OPPOSITION Nо B 3 125 231

 

Ellos AB, Ödesgärdsgatan, Viared, 501 86 Borås, Sweden (opponent), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative) 

 

a g a i n s t

 

Shenzhen Meizhizhi Trading Company, 802, Building 7, District 1, Nanjingxin Village, Zhangkeng Community, Minzhi Street, Longhua District, 518000 Shenzhen, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas Gynéjų Str. 16, 01109 Vilnius, Lithuania (professional representative).

On 07/06/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 125 231 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 233 223 is rejected in its entirety.

 

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

 

REASONS

 

On 30/06/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 233 223 for the figurative mark . The opposition is based on, inter alia, Danish trade mark registrations No VR 1 994  06 073 and No VR 1 995  00 600 both for the word mark ‘ELLOS’. 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 national Danish trade mark registrations mentioned above.

a) The goods

 

The goods on which the opposition is based are, inter alia, the following:

Danish trade mark No VR 199 500 600:

Class 18: Registration includes all goods or services in this class.

Danish trade mark No VR 1 994  06 073:

Class 21: Registration includes all goods or services in this class.

The contested goods are the following:

Class 18: Imitation leather; credit card cases [wallets]; reins for guiding children; collars for animals; clothing for pets.

Class 21: Pill boxes for personal use; cosmetic utensils; make-up sponges; kitchen utensils; gloves for household purposes; toilet sponges; baking mats; eyebrow brushes; eyelash brushes.

As regards the earlier national Danish marks, they cover inter alia all the goods in Classes 18 and 21 in accordance with the fifth and sixth edition, respectively, of the Nice Classification that was in force at the time of filing of the national marks (1990 and 1993, respectively), available at <http://www.wipo.int/classifications/nice/en/nice_archives.html>.

Consequently, the contested goods in Classes 18 and 21 are all identical to the opponent’s, as the opponent’s earlier goods include all the contested goods in Classes 18 and 21.

 

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 with the exception of imitation leather which is intended for professionals in the field of the manufacture of goods made from leather/imitation leather.

For these the degree of attention is considered to be above average as the quality of the raw material is usually closely looked at by professionals to the extent that they are decisive for the quality and price of the finished good. For the remaining goods all intended for the general public, the degree of attention is average.

 

 c) The signs

 

ELLOS
Earlier trade marks	Contested sign

 

The relevant territory is Denmark.

 

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 earlier marks are for the word mark ‘ELLOS’. In the case of word marks, it is the word as such that is protected, as long as its depiction does not depart from the usual way of writing (standard rules of capitalisation), as is the case here. Therefore, it is irrelevant whether the marks are written in upper- or lower-case letters.

The contested sign is a figurative mark consisting of the verbal element ‘ellolife’, depicted in a fairly standard black font, with a slightly stylised letter ‘e’ and ‘o’ (with a curved line underneath connecting them) in the string of letters ‘ello’.

The coinciding letter string ‘ELLO’ is meaningless for the relevant public and so is the string of letters ‘ELLOS’ that forms the entire earlier mark. Their distinctiveness is therefore considered to be average.

The word ‘life’ of the contested sign will be understood as, inter alia, ‘the experience or state of being alive’ (information extracted from the Cambridge online English Dictionary on 07/05/2021 at https://dictionary.cambridge.org/dictionary/english/life). This element is a basic English word that is understood throughout the European Union (15/10/2018, T‑444/17, life coins / LIFE et al., EU:T:2018:681, § 52) and the relevant public will therefore understand it. However, contrary to the opponent’s view that this term would be ‘generic’, this word has no direct descriptive, allusive, laudatory or otherwise related meaning for the relevant goods. It is, therefore, considered to be distinctive to an average degree.

Although the contested sign’s verbal component is composed of only one word, the relevant consumers, when perceiving a verbal sign, will indeed break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Since, as mentioned above, the word ‘life’ will be understood by the entire relevant public, which will therefore dissect the contested sign into the element ‘life’ and the meaningless element ‘ello’. In the present case, this is further enhanced by the depiction of the curved line under ‘ello’ and the minimal stylisation of this letter string, different from the word ‘life’ that follows.

As regards the distinctiveness of the font and minimal figurative aspects in the contested sign, they are of a merely decorative nature and will not have much of an impact on the perception of the sign by the relevant public. Moreover, and in any event, 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). In the present case, the consumers will certainly refer to the contested sign by its verbal component, rather than by describing its minimal figurative aspects.

Furthermore, the contested sign has no element that could be considered more dominant (more eye-catching).

Finally, 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 signs coincide in the fanciful string of letters ‘ELLO’, which forms the beginning of, as well as almost the entire, earlier mark and the first verbal element of the contested sign. The signs differ in the additional letter ‘-S’ at the end of the earlier mark and the additional verbal component ‘life’ at the end of the contested sign, as well as its minimal figurative aspects. Despite these differences, the entire earlier mark is almost fully incorporated in the beginning of the verbal component of the contested sign. The differences are limited to elements which either have a limited impact on the perception of the sign because of their decorative nature, or they are in any event secondary due to their type (figurative) or position (at the middle or at the very end of the verbal component, which could go more easily unnoticed and which is the part where consumers usually pay less attention, respectively). Taking into account the above, and in particular the different weighting of the various elements of the signs, they are considered visually similar to an average degree.

Aurally, similar considerations to those of the visual comparison apply. The signs coincide in the sound of the letters ‘ELLO-’, present identically at the beginning of both signs. The signs differ in the sound of the additional letter ‘-S’ at the end of the earlier mark and of the word ‘life’ at the end of the contested sign. Considering the fact that the earlier right is almost completely incorporated in the beginning of the only verbal component of the contested sign, the signs are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory will perceive the meaning of ‘life’ in the contested sign, as explained above, the earlier mark and the first verbal element of the contested sign have no meanings in that territory. To the extent that the second part of the contested sign will be associated with a meaning, the signs are not conceptually 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 claimed that the earlier trade mark enjoys an increased distinctiveness because of the fancifulness of ‘ELLOS’ for the relevant public. In this regard, it is recalled that any higher degree of distinctiveness acquired by the earlier mark has to be proven by its proprietor by submitting appropriate evidence. A mark will not necessarily 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).

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

 

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). In the present case, the average degree of visual and aural similarity between the marks, in conjunction with the fact that the goods are identical, will have to be taken into account when assessing the likelihood of confusion between the marks.

The signs contain the same beginnings, the four letter string ‘ELLO-’ which is distinctive to a normal degree, and which also forms almost the entire earlier mark and the beginning of the contested sign’s verbal component. Furthermore, they are aurally and visually similar to an average degree; conceptually the signs are not similar on account of the meaningful additional component ‘life’ in the contested sign. The distinctiveness of the earlier mark is normal.

It must be emphasised 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

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

 

Admittedly, there are some differences between the signs that will not go unnoticed. However, their impact is not such as to enable the public, whether the attention will be higher than average or just average, to safely distinguish between them in the context of identical goods.

Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the public under analysis and therefore the opposition is well-founded on the basis of the opponent’s earlier Danish trade mark registrations.

It follows that the contested sign must be rejected for all the contested goods.

As the earlier marks cited above 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 marks 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

 

 

Gonzalo BILBAO TEJADA

Edith Elisabeth VAN DEN EEDE

Félix ORTUÑO LÓPEZ

 

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.