OPPOSITION Nо B 3 109 074

 

Cluett, Peabody & Co., Inc., 200 Madison Avenue, 10016 New York,, United States (opponent), represented by Mishcon De Reya Llp, Africa House 70 Kingsway, WC2B 6AH London, United Kingdom (professional representative) 

 

a g a i n s t

 

Hangzhou Jingchuang E-Commerce Co., Ltd., Room 617-5, Building 1, European And American Financial City, Cangqian Street, Yuhang District, Hangzhou, Zhejiang, China (applicant), represented by Al & Partners S.R.L., Via C. Colombo Ang. Via Appiani (Corte Del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 15/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 109 074 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 134 613 is rejected in its entirety.

 

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

 

REASONS

 

On 17/01/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 134 613 (figurative mark). The opposition is based on European Union trade mark registration No 17 946 108, ‘ARROW’ (word mark). The opponent invoked  Article 8(1)(b) EUTMR.

The opposition was also originally based on non-registered trademark and European Union trade mark registration No 9 097 701 ‘ARROW’ (word mark) in relation to which the opponent invoked Article 8(4) and Article 8(1)(b) EUTMR respectively. However, on 18/01/2021 the opponent withdrew these earlier rights as basis of the proceedings.

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, footwear, headgear.

The contested goods are the following:

 

Class 25: Clothing; swimsuits; shoes; theatrical costumes; caps being headwear; hosiery; gloves [clothing]; mantillas; wedding dresses; girdles.

 

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.

 

The contested clothing; swimsuits; theatrical costumes; hosiery; gloves [clothing]; mantillas; wedding dresses; girdles are identical to the opponent’s clothing either because they are identically contained in both lists or because the opponent’s goods include the contested goods.

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

The contested caps being headwear 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 to be average.

 

c) The signs

 

ARROW
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 sign’s common verbal element ‘ARROW’ convey a meaning in English. As this factor entails a conceptual similarity, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Specifically, the shared element ‘ARROW’ will be perceived as ‘a long thin weapon which is sharp and pointed at one end and which often has feathers at the other end’. This meaning is distinctive in relation to the relevant goods, since not clearly related to them.

The contested sign’s verbal element ‘JACE’ do not convey any clear meaning for the majority of the public under assessment. Therefore, it is distinctive. Conversely, the component ‘AND’ will be perceived as a conjunction linking the elements ‘JACE’ and ‘ARROW’. Although this element is as such distinctive in relation to the relevant goods, it retains a limited relevance due to its function which is subordinate to the sign’s other verbal elements.

The contested sign has no element that can be considered dominant (visually eye catching).

Visually and aurally, the signs coincide in the verbal element (and its sound) ‘ARROW’ whereas they differ in the contested sign’s additional verbal components (and sound) ‘JACE AND’. The signs also visually differ in the contested sign’s slight stylization of the letters.

Consequently, 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. Both signs coincide in the meaning conveyed by the element ‘ARROW’ whereas they differ in that of the contested sign’s component ‘AND’ whereas its initial element ‘JACE’ has no clear meaning.

Consequently, the signs are conceptually similar to an high 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.

  

The opponent, claims that its mark retain an highly distinctive nature in relation to class 25 goods. However, for reasons of procedural economy, the arguments raised by the opponent to corroborate 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 appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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/services covered are from the same or economically linked undertakings. 

In the present case the goods have been found identical. They target the general public that will pay an average degree of attention. The degree of distinctiveness of the earlier mark is average.

The signs have been found visually and aurally similar to an average degree whereas conceptually similar to an high degree insofar as the earlier mark is entirely included in the contested application, where it detains an independent distinctive role.

In this regard, it must be noted that in terms of recognition and recall, the beginning of a trade mark tends to be more important, since the first part of a sign is generally the part that catches consumers’ attention and will be remembered more clearly than the rest of the sign. However, this does not alter the basic principle that the average consumer normally perceives a mark as a whole and does not proceed to analyze its various details.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Indeed, despite the fact that the contested sign contains additional elements that will be noticed by consumers, the coincidence in the verbal element ‘ARROW’, which constitutes the entire earlier mark, will lead consumers to assume that the identical goods come from the same undertaking or economically related undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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 17 946 108. It follows that the contested trade mark must be rejected for all the contested goods.

 

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 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, 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

 

 

Angela DI BLASIO

Aldo BLASI

Chiara BORACE

 

 

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.