OPPOSITION No B 2 129 826

Lilly A/S, Bugattivej 2, 7100 Vejle, Denmark (opponent), represented by Plesner,

Amerika Plads 37, 2100 Copenhagen Ø, Denmark (professional representative)

a g a i n s t

Yuefei Dai, 82 rue Manin, 75019 Paris, France (applicant).

On 26/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 129 826 is upheld for all the contested goods.

2. Community trade mark application No 11 236 213 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 11 236 213. The opposition is based on, Community trade mark registration No 580 282 for which the opponent invoked Articles 8(1)(b) and 8(5) CTMR. The opposition is also based on a Danish non-registered trade mark for which the opponent invoked 8(4) CTMR.

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 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 Community trade mark registration No 580 282.

1. The goods

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

Class 25: Religious and festive occasions clothing, footwear and headgear.

The contested goods are the following:

Class 25: Footwear.

Contested goods in Class 25

The contested footwear includes, as a broader category, the opponent’s religious and festive occasions footwear. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. The signs

LILLY	LILY SHOES
Earlier trade mark	Contested sign

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 (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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Visually, the two signs are word marks. They are similar to the extent that they coincide in the string of letters ‘L-I-L-*-Y’. However, they differ in the fourth letter ‘L’ of the earlier trade mark and the word ‘SHOES’ of the contested sign which has no counterpart in the earlier trade mark.

Aurally, the pronunciation of the signs coincides the sound of the letters ‘L-I-L-*-Y’ present identically in both signs. The fourth letter ‘L’ of the earlier trade mark does not affect the pronunciation of this word, therefore the pronunciation of the words ‘LILY’ and ‘LILLY’ is identical. However, the pronunciation differs in the sound of the word ‘SHOES’ of the contested mark which has no counterpart in the earlier sign.

Conceptually, they are similar to the extent that the public in the relevant territory will associate the words ‘LILY’ and ‘LILLY’ with the same female names, written with a slightly different spelling. Furthermore, the word ‘SHOES’ of the contested sign will be understood as footwear items.

Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs under comparison are similar.

3. 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 earlier mark has no element that could be clearly considered more distinctive than other elements.

The word ‘SHOES’ of the contested sign will be associated with footwear. Bearing in mind that the relevant goods are footwear it is considered that this word is non‑distinctive for these goods, namely for ‘footwear’. The relevant public understands the meaning of that word and will not pay as much attention to it as to the other more distinctive element of the mark, the word ‘LILY’. Consequently, the impact of this non‑distinctive word is limited when assessing the likelihood of confusion between the marks at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. As stated in part c), the relevant public will associate the word LILY with a female name and therefore, the distinctiveness of the earlier mark in relation to the goods must be seen as normal.

5. 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 average.

Global assessment, other arguments and conclusion

The contested goods are identical to the opponent’s goods.

The earlier trade mark and the contested sign are visually and aurally similar to the extent that they coincide in the string of letters ‘L-I-L-*-Y’. Furthermore, although the fourth letter ‘L’ of the earlier mark has no counterpart in the contested sign, this difference is not visually outstanding since the words ‘LILY’ and ‘LILLY’ are only composed of ‘L’, ‘I’ and ‘Y’. Aurally, this difference goes unnoticed to the consumer since the pronunciation remains unchanged. The first words of the signs under comparison are therefore nearly identical. However, they differ in the word ‘SHOES’ of the contested sign which has no counterpart in the earlier trade mark.

The word ‘SHOES’ of the contested mark is considered non-distinctive for the relevant goods. In addition, since the word ‘LILY’ is the distinctive element of the earlier mark, the public will focus its attention on this word.

Therefore, the earlier mark is reproduced in the first word of the contested sign. 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 fact that the earlier mark is nearly identical to the first word of the contested mark has to be taken into account when assessing the likelihood of confusion between the marks.

In addition, 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). Therefore, the difference established by the presence of the letter ‘L’ in the fourth position of the earlier mark may go unnoticed by consumers, especially for identical goods.

Therefore, it is likely that the consumer, on encountering the use of both signs for identical goods and having an imperfect recollection of the earlier mark, might think that the goods on which the contested mark appears are produced by the same undertaking, or an economically-linked one, as those sold under the earlier mark, of which they have only an imperfect recollection. The consumer might perceive the mark applied for as a sub-brand and/or a variation of the earlier mark designating a new line of footwear goods.

In view of the foregoing and taking into account all the relevant circumstances of the case, the Opposition Division concludes that there is a likelihood of confusion on the part of the English-speaking part of the public because the differences between the signs are mainly confined to non‑distinctive elements, or elements which will likely go unnoticed. 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 580 282.

It follows from the above that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) CTMR, there is no need to further examine the other grounds of the opposition, namely Articles 8(4) and 8(5) CTMR.

COSTS

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.

The Opposition Division

Gueorgui IVANOV

Sandra IBAÑEZ

Ewelina SLIWINSKA

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.