OPPOSITION No B 2 917 048

Ory International 1964 S.L., Poligono Industrial Toses, C/Amsterdam 4, 43870 Amposta / Tarragona, Spain (opponent), represented by Alesci Naranjo Propiedad Industrial SL, Calle Paseo de la Habana 200, 28036 Madrid, Spain (professional representative)

a g a i n s t

Chaarex International Import & Export B.V., Twiskeweg 91, 1511BW Oostzaan, The Netherlands (applicant), represented by Joep Mens Trademark Company B.V., Slotlaan 379, 3701GZ Zeist, The Netherlands (professional representative).

On 09/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 917 048 is upheld for all the contested goods.

2. European Union trade mark application No 16 391 609 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 391 609 for the figurative mark , namely against all the goods in Class 25. The opposition is based on, inter alia, Spanish trade mark registration No 2 728 209 for the figurative mark . 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 728 209.

a) The goods

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

Class 25: Corsetry, lingerie and swimsuits, dresses, boots, shoes, slippers, trousers, t-shirts, socks, tights and socks.

The contested goods are the following:

Class 25: Clothing; footwear; hats.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, 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.

The contested clothing includes, as a broader category, the opponent’s dresses, trousers, t-shirts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested footwear includes, as a broader category, the opponent’s boots, shoes, slippers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested hats and the opponent’s items of clothing dresses, trousers, t-shirts are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements, and target the same public. Furthermore, hats are seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason are sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Moreover, many manufacturers and designers will design and produce both dresses, trousers, t-shirts and hats. Taking all these factors into account, the contested hats and the opponent´s dresses, trousers, t-shirts are considered similar to an average degree.

b) 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 or similar to an average degree are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 consisting of the verbal element ‘ORY’ written in bold upper-case cyan letters in a standard typeface. The verbal element ‘ORY’ has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a figurative mark consisting of the verbal element ‘ORYX’ written in upper-case brown letters in a fairly standard typeface below the brown silhouette of a jumping antelope. The figurative element has no meaning in connection with the relevant goods and is therefore distinctive. The verbal element ‘ORYX’ has no meaning for the relevant public and is, therefore, distinctive.

Neither the earlier mark nor the contested sign have any element that could be considered clearly more dominant than other elements.

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).

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.

Visually, the signs coincide in the letters ‘O-R-Y’ in the same position and sequence. These letters make up the whole of the earlier mark and the initial three out of four letters of the verbal element of the contested sign. They differ in the last letter ‘X’ of the contested sign, in the colours (cyan in the earlier mark and brown in the contested sign) and in the figurative element of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‘O-R-Y’ in the same position and sequence. These sounds make up the whole of the earlier mark and the initial three out of four sounds of the contested sign. They differ in the sound of the last letter ‘X’ of the contested sign.

Therefore, the signs are similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element 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.

d) 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.

e) Global assessment, other arguments and conclusion

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).

The goods have been found identical or similar to an average degree. The signs are visually similar to an average degree, aurally similar to a high degree and not conceptually similar. The degree of attention is average and the earlier mark has a normal level of distinctiveness.

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).

Although the signs are more similar aurally than visually, they have been found to be visually similar to an average degree, which is especially significant since in clothes shops customers can generally 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 an important 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 similarity between the signs is particularly relevant when assessing the likelihood of confusion between them.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 728 209. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 2 728 209 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Catherine MEDINA

Helen Louise MOSBACK

Begoña URIARTE VALIENTE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.