OPPOSITION No B 3 121 059

Kidiliz Group, Société par actions simplifiée, 16 rue Gaillon, 75002 Paris, France (opponent), represented by Cabinet Degret, 24, place du Général Catroux, 75017, Paris, France (professional representative)

a g a i n s t

Martin Masching, Pfarrhofweg 1a, 5162 Obertrum, Austria (applicant)

On 27/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 121 059 is upheld for all the contested goods, namely:

Class 25: Parts of clothing, footwear and headgear; headgear; clothing; footwear.

2. European Union trade mark application No 18 179 119 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

On 15/05/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 179 119, ‘chippies’ (word mark), namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 321 653, ‘CHIPIE’ (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: Clothing for gentlemen, ladies and children, namely belts, neckties and gloves of textile; shoes, boots, slippers, sandals; headgear.

The contested goods are the following:

Class 25: Parts of clothing, footwear and headgear; headgear; clothing; footwear.

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 the opponent’s list 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 headgear is identically contained in both lists of goods.

The contested clothing includes, as a broader category, the opponent’s belts, neckties and gloves of textile. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested footwear includes, as a broader category, the opponent’s shoes, boots, slippers, sandals. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested parts of footwear, such as inner soles, are complementary to the opponent’s shoes, boots, slippers, sandals. The contested parts of headgear, such as neck flaps, are complementary to the opponent’s headgear. The distribution channels for these goods coincide and their sales outlets, or the retail departments they are sold in, are often either the same or at least closely connected. Moreover, many manufacturers and designers will design and produce both the contested and the opponent’s goods, which also share the same relevant public. Therefore, the above-mentioned goods, as compared in pairs, are similar.

The contested parts of clothing include goods such as bra straps, which can be sold separately when they are removable. Therefore, the contested goods and the opponent’s clothing for gentlemen, ladies and children, namely belts, neckties and gloves of textile coincide in relevant public and distribution channels and commonly have the same commercial origin. These goods are similar to a low degree.

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, similar or similar to a low degree are directed at the public at large.

Their degree of attention is considered to be average.

c) The signs

CHIPIE	chippies
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 contested sign ‘chippies’ is a meaningful English word referring to places that offer fish and chips (information extracted from Collins Dictionary on 20/04/2021 at https://www.collinsdictionary.com/dictionary/english/chippy). The earlier sign ‘CHIPIE’ will most likely be perceived as a mere misspelling of the same English word and will, therefore, be associated with the same meaning (albeit not in the plural form). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public. Since the abovementioned meaning is not related to any of the goods, both the earlier and the contested sign are distinctive.

Moreover, both marks are word marks. The protection of a word mark concerns the word as such. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in lower-case letters and the other in upper-case letters.

Visually and aurally, the signs coincide in the string of letters ‘chip*ie*’ and their pronunciation. The first four letters are identical and pronounced identically. The contested sign includes a second letter ‘*p*’ immediately following this sequence. The signs also coincide in the pair of letters and its sound ‘*ie*’. There is an additional letter ‘*s’ and its sound at the end of the contested sign. Therefore, the signs have six letters in common and differ only in the additional letter ‘*p*’, which will not be pronounced in a different way, and the final letter ‘*s’ of the contested sign.

Consumers generally tend to focus on the beginning of a sign 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. The first four letters and their sounds are identical. The additional letter ‘*p*’ of the contested sign is placed directly after the previous same letter and, therefore, will not make an impact on the pronunciation. The letter ‘*s’ of the contested sign is placed at the end of the sign and, therefore, makes less impact on the overall visual and aural impression of the sign.

Therefore, the signs are similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since both signs will be associated with the same meaning, as explained above (singular and plural form, respectively), they are conceptually highly similar.

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 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 has no meaning for any of the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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).

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.

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).

In the present case, the goods were found identical, similar or similar to a low degree and they are directed at the public at large, whose degree of attention is considered average.

The distinctiveness of the earlier sign is normal.

The signs are visually and aurally similar to an above-average degree, as they coincide in their beginnings, which are four identical letters. They also coincide in the pair of letters ‘*ie*’ and its sound. The additional letters ‘*p*’ and ‘*s’ of the contested sign do not establish a sufficient difference between them to exclude likelihood of confusion. They are also conceptually highly similar.

The applicant’s observations of 06/07/2020 cannot be taken into account because they were filed in German and no translations into the language of the proceedings, namely English, were filed within one month from the date of the submission of the original document (Article 146(9) 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 321 653. 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, he 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

Denitza STOYANOVA-VALCHANOVA

Claudia SCHLIE

Astrid Victoria WÄBER

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.