OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 1 931 644
Jennifer MacDonald, 730 Capability Green, Luton, Bedfordshire LU1 3LU, United Kingdom (opponent)
a g a i n s t
Misyd Corp., 1411 Wilson Street, Los Angeles, California 90021, United States of America (applicant), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333 München, Germany (professional representative).
On 11/12/2015, the Opposition Division takes the following
trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of Community trade
mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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 goods on which the opposition is based are the following:
Class 25: Clothing in general, lingerie items, night clothing, trousers, knickers, shorts, pants, jumpsuits, shirts, undershirts, tee-shirt, pullovers, sweaters, knitwear, vests, jackets, raincoats, anoraks, coats, overcoats, skirts, dresses, overalls, cover-ups, fur clothing, scarves, shawls, sashes, sports clothing, gloves, robes, suspenders, belts, neckties, footwear, boots, slippers, sandals, sports footwear, hats, caps, berets, visors, socks and tights.
The contested goods are the following:
Class 25: Clothing, namely, blouses, coats, dresses, jackets, pants, shirts, shorts, t‑shirts, tops, sweaters, footwear, headgear.
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 applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
Contested goods in Class 25
The contested clothing, namely coats, dresses, jackets, pants, shirts, shorts, t-shirts, sweaters, footwear are also included in the opponent’s list of goods, either identically or by using synonyms (i.e. t-shirts versus tee-shirt). These goods are, therefore, identically covered by both lists of goods.
The contested clothing, namely, blouses, tops fall within the broad category of the opponent’s clothing in general. These goods are, therefore, identical.
The contested headgear covers, as a broad category, the opponent’s hats, inter alia. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.
Earlier trade mark
The relevant territory is the European Union.
The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-speaking part of the relevant public.
Visually, the signs are similar to the extent that they are both word marks formed by two verbal elements, and they both contain the verbal element ‘RUBY’, which is positioned on the left-hand side of both marks. The signs differ in the words ‘ROCKS’, of the earlier mark, and ‘ROX’, of the contested sign. However, these differing words have the same first and second letters, namely ‘RO’, which also, therefore, constitutes a coincidence between the marks. Overall, the marks have the same sequence of letters, namely ‘RUBYRO’, but differ in their endings, namely ‘CKS’ and ‘X’.
Aurally, Bulgarian-speaking consumers will pronounce the sequence of letters ‘CKS’, if positioned at the end of a word, in the same way as a letter ‘X’ in that same position.
The marks are aurally identical, since their coinciding sequences of letters, ‘rubyro’, have the same sound and, furthermore, their differing sequences of letters, ‘cks’ and ‘x’, will also be pronounced identically.
Conceptually, the word ‘RUBY’ does not have a meaning as such in Bulgarian, and nor does the word ‘ROX’ of the contested mark. These words will be perceived by the relevant consumers as an invented term with no concept.
The word ‘ROCK’ is an English word that is widely known and used throughout the EU to refer to a kind of music (i.e. rock and roll) and a type of dance, which entails a particular fashion style. Despite the final ‘S’, it cannot be excluded that part of the public will associate this word with the concept referred to.
For the part of the public that perceives ‘ROCKS’ to have the abovementioned meaning, since the contested sign will have no meaning, and, therefore, only the earlier mark will have a concept (i.e. rock and roll), the signs are not conceptually similar.
For the part of the public that does not associate any concept with the word ‘ROCKS’, neither of the signs has a concept. Accordingly, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Taking into account the abovementioned visual similarity and the aural identity, the signs under comparison are highly similar.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The contested sign has no element that could be clearly considered more distinctive than other elements.
For the part of the public that attributes the abovementioned concept to the word ‘ROCKS’, the earlier mark will be perceived to be formed by the distinctive element ‘RUBY’ and the element ‘ROCKS’, which has a lower than average degree of distinctive character, as it is allusive of the characteristics of the goods in question, namely that they have a rock and roll‑inspired style or design. Consumers will, therefore, pay more attention to ‘RUBY’ than to the element ‘ROCKS’, which has limited impact when assessing the likelihood of confusion between the marks at issue.
For the part of the public that does not attribute a meaning to ‘ROCKS’, the earlier mark has no element that is more distinctive than the others.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
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 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, despite the presence of an element in the mark that, for part of the public, could be seen as of lower than average distinctive character, as stated above in section c) of this decision.
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 paid by consumers during the purchase of these goods is deemed to be average.
Global assessment, other arguments and conclusion
The goods are identical.
The signs are visually similar and aurally identical. For part of the public, the signs are not conceptually similar and for the other part it is not possible to compare them conceptually.
The first words, namely ‘RUBY’, of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.
In addition, the letters following the common term ‘RUBY’, namely “RO”, are the same in both marks. Therefore, the signs coincide in the sequence of letters ‘RUBYRO’, which forms the initial part of both signs.
The differences are found in the endings, namely ‘CKS’ and ‘X’, of the marks. However, as explained above, these differing endings are aurally identical for the relevant public.
Although the visual perception of the marks in question will generally take place prior to the purchase of goods in Class 25, and the visual aspect plays a greater role in the global assessment of the likelihood of confusion in relation to said goods (judgment of 06/10/2004, joined cases T‑117/03, T‑119/03 and T‑171/03, ‘NLSPORT’, paragraph 50), the visual coincidences between the marks are significant.
The degree of attention paid by consumers during the purchase of the goods involved is deemed to be average.
The average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, according to the principle of imperfect recollection, average consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their mind. Based on this, the consumers might believe that the conflicting goods come from the same or economically-linked undertakings.
In addition, with regard to the principle of interdependence (i.e. a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods or services, and vice versa), it is considered that the aural identity and the visual similarity between the signs, together with the identity of the goods, are enough to outweigh the dissimilarities, and may induce at least part of the public to believe that the conflicting goods come from the same or economically-linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-speaking part of the public. As stated above in section b) 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 Community trade mark registration (No 5 816 251). It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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.
Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 93 CTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Rule 94(7)(d) CTMIR.
The Opposition Division
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.