OPPOSITION No B 2 563 172

Hugo Boss Trade Mark Management GmbH & Co. KG, Dieselstr. 12, 72555 Metzingen, Germany (opponent), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative)

a g a i n s t

Dongguan Yukun Shoes Co., Ltd., No.113, Houhuan Road, Yongkou Village, Houjie Town, Dongguan/Guangdong 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 28/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 563 172 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 704 812. The opposition is based on European Union trade mark registration No 49 221. 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.

1. The goods and services

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

Class 18: Leather and imitations of leather, and goods made of these materials (included in Class 18), in particular small leather goods; trunks and travelling bags; bags; umbrellas and parasols.

Class 25: Clothing for men, women and children; stockings; headgear; underwear; nightwear; swimwear; bathrobes; belts; belts of leather; shawls; accessories, namely headscarves, neck scarves, shawls, dress handkerchiefs; ties; gloves; shoes.

Class 35: Advertising, business management, business administration, sales consultancy.

The contested goods and services are the following:

Class 18: Pelts; imitation leather; fur; pocket wallets; school bags; travelling bags; briefcases; furniture coverings of leather; umbrellas; walking sticks.

Class 25: Clothing; layettes [clothing]; waterproof clothing; football shoes; shoes; headgear for wear; hosiery; gloves [clothing]; neckties; girdles.

Class 35: Advertising; publicity; commercial administration of the licensing of the goods and services of others; marketing research; business management of hotels; import-export agencies; sales promotion for others; marketing; providing business information via a web site; on‑line advertising on a computer network.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. 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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to higher than average.

3. The signs

BOSS
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 earlier mark consists of the word mark ‘BOSS’.

The contested sign is a figurative mark composed of the verbal element ‘RALPHBOSSI’ written in black stylised letters against a light-blue background, in which the letter ‘O’ contains the shape of a flower with four petals and a black dot in the middle.

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

The contested sign has no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

The opponent claims that the relevant public will most probably identify the goods bearing the contested sign predominantly by the element ‘BOSSI’, since the first name ‘RALPH’ is a commonly known name in the European Union and, when a sign contains a first name and a surname, it will be the latter that identifies the origin of the goods. The opponent further claims that the element ‘BOSSI’ of the contested sign has to be considered dominant due to its particular suitability to distinguish the origin of the goods in question from those of other undertakings.

The perception of signs made up of personal names may vary from country to country within the European Union. Family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname (provided it is not common in the relevant territory) could imply the existence of some link between them (identity of the persons or a family link).

In the present case, taking into account that at least part of the relevant public will break down the contested sign into separate components, due to the recognisable presence of a name and a surname combined to form the one word, namely ‘RALPH’ and ‘BOSSI’, ‘RALPH’ might have a lower degree of distinctive character than ‘BOSSI’, as it is a common first name at least in some parts of the relevant territory (such us in Germany, Ireland and United Kingdom).

Visually, the signs coincide in the sequence of letters ‘BOSS’, constituting the entire earlier mark and placed in the middle of a total of 10 letters in the contested sign. However, they differ in the beginning of the contested sign, namely the letters ‘RALPH’, and in its last letter, ‘I’, which have no counterparts in the earlier mark. The signs further differ in the stylisation of the letters, the light-blue background and the shape of a flower with four petals a black dot inside the letter ‘O’ in the contested sign.

It is noted that the flower device is not particularly striking in the contested sign when considered as a whole and it is likely to be perceived as a decorative element. Moreover, it is generally considered 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The opponent also claims that the average consumer usually pays more attention to the beginning of a word, which is the part that they will predominantly recognise and memorise. Indeed, 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. In the present case, the first parts of the conflicting marks are completely different: ‘BOSS’ in the earlier mark versus ‘RALPH’ in the contested sign.

Furthermore, the opponent recognises that the word ‘RALPHBOSSI’ can be easily read. Indeed, even assuming that a significant part of the relevant public may break down the contested sign into two recognisable verbal elements, namely the male name ‘RALPH’ and the surname ‘BOSSI’, they will still perceive and read the beginning of the sign, ‘RALPH’, which neither is found in the earlier mark nor coincides with any of the letters of the earlier mark, ‘BOSS’. Similarly, the final letter, ‘I’, of the contested sign will be also perceived and read by the relevant public.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /BOSS/, present identically in both signs, although in different positions within the conflicting signs, as explained above. The pronunciation differs in the sound of the letters /RALPH/ and /I/, placed at the beginning and end, respectively, of the contested sign, which have no counterparts in the earlier mark. Therefore, the signs do not coincide either in their beginnings or in their endings. Furthermore, the signs do not coincide in their length, namely the earlier mark comprises 4 letters and the contested sign comprises 10 letters.

For the sake of completeness, even if a significant part of the relevant public would break down the contested sign into two recognisable components, namely the name ‘RALPH’ and the surname ‘BOSSI’, neither of these elements is identical to the earlier mark, ‘BOSS’. Furthermore, the letter ‘I’ at the end of the contested sign is clearly aurally perceptible. Therefore, the pronunciation of the conflicting signs will still be different, as their beginnings and endings do not coincide.

The opponent claims that it is very likely that the average consumer would abbreviate the contested sign, referring to it not as ‘RALPHBOSSI’ but only as ‘BOSSI’. This argument contradicts the opponent’s assertion that, when perceiving a trade mark, the average consumer usually pays more attention to the beginning of a word. First, there is no factual reason to assume or evidence to demonstrate that the average consumer would ignore the beginning of the contested sign, ‘RALPH’, in favour of the second part, ‘BOSSI’, when the sign consists of a single verbal element and there is no special feature (different colour, size, font, etc., of particular letters) that would lead to such a preference. Second, the contested sign combines a Germanic name, ‘RALPH’, with an Italian surname, ‘BOSSI’, a combination that cannot be regarded as ordinary. Therefore, such an association of a name and a surname with different origins contributes significantly to identifying the commercial origin of the goods and services in question, even in the part of the relevant territory where the name ‘RALPH’ might have a low degree of distinctive character, as pointed out above.

