OPPOSITION Nо B 3 118 443

Cupid Foundations, Inc., 475 Park Avenue South, 10016 New York, United States of America (opponent), represented by Keltie LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative)

a g a i n s t

N-Cubator B.V., Markt 19, 6071JD Swalmen, Netherlands (applicant).

On 19/02/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 118 443 is upheld for all the contested goods and services, namely

Class 25: Clothing, namely, shirts, pants, coats, suits, dresses; casual, children’s, evening, exercise, rain, sports and beach footwear; athletic footwear; beach footwear; casual footwear; climbing footwear; exercise footwear; infant footwear; headwear, namely, hats, headbands and caps; swimwear; sportswear; leisurewear, namely, leisure suits and shoes. Class 35: Retail store services in relation to clothing.

2.	European Union trade mark application No 18 163 914 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 163 914 for the word mark ‘CUPID’, namely against all the goods in Class 25 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 6 733 612 for the word mark ‘CUPID’. 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 and services

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

Class 25: Apparel, namely, swimwear, active wear, namely, pants, shorts, and shirts, shape wear, namely control panties, girdles, body briefs and foundation garments, intimates, namely panties, slips, and camisoles, bras and undergarments.

The contested goods and services are the following:

Class 25: Clothing, namely, shirts, pants, coats, suits, dresses; casual, children's, evening, exercise, rain, sports and beach footwear; athletic footwear; beach footwear; casual footwear; climbing footwear; exercise footwear; infant footwear; headwear, namely, hats, headbands and caps; swimwear; sportswear; leisurewear, namely, leisure suits and shoes.

Class 35: Retail store services in relation to clothing.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in both lists of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Contested goods in Class 25

The contested clothing, namely, shirts, pants; swimwear; sportswear; leisurewear, namely, leisure suits at least overlap with the opponent’s apparel, namely, swimwear, active wear, namely, pants, shirts. Therefore, they are identical.

The remaining contested goods are items of clothing, footwear and headgear, which are similar to the opponent’s active wear, namely, pants, shorts, and shirts as they have the same purpose (for covering and protecting parts of the human body and for fashion) and target the same public. Moreover, they are often manufactured by the same undertakings and commercialised through the same channels.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The goods covered by the retail services and the specific goods covered by the earlier mark have to be identical in order to find an average degree of similarity between the retail services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

Therefore, the contested retail store services in relation to clothing are similar to the opponent’s active wear, namely, pants, shorts, and shirts in Class 25. This is because the opponent’s goods are identical to the goods covered by the contested services as the latter include the former.

c) The signs

CUPID	CUPID
Earlier trade mark	Contested sign

The signs are identical.

d) Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods. Although the opponent did not invoke Article 8(1)(a) EUTMR, this ground is related to Article 8(1)(b) EUTMR in such a way that even if only one of the two grounds of opposition is invoked, the Opposition Division will also examine the existence of the other ground of opposition.

Furthermore, the remaining contested goods and services were found to be similar to the goods covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods and services.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 6 733 612. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Konstantinos MITROU

Lidiya NIKOLOVA

Claudia MARTINI

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.