OPPOSITION Nо B 3 104 162

C&A AG., c/o Cofra Holding AG, Grafenauweg 10, 6300 Zug, Switzerland (opponent), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Weiyue Technology Co., Ltd., Room 809, Huashenghui Comprehensive Building No. 15, Jinhai Road, Xixiang Street, Bao’an District, 518000 Shenzhen, People’s Republic of China (applicant), represented by Franco Martegani S.R.L., Via Carlo Alberto, 41, 20900 Monza, Italy (professional representative).

On 03/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 104 162 is upheld for all the contested goods.

2. European Union trade mark application No 18 112 903 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 18 112 903 ‘ZESICA’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 106 534, ‘YESSICA’ (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.

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 106 534.

a) The goods

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Coats; clothing; dresses; gloves [clothing]; hats; leg warmers; overcoats; pants (Am.); shirts; socks; jumpers [pullovers]; bathing suits; tee-shirts.

Clothing is identically contained in both lists of goods.

The contested coats; dresses; gloves [clothing]; leg warmers; overcoats; pants (Am.); shirts; socks; jumpers [pullovers]; bathing suits; tee-shirts are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested hats are included in the broad category of the opponent’s headgear. 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 average. Even though the goods at issue are regularly purchased, these are, as a rule not every-day consumer goods, the purchase of which would require a lower degree of attention.

c) The distinctiveness of the earlier mark and the comparison of signs

YESSICA	ZESICA
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 contested mark is the verbal element ‘ZESICA’. The opponent stated that this verbal element would be associated with a female name. However, in the absence of any evidence to support such a claim and taking into account that this verbal element cannot be considered a female name known to the relevant public, it lacks any meaning for the relevant public and is, therefore, distinctive for the goods at issue.

The earlier mark is the verbal element ‘YESSICA’, which is meaningless for part of the relevant public. However, as the opponent claimed, ‘YESSICA’ is a variant of the female first name of Hebrew origin, ‘JESSICA’, known in countries such as Denmark, Germany and Spain. Therefore, it will be seen as a female given name by part of the public. Given that this element in no way describes or alludes to the nature of the goods, it is considered distinctive.

Taking into account that the earlier mark merely one element, the Opposition Division finds it appropriate to examine its distinctive character within the comparison of signs, given that 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 explained above, has no meaning directly related to any of the goods in question from the perspective of the relevant public and, therefore, the distinctiveness of the earlier mark must be seen as normal.

Visually, the signs coincide in the letters ‘*ES*ICA’, written in the same order in both signs. They differ in their first letters, ‘Y’ in the earlier mark v ‘Z’ in the contested mark, and in the additional fourth letter ‘S’ of the earlier mark, which has no counterpart in the contested mark. Furthermore, the marks have a similar length (six v seven letters).

Therefore, because of the coincidence in most of the letters of the signs in the same order, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘ESICA’ as the double ‘S’ in the earlier mark will likely be pronounced the same way as the single letter ‘S’ in the contested mark. The signs only differ in the pronunciation of their first letters (‘Y’ v ‘Z’).

Therefore, taking into account that the signs only differ in their first sound, while the rest of their letters are identically pronounced, they are considered aurally highly similar.

Conceptually, although part of the public in the relevant territory will perceive the earlier mark as a female first name as explained above, the contested mark has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for part of the public. For another part of the public, neither sign will evoke any concept and a conceptual comparison is not possible.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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 are identical. They target the public at large who will pay an average degree of attention. The signs are visually similar to an average degree, aurally highly similar and conceptually not similar for part of the public, while a conceptual comparison is not possible for another part. Furthermore, the earlier mark has a normal degree of distinctiveness.

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).

Bearing in mind the consumer’s imperfect recollection and the fact that the visual differences between the marks is limited solely to two of their letters, whereas the aural difference is confined to the sound of their first letters, it is considered that those differences may be overlooked by the relevant public and are not sufficient to outweigh the similarities between them. This holds true even for the part of the public for whom the signs would not be conceptually similar in particular in result of the similarities of the signs overall.

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 European Union trade mark registration No 106 534. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 106 534 ‘YESSICA’ 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU: T:2004:268).

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

Claudia SCHLIE

Maria Victoria DAFAUCE MENENDEZ

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.