Therefore, the signs are aurally similar to a low degree.

Conceptually, a substantial part of the public in the relevant territory associates the earlier mark with, inter alia, ‘a person in charge of or employing others’. The word ‘BOSS’ is understood by the English- and German-speaking parts of the relevant public, including native speakers and those consumers who have sufficient knowledge of these languages. In addition, a not insignificant part of the public in other language areas understands the meaning of this word, as it is a commonly used word in everyday parlance in Romance languages (e.g. French, Italian, Romanian and Spanish), Finno-Ugric (e.g. Estonian) and Baltic languages (Lithuanian and Latvian). In other languages, a variation of the word (e.g. ‘bos’ in Slovak) is used with the same meaning. Nevertheless, the rest of the public in the relevant territories, for example in Hungary and other language areas where consumers generally do not have good command of English or German, will not attribute any semantic content to the earlier mark. In addition, it cannot be excluded that part of the relevant public could perceive ‘BOSS’ of the earlier mark as a surname.

The verbal element ‘RALPHBOSSI’ of the contested sign is meaningless when taken as a whole. However, a significant part of the relevant public will split it into two components, namely the male name ‘RALPH’ and the Italian surname ‘BOSSI’. The Italian surname ‘BOSSI’ is different from the word ‘BOSS’ of the earlier mark, and even if the earlier mark is perceived as a surname, no family link could be established between these two different surnames.

Therefore, for the part of the relevant public that will perceive the meaning of the verbal elements in the conflicting signs, they are conceptually different; as regards the remaining consumers, it is not possible to proceed with a conceptual comparison.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

The goods and services have been assumed to be identical.

The signs are visually similar to a low degree, since they coincide in the sequence of letters ‘BOSS’, constituting 4 out of a total of 10 letters in the contested sign. Furthermore, the coinciding letters are placed in the middle of the contested sign, where they are not very obvious to consumers. Therefore, the signs have different beginnings and endings, since the contested sign begins with five differing letters, ‘RALPH’, and ends with the letter ‘I’. Furthermore, the contested sign differs in the stylisation of its letters, the light-blue background and the shape of a flower with four petals and a black dot inside the letter ‘O’, which have a lesser impact than the verbal element.

Aurally, the signs are similar only to a limited degree, since they coincide in the sound of the letters /BOSS/, placed in the middle of the contested sign. However, they completely differ in the sounds of their beginnings and endings, since the contested sign begins with five differing letters, /RALPH/, and ends with the letter ‘I’. Furthermore, even if a significant part of the relevant public will perceive two components in the contested sign, namely the Germanic name ‘RALPH’ and the Italian surname ‘BOSSI’, both of these components would undoubtedly be pronounced. Consequently, the pronunciation of the contested sign differs sufficiently from that of the earlier mark, since the signs do not coincide either in their beginnings or in their endings. In addition, even if the component ‘BOSSI’ of the contested sign and the earlier mark, ‘BOSS’, were perceived as surnames, the origins of these words are different and the presence of the final letter, ‘I’, of the surname ‘BOSSI’ is clearly perceptible, leading to the exclusion of any possible link between the origin of the goods and services in question from the perspective of the relevant public. Therefore, the signs, considered as a whole and, in the case of the contested sign, also as two separate components, will be aurally quite distinct for the public, whose attention is deemed to be at least average.

For a part of the relevant public, at least one of the signs conveys some semantic content. This will help consumers to distinguish between the signs. Even considering the fact that, for another part of the public, the verbal elements are conceptually neutral, the differences between them are such that the signs’ overall impressions are sufficiently different.

The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

In the present case, taking into account the abovementioned considerations, the sole coincidence between the signs, in the sequence of letters ‘BOSS’, does not amount to a sufficient similarity between the signs. The numerous differing components of the contested sign, listed in section c) of the present decision, in its verbal and figurative elements, outweigh its similarities with the earlier mark. Therefore, the differences between the signs are sufficiently strong to allow the relevant public to distinguish between them, even taking into account the principle of imperfect recollection.

In addition, all the goods in Classes 18 and 25 that have been considered identical are frequently on display and subject to a comprehensive visual examination before purchase.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by their different beginnings and endings and the figurative elements of the contested sign are particularly relevant when assessing the likelihood of confusion between them. The same reasoning applies, by analogy, to the goods in Class 18, which are often accessories to goods in Class 25.

With regard to the relevant services in Class 35, the Opposition Division notes that they target a specialised public, composed of business customers with specific professional knowledge or expertise, who will pay a higher degree of attention at the moment of purchase of the relevant services. Therefore, even small differences between the signs will be sufficient for the relevant public to distinguish the marks as coming from different undertakings.

Overall, the Opposition Division finds that the differences between the marks counteract the similarities between them. The differences are, therefore, sufficient to exclude any likelihood of confusion on the part of the public, including the risk that consumers might believe that the goods and services came from the same undertaking or from economically linked undertakings.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Likewise, the Opposition Division finds that there are sufficient differences between the signs, even assuming the enhanced distinctiveness of the earlier mark as indicated in section d) of this decision, to rule out confusion between them on the part of the relevant consumer, particularly considering the importance given to the visual appearance of the signs in this case. Even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Loreto URRACA LUQUE

Marta GARCÍA COLLADO

Benoît VLEMINCQ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.