OPPOSITION No B 2 691 098

Sym S.A.S., 139 Rue de la Belle Etoile, ZAC Paris Nord II, 95948 Roissy Charles de Gaulle Cedex, France (opponent), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative)

a g a i n s t

SunTwins Ventures Pty Ltd, 30 Fern Tree Close, Arakoon, New South Wales 2431, Australia (applicant), represented by Olaf Kretzschmar, Untere Querstraße 1, 23730 Neustadt in Holstein, Germany (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 691 098 is upheld for all the contested goods, namely:

Class 25: Clothing; Footwear; Headgear; Bottoms [clothing]; Shirts; Sweaters; Shorts; Pants.

2. European Union trade mark application No 14 989 214 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 989 214, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 9 512 807. 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; Footwear; Headgear; Bottoms [clothing]; Shirts; Sweaters; Shorts; Pants.

Contested goods in Class 25

The contested clothing; footwear; headgear are identically contained in both lists of goods.

The contested bottoms [clothing]; shirts; sweaters; shorts; pants are included in the broad category of the opponent’s clothing. Therefore, they are 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 average.

3. The signs

	CYM
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 French- and Swedish-speaking parts of the relevant public.

The earlier mark is a figurative mark comprising the verbal element ‘SYM’ in upper case letters. The first and third letters are written in a standard typeface. The second letter, ‘Y’, is stylised (mirror image) and in a slightly larger font. Below is a small element that will most likely be perceived as an illegible scribble of a rather decorative nature. Although it cannot be seen as negligible, it will hardly be considered as an element indicating the commercial origin of the goods. Therefore, the verbal element is more distinctive than the figurative element.

Neither the word ‘SYM’ contained in the earlier mark nor the word ‘CYM’ of the contested sign will have any meaning for the relevant public. Therefore, they are distinctive for the relevant goods.

The signs under comparison have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their last two letters, ‘YM’. However, they differ in their first letters, ‘S’ and ‘C’, as well as in the stylisation and the less distinctive small scribble of the earlier trade mark. Nevertheless, the stylisation is not sufficiently conspicuous or striking to prevent consumers from perceiving the letters as such.

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).

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs is identical for the relevant public, given that they coincide in the sound of the last letters, ‘YM’, and, furthermore, that the first letters, ‘S’ in the earlier mark and ‘C’ in the contested sign, are pronounced in the same way by the relevant public.

Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 are identical.

The signs are visually similar to an average degree and aurally identical.

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). This is particularly relevant in the present case, given that the conflicting goods are identical.

The signs in dispute both have three letters; both are, consequently, short marks and it is considered that the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

Nevertheless, the differences between the signs are limited to their first letters and to some secondary aspects (e.g. the rather decorative scribble and the stylisation of the letter ‘Y’ in the earlier mark). Consequently, the fact that they coincide in two letters, as well as that the differing letters are phonetically identical lead to a finding of likelihood of confusion, especially taking into account the interdependence principle explained above and the fact that the conflicting goods are identical (23/10/2002, T‑388/00, ELS, EU:T:2002:260, by analogy). Furthermore, neither of the signs will be associated with any concept that would help the relevant public to safely differentiate between the signs.

Considering all the above, there is a likelihood of confusion on the part of the French‑ and Swedish-speaking parts 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 9 512 807. 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

Anna MAKOWSKA

Carlos MATEO PEREZ

Denitza STOYANOVA-VALCHANOVA

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.