OPPOSITION No B 2 641 762

Ullmax AB, Box 6086, 70006 Örebro, Sweden (opponent), represented by Bengt Nihlmark AB, Kungsvägen 29, 18279 Stocksund, Sweden (professional representative)

a g a i n s t

Ningbo Bestore International Trading Co.,Ltd., Room 101, No 5 Building, No 8 Xingze Avenue Tax-Protected Zone, Ningbo City, Zhejiang Province, Popular Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo 65 - Local 1 "Llopis & Asociados", 03012 Alicante, Spain (professional representative).

On 15/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 641 762 is upheld for all the contested goods, namely

Class 25: Clothing; Layettes [clothing]; Bathing suits; Waterproof clothing; Footwear; Caps [headwear]; Hosiery; Gloves [clothing]; Scarfs; Girdles.

2. European Union trade mark application No 14 671 424 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 14 671 424, namely against all the goods in Class 25. The opposition is based on European trade mark registration No 8 556 409. 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

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Clothing; Layettes [clothing]; Bathing suits; Waterproof clothing; Footwear; Caps [headwear]; Hosiery; Gloves [clothing]; Scarfs; Girdles.

Contested goods in Class 25

The contested goods clothing and footwear are identically contained in both lists.

The contested layettes [clothing]; bathing suits; waterproof clothing; hosiery; gloves [clothing]; scarfs; girdles are included in the broad category of the opponent’s clothing. Therefore, they are also identical.

The contested caps [headwear] are included in the broad category of the opponent’s headwear. Therefore, they are also identical.

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 are directed at the public at large. The degree of attention is considered to be average.

3. The signs

ULLMAX
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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.

The earlier mark is the word ‘ULLMAX’.

The contested sign is a figurative mark. It consists of the word ‘U-MAX’ written in uppercase standard characters.

The element ‘MAX’ contained in both marks may be understood by the English-speaking public as a reference to ‘maximum’ or as an adverb meaning ‘at the most’. However, these meanings do not bear any relation to the goods at issue as in connection to clothing terms such as ‘large’, ‘extra large’ are used but never maximum. Therefore, none of the marks has any elements that could be considered clearly more distinctive than other elements. As such the marks as a whole are distinctive.

Neither of the marks has any dominant elements.

Visually, the signs coincide in the four letters ‘U’ and’ MAX’ in the same order. However, they differ in the letters ‘LL’ contained in the earlier mark in second and third position. In this same position the contested sign shows a hyphen. The signs coincide in their first letters and the final sequence of three letters is identical. Indeed, the signs are not short being composed of six and five characters respectively (including the hyphen). Due to the length of the signs consumers will not immediately perceive the differences in the middle of the signs, particularly amidst identical letters. Therefore, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the beginning of the first syllable /ju/ and in the final syllable /maks/. The pronunciation only differs in the additional sound /l/ contained at the end of the first syllable of the earlier sign. In this respect, reference is made to the previous comments on the length of the signs, since this additional sound appears at the end of the first syllable and goes rather unnoticed in pronunciation. The signs coincide in their number of syllables and rhythm of speech. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs as a whole has a meaning for the English-speaking public in the relevant territory, thus, making a conceptual comparison not possible. Nevertheless, as indicated above, the part of the English-speaking public that recognises the element ‘MAX’ contained in both signs as a reference to ‘maximum’ or as an adverb meaning ‘at the most’ may make a conceptual link in this regard.

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

The goods at issue are identical and the signs are visually, aurally and conceptually similar to different degrees as established in the comparison of signs. Despite the fact that the contested mark is a figurative mark, there is nothing figurative about it and thus it will not be perceived any differently from the earlier word mark from a visual perspective.

From a conceptual perspective the signs share the element ‘MAX’ which for the English-speaking part of the public has a semantic content; however, this content does not bear any link with the goods at issue. Clothing and footwear are not referred to as ‘maximum’ and, therefore, this element contained in both signs is considered distinctive.

As stated above the goods are directed at the public at large and the degree of attention is considered to be average.

Moreover, account is taken of the fact 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).

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).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) 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 European Union trade mark registration No 8 556 409. 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

Alistair BUGEJA

Claudia SCHLIE

Vanessa PAGE

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.