OPPOSITION Nо B 3 123 924

 

wellbe Deutschland GmbH, Madamenweg 77, 38120 Braunschweig, Germany (opponent), represented by Gramm, Lins & Partner Patent- und Rechtsanwälte PartGmbb, Theodor-Heuss-Str. 1, 38122 Braunschweig, Germany (professional representative) 

 

a g a i n s t

 

Feng Zhi Zhang, Group 10, Xibei Village, Suxi Town, Yiwu City, Zhejiang Province, People’s Republic of 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 29/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 123 924 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 212 820 is rejected in its entirety.

 

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

 

REASONS

 

On 12/06/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 212 820 (figurative mark). The opposition is based on European Union trade mark registration No 17 069 915, ‘wellbe’ (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; headgear; footwear; shoes.

The contested goods are the following:

Class 25: Clothing; underwear; shoes; hosiery; pantyhose; trousers; girdles; gloves; neckties; hats.

 

Clothing; shoes are identically contained in both lists of goods (including synonyms).

The contested pantyhose; neckties; trousers; hosiery; underwear; gloves; girdles are included in the opponent's broad category of clothing. Therefore, they are identical.

The contested hats are included in the opponent's broad category of 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 expected to be average.

 

 

c) The signs

 

wellbe
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 word element 'WELLBEING' of the contested sign is expected to be dissected into its components 'WELL' and 'BEING' by the English-speaking public, and associated to the concept of the state of being comfortable, healthy, or happy. However, this word element is fanciful for the rest of the non-English-speaking public in the relevant territory. Since for the latter part of the public the mark will convey no clear concept, the likelihood for consumers to confuse the marks will be higher. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public such as Italy and Spain. 

 

The element 'wellbe' of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

 

The word element ‘WELLBEING’ of the contested sign will convey no clear meaning for the relevant public and is, therefore, distinctive. 

The figurative element in the contested sign will be associate with no specific concept as it is an abstract image composed of intersecting lines. It follows that this element is distinctive for the goods in question.

 

The contested sign has no element that could be considered clearly more dominant than other elements. 

Moreover, account is taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

 

Furthermore, 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.

 

Visually, the verbal elements of the signs coincide in sequence of letters 'wellbe' which constitutes the earlier mark in its entirety and corresponds to six out of the nine letters of the contested sign.

The signs differ in the ending of the verbal element of the contested sign, 'ING', and the figurative element of the contested sign which have no counterpart in the earlier mark.

Therefore, the degree of visual similarity between the signs is above average.

 

Aurally, irrespective of the different pronunciation rules in the relevant territories, the pronunciation of the signs coincides in the sound of the letters 'wellbe', present identically in both signs and differs in the sound of the letters 'ING' placed at the ending of the verbal element of the contested sign.

 

Therefore, the signs are aurally highly similar.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

 

In its submissions, the opponent states that '[Therefore,] under consideration that the designation "wellbe" has been used for a long time up to now the distinctiveness of the earlier mark has to be considered at least normal'.

The Opposition Division considers this statement too vague to tantamount a claim of enhanced distinctiveness. Moreover, the opponent did not provide any evidence in this respect. Therefore it will be considered as if 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. 

As regards the opponent's claim that the inherent distinctiveness of the earlier mark has to be considered 'at least normal', it is recalled that, in principle, it is not the Office’s practice to recognize a higher than average degree of inherent distinctiveness for individual components of signs. Any higher degree of distinctiveness (enhanced distinctiveness, reputation) is related to actual recognition of the mark by the relevant public, and is eventually examined only with respect to the earlier mark. A mark or, by analogy, its components will not have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H / Eich, EU:C:2013:317, § 71).

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

 

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. 

The goods were found identical and the signs are visually similar to an above average degree and aurally similar to a high degree. Moreover, they convey no clear meaning which could help to distinguish them. The earlier mark has a normal degree of distinctive character and the attention paid by the purchasing public will be average.

The signs are visually and aurally similar to the extent that they coincide in the part 'wellbe'. The only difference between the marks is the addition of the letters 'ING' and in the figurative element of the contested mark, the latter having a lesser impact on the overall impression of the sign, as already mentioned above.

The earlier mark 'wellbe' is fully included in the beginning of the contested sign, which is the part where consumers generally tend to focus when they encounter a trade mark. 

It is recalled that 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).

Account is also 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).

 

Considering all the above and taking into account the principle of interdependence of all factors, the Opposition Division deems that there is a likelihood of confusion, including a likelihood of association, on the part of the Italian- and Spanish-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 17 069 915. 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, 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

 

 

Aldo BLASI

Claudia ATTINÀ

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.