. 3 Jiayuan, No. 4 Road Futian District, Shenzhen City, 518000 Guangdong Province, People’s Republic of China (applicant), represented by Franco Martegani S.R.L., Via Carlo Alberto, 41, 20900 Monza (MB), Italy (professional representative).

On 16/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 399 is upheld for all the contested goods.

2. European Union trade mark application No 18 105 724 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 of European Union trade mark application No 18 105 724 ‘FAYNAY’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 10 158 996 for the word mark ‘FAY’. 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.

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 EUTM No 10 158 996.

a) The goods

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

Class 25: Coats of leather, jackets of leather, trousers of leather, skirts of leather, tops of leather, waterproof clothing of leather, long coats of leather, overcoats of leather, belts of leather, shoulder belts for clothing of leather, belts, clothing, stuff jackets, jackets, greatcoats, jumpers, trousers, jeans, skirts, dresses, coats, overcoats, cloaks, parkas, jerseys of wool, shirts, tee-shirts, blouses, cardigans, underwear, nightdresses, bath robes, bathing suits, negligees, bathing suits, dressing gowns, eveningwear, one-piece clothing, two-piece clothing, evening gowns, shawls, sashes for wear, neckties, bow ties, clothing for men, clothing for women, shirts, Hawaiian shirts, sweatshirts, underwear, polo shirts, bodysuits, blazers, shorts, sport shirts; shoes, athletic shoes, slippers, shoe covers, low shoes, shoes of leather, shoes of rubber, galoshes, golf shoes, clogs, fishing shoes, basketball shoes, dress shoes, heels, hiking boots, rugby boots, boxing shoes, baseball shoes, patent shoes, beach shoes, inner soles, soles for footwear, footwear uppers, heels for shoes and boots, non-slipping devices for shoes and boots, tips for footwear, rain shoes, running shoes, work shoes, shoes of straw, gymnastics shoes, boots, ski boots, half-boots, après ski boots, football boots, lace boots, hockey shoes, handball shoes, esparto shoes or sandals, sandals, bath sandals; gloves, gloves for protection against the cold, gloves of leather, mittens; hats and caps, visors (headgear), hats and caps of leather.

The contested goods are the following:

Class 25: Clothing; underclothing; babies’ pants [underwear]; shoes; hats; hosiery; gloves [clothing]; girdles; shower caps; sleep masks; wedding dresses; swimsuits; raincoat; scarfs; pyjamas; skirts; shawls.

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.

Clothing; shoes; hats; gloves [clothing]; skirts; shawls are identically contained in both lists of goods (including synonyms).

The contested underclothing; babies’ pants [underwear]; hosiery; girdles; wedding dresses; swimsuits; raincoat; scarfs; pyjamas are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested shower caps are similar to a low degree to the opponent’s visors (headgear). Both are used for covering and protecting the head and therefore serve the same purpose. In addition, they target the same public.

The contested sleep masks are similar to a low degree to the opponent’s clothing. These goods have the same nature and purpose (covering parts of the body to protect them from external effects), the same distribution channels (e.g. sleep masks sold in nightwear sections of shops) and the same consumers.

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 low degree are directed at the public at large. The degree of attention is average.

c) The signs

FAY	FAYNAY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public as they are likely to split the contested sign into the elements ‘FAY’ and ‘NAY’, as suggested by the opponent. This is because consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). The applicant has not argued the contrary.

The shared verbal element ‘FAY’ means, inter alia, ‘a fairy or sprite’ in English (information extracted from Collins English Dictionary on 14/12/2020 at www.collinsdictionary.com/dictionary/english/fay). It is also a rare Irish surname and therefore at least part of the English-speaking public, for example in Ireland, may perceive this element as a surname in both marks.

The word ‘NAY’ is used ‘in front of a stronger word or phrase which you feel is more correct than the one you have just used and helps to emphasise the point you are making’. (information extracted from Collins English Dictionary on 14/12/2020 at https://www.collinsdictionary.com/dictionary/english/nay). However, ‘FAYNAY’ as a whole has no meaning.

These words have no meaning in relation to the goods concerned and are, therefore, distinctive.

Visually and aurally, the signs coincide in their verbal elements ‘FAY’. They differ in the additional component ‘NAY’ at the end of the contested sign.

Furthermore, the coinciding elements constitute the entire verbal element of the earlier mark and the initial part of the contested sign. Consumers generally tend to focus on the beginning of the signs 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.

In addition, the fact that the verbal element of the earlier mark is entirely contained in the contested sign constitutes an indication of visual and aural similarity between the signs (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 40; 21/03/2011, T‑372/09, Gold Meister, EU:T:2011:97, § 2.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning as they both contain the element ‘FAY’ and differ in ‘NAY’. Therefore, the signs are at least conceptually similar to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16).

As explained above, the contested goods in this case are identical and similar to varying degrees and the level of attention of the relevant public will be average. The signs are similar to an average degree in all three aspects (visually, aurally and conceptually) and the earlier mark is distinctive to a normal degree.

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 covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Indeed, the contested sign reproduces the verbal element of the earlier mark in its entirety and simply adds the word ‘NAY’ to it.

Therefore, the differences between the conflicting signs are not sufficient to counteract their similarities.

Taking into account the interdependence principle between the relevant factors, the average degree of similarity of the conflicting signs, the normal degree of inherent distinctiveness of the earlier trade mark, and that the verbal element of the earlier mark is identical to the beginning of contested sign, a likelihood of confusion on the part of the relevant general public exists within the meaning of Article 8(1)(b) EUTMR.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 158 996. It follows that the contested trade mark must be rejected for all the contested goods. Furthermore, this conclusion also applies to the contested goods that have been found similar to a low degree. This is because the similarity between the signs is sufficient to also lead to a likelihood of confusion in relation to these goods.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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, they 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

Astrid Victoria WÄBER

Gonzalo BILBAO TEJADA

Erkki MÜNTER

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.