OPPOSITION No B 2 578 410

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Shenzhen Xingyuerui Trade Co. Ltd., 603A Donglian Commerce Building, Donglian Industrial Area, Huangye 2nd Rd, Xinan St. Baoan Distr. Shenzhen, People’s Republic of China (applicant), represented by A.Bre.Mar. S.R.L., Via Servais 27, 10146 Torino, Italy (professional representative).

On 13/06/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 578 410 is upheld for all the contested goods, namely:

Class 18: School bags; school satchels; rucksacks; backpacks; handbags; travelling bags; briefcases; travelling sets [leatherware]; bags for sports; chain mesh purses; bags [envelopes, pouches] of leather, for packaging; haversacks; travelling trunks.

Class 25: Clothing; trousers; skirts; tee-shirts; underwear; underclothing; body linen [garments]; bathing suits; swimsuits; masquerade costumes; shoes; headgear for wear; hosiery; gloves [clothing]; scarves; turbans; girdles; wedding dresses.

2. European Union trade mark application No 13 973 417 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 973 417, namely against all the goods in Classes 18 and 25. The opposition is based on German trade mark registration No 30 408 108. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

According to the opposition notice filed on 09/09/2015, the contested goods of the EUTM application No 13 973 417 are those included in Classes 18 and 25. However, in its submissions of 20/01/2016, the opponent referred to the contested goods as also including the goods in Class 9 of the EUTM application.

The scope of the opposition cannot be extended after the opposition period i.e. the three-month period to file an opposition against a EUTM application after its publication. In this case, the opposition period expired on 11/09/2015 and consequently the extension of the scope of the opposition in the opponent’s submissions of 20/01/2016 is not admissible.

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

The goods on which the opposition is based are the following in Classes 7, 8, 18, 20, 21, 22, 24, 27 and 28:

Air pumps for blow Op-articles, included in class 7; hand-operated air pumps for blow up-articles; umbrellas and parasols; bags, particularly beach bags and swim bags; backpacks; air mattresses, not for medical use; lounger, particularly camp beds; sleeping bags for camping use; picknick baskets, tents, semi-tents and plans for windbreaking and sun protection; towels and blankets, particularly beach towels and picknick blankets (included in class 24); mats for camping use, beach mats and bath mats; play equipment and sports equipment, included in class 28, particularly blow up play equipment and sports equipment; playthings, particularly water playthings; toys for the beach, included in class 28; playthings for throwing and ball games, particularly boccia; badminton.

The contested goods are the following:

Class 18: School bags; school satchels; rucksacks; backpacks; handbags; travelling bags; briefcases; travelling sets [leatherware]; bags for sports; chain mesh purses; bags [envelopes, pouches] of leather, for packaging; haversacks; travelling trunks.

Class 25: Clothing; trousers; skirts; tee-shirts; underwear; underclothing; body linen [garments]; bathing suits; swimsuits; masquerade costumes; shoes; headgear for wear; hosiery; gloves [clothing]; scarves; turbans; girdles; wedding dresses.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘particularly’, used in the opponent’s list of goods indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 18

The contested school bags; school satchels; rucksacks; backpacks; handbags; travelling bags; bags for sports; chain mesh purses; bags [envelopes, pouches] of leather, for packaging; haversacks are included in the opponent’s broader category bags, particularly beach bags and swim bags and therefore, they are identical.

The contested travelling sets [leatherware] are identical to the opponent’s bags, particularly beach bags and swim bags as they are categories of goods which overlap.

The contested travelling trunks are cases used for carrying clothes and other personal necessaries when travelling whereas the contested briefcases are used for carrying papers or documents. They are similar to the opponent’s bags, particularly beach bags and swim bags as they share the same purpose, target the same public and are distributed through the same channels.

Contested goods in Class 25

The contested clothing; trousers; skirts; tee-shirts; underwear; underclothing; body linen [garments]; bathing suits; swimsuits; masquerade costumes; shoes; headgear for wear; hosiery; gloves [clothing]; scarves; turbans; girdles; wedding dresses are different types of articles used to cover the body and protect it against the elements. They are also articles of fashion. These goods are related to the opponent’s bags, particularly beach bags and swim bags. This is because consumers are likely to consider the opponent’s goods in Class 18 as accessories that complement articles of outer clothing, headgear and even footwear as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing, headgear and footwear to directly produce and market related bags. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

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 found to be identical and similar are directed at the public at large with an average level of attention.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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 is a figurative mark composed of the word element ‘SUNRAY’ in bold letters, ‘SUN’ being represented in white and ‘RAY’ in black, and on top of this, a figurative element in form of an island with two palms and a sun.

The contested sign is a figurative mark composed of stylized black capital letters ‘SUNRAYSE’, the last letters ‘SE’ being represented in white on a black rectangular background.

Neither the word elements ‘SUNRAY’ of the earlier mark and ‘SUNRAYSE’ of the contested application nor the figurative element of the earlier mark have a clear meaning in relation to the relevant goods. However, it cannot be excluded that the sequence of letters ‘RAYSE’ of the contested application, when pronounced, could be perceived as the German word ‘Reise’, which means ‘travel’.

In any case, the comparison of the signs will continue on the basis of the relevant public which will not perceive the word ‘SUNRAYSE’ as including an allusion to the German word ‘Reise’.

For this part of the public, the marks under comparison have no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘SUNRAY’ although with a different stylization in the signs. They differ in the last letters ‘SE’ of the contested mark and in the figurative elements in form of an island with palms and a sun of the earlier mark and a black rectangular background in the contested application. However, in this regard it should be taken into account 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 word element of the earlier mark and the first part of the contested sign are visually highly similar. 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.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SUNRAY’, present identically in both signs. The pronunciation differs in the sound of the additional final letters of the contested application, ‘SE’, which have no counterpart in the earlier sign. Therefore, the signs are aurally similar to an average degree.

Conceptually, the word elements ‘SUNRAY’ in the earlier mark and ‘SUNRAYSE’ in the contested application lack of meaning for the public in the relevant territory. The earlier mark’s figurative element in form of an island with palms and a sun will be perceived as such by the relevant public. To this extent, since only one of the signs 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.

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.

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.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, §22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The contested goods are identical and similar to the opponent’s goods. They are directed at the public at large with an average level of attention.

The conflicting signs are visually and aurally similar to an average degree to the extent that the only word element of the earlier mark and the six first letters of the contested sign, ‘SUNRAY’, coincide. The marks differ in the final letters ‘SE’ of the contested sign, which do not have an especially high impact at a visual or aural level since they are placed at the end of the word. The marks also differ in the stylisation of the letters and in the additional figurative element of the signs which have less impact on the overall impression of the sign as 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.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well-founded on the basis of the opponent’s German trade mark registration.

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

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 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) and (6) and Rule 94(7)(d)(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

Claudia ATTINÀ

Ana María MUÑIZ RODRIGUEZ

Swetlana BRAUN

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.