OPPOSITION No B 2 663 170

A Ve A Tekstil Sanayi Ve Pazarlama Limited Sirketi, Yenibosna Merkez Mahallesi, 29 Ekim Caddesi Nº 33, Bahçelievler-Istanbul, Turkey (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Sand CpH A/S, Agerskellet 2, 8920 Randers NV, Denmark (applicant), represented by Patrade A/S, Fredens Torv 3A, 8000 Aarhus C, Denmark (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 663 170 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 of European Union trade mark application No 14 820 716. The opposition is based on European Union trade mark registration No 256 263. 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: Pullovers, knitted jackets, waistcoats, T-shirts, blouses, sweatshirts, polo-shirts, shorts, skirts, blazers, blousons, sports jackets, shirts, suits for men, dresses, suits for women, under-shirts, pants, socks, coats for women, winter coats, waterproof clothing.

The contested goods are the following:

Class 25: Shirts.

Shirts are identically contained in both lists of goods.

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 average.

3. The signs

OXXO
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The element ‘SHIRTMAKER’ of the contested mark is understood in part of the EU, namely the English-speaking part, as indicating ‘someone who makes shirts’ (information extracted from Collins Dictionary on 22/03/2017 at https://www.collinsdictionary.com/dictionary/english/shirtmaker), and therefore is non-distinctive for shirts for this part of the public. However, for the other part of the public, namely the non-English-speaking part, it has no meaning and is distinctive.

The Opposition Division will first examine the opposition in relation to the part of the public that will associate the element ‘SHIRTMAKER’ of the contested mark with the meaning described above, namely the English-speaking part of the public.

The element ‘OXXO’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The element ‘XO’ in the contested sign is the dominant element as it is the most eye-catching.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. The signs have different beginnings.

Visually, the signs coincide in the letters ‘XO’, placed at the end of the sole element of the earlier mark and at the beginning of the contested mark. However, they differ in the first two letters, ‘OX’, of the earlier mark, and in the additional verbal element, ‘SHIRTMAKER’, and the figurative elements of the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters /XO/, which are in different positions in the marks, namely at the end of the earlier mark and at the beginning of the contested mark. The pronunciation differs in the additional verbal element, /SHIRTMAKER/, of the contested sign, which has no counterpart in the earlier sign, as well as in the initial letters, /OX/, of the earlier mark, which have no counterparts in the contested mark. The signs have different structures, rhythms and intonations. The earlier mark consists of one word of two syllables, /OX/O/, whereas the contested mark consists of two words of five syllables, /X/O/SHIRT/MA/KER/.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘SHIRTMAKER’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the goods are identical and the degree of attention paid by the relevant public is average.

The marks are visually and aurally similar to a low degree. The English-speaking part of the public will perceive the element ‘SHIRTMAKER’ as being non-distinctive for the relevant goods, and the elements ‘OXXO’ and ‘XO’ as being different. The length of the signs may influence the effect of the differences between them. The signs have different structures, rhythms and intonations. The shorter a sign, the more easily the public is able to perceive all of its individual elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. Conceptually, the signs are not similar.

According to well-established case-law, the relevant consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The average consumer showing an average degree of attention is not prone to making a closer inspection of the composition of signs. Assuming the contrary does not reflect the market reality and the cognitive process of perception and does not comport with the principles developed by the Courts regarding the objective evaluation of similarity between signs from the perspective of the average consumer. In this sense, the different beginnings and the different composition of the signs enable the marks to be clearly distinguished. Furthermore, the letters that they have in common are not featured independently, so they would not be singled out in the earlier mark. Such a dissection would be artificial and, indeed, might also rely on a side-by-side examination of the marks, which does not reflect the reality of the market.

Moreover, 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 visual differences between the signs are particularly relevant when assessing the likelihood of confusion between them.

The Opposition Division considers that the differences between the signs are sufficient to exclude the possibility of consumers believing that the goods in question come from the same undertaking or economically linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘SHIRTMAKER’ has no meaning. This is because the element ‘SHIRTMAKER’ of the contested mark is a distinctive element that represents another considerable difference between the signs, in addition to the differences mentioned in the earlier comparison of the elements ‘OXXO’ and ‘XO’.

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

Cristina CRESPO MOLTO

Francesca DINU

Janja FELC

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.