OPPOSITION No B 2 932 914

Next Retail Limited, Desford Road, Enderby, Leicester, Leicestershire LE19 4AT, United Kingdom (opponent), represented by Marks & Clerk LLP, 15 Fetter Lane, London EC4A 1BW, United Kingdom (professional representative)

a g a i n s t

Shenzhen Beijiale E-Commerce Co., Ltd., 1401A-77-98, BLDG 8, Binhaizhichuang GDN, Huandong RD, Yuehai ST, Nanshan DIST, Shenzhen, People’s Republic of China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 17/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 932 914 is upheld for all the contested goods.

2. European Union trade mark application No 16 590 201 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods (Class 25) of European Union trade mark application No 16 590 201 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 17 607 474 for the figurative mark . It is noted that the opposition was initially based on the European Union trade mark application No 15 568 876 for the figurative mark , which, since the beginning of the opposition proceedings, has been divided, with the relevant classes for the present proceedings falling under the aforementioned trade mark registration. The opponent invoked Article 8(1)(b) and Article 8(5) 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 European Union trade mark registration No 17 607 474 for which no proof of use was requested.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Sweaters; shirts; clothing; trousers; outerclothing; skirts; waistcoats; coats; sports jerseys; overcoats; jackets; clothing of imitations of leather; pullovers; tee-shirts; kimonos; underwear; pajamas; corselets; underpants; brassieres; motorists' clothing; sweat-absorbent stockings; swimsuits; hats; hosiery; shawls; scarfs.

All of the contested goods are identical to the opponent’s goods, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods are included in, or overlap with, the opponent’s clothing or headgear.

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 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 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.

The earlier mark, consisting of a slightly stylized verbal element ‘next’, is meaningful in certain territories, for example in those countries where English is understood and spoken.

Furthermore, considering that the verbal element of the contested mark is ‘Nextmia’, it can be reasonably assumed that the English-speaking part of the relevant public will perceive and read the verbal element of the contested mark as the words ‘next’ and ‘mia’. This is because when perceiving a word sign, the consumers will break it down into elements which suggest a specific meaning or resemble words known to them (06/10/2004, T‑356/02, Vitakraft EU:T:2004:292, § 51; 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58), which in this case are the English word ‘next’ and a female name ‘Mia’, which is very common, including in countries where English is spoken and understood.

Due to the above findings, the similarities between the signs will be higher for the English-speaking public. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on that part of the public such as consumers in the United Kingdom, Ireland and Malta.

The common verbal element ‘NEXT’ will be understood as 1) as an adjective: (of a time) coming immediately after the time of writing or speaking; coming immediately after the present one in order, rank, or space; 2) as an adverb: on the first or soonest occasion after the present; immediately afterwards; (with superlative) following in the specified order; 3) as a noun: the next person or thing; 4) as a preposition: (archaic) next to or 4) as a determiner: (a next), West Indian, another (see e.g. https://en.oxforddictionaries.com/definition/next). Since none of those meanings have any immediate conceptual relation to the goods in question, the verbal element ‘NEXT’ is considered, contrary to the applicant’s claims, distinctive.

The second part of the verbal element of the contested mark will be perceived, as already stated above, as a female, common name ‘Mia’, which has the same distinctive character as its preceding element ‘Next’.

Visually, the signs coincide in the verbal element ‘NEXT’, which is the only verbal element of the earlier mark. The signs differ in their slight stylisations as well as in the additional last three letters ‘mia’, of the contested sign, which have no counterpart in the earlier mark.

The Opposition Division points out that when comparing signs in terms of their word elements, similarity may be found despite the fact that the letters are graphically portrayed in different typefaces, in italics or bold, in upper or lower case or in colour (18/06/2009, T-418/07, LiBRO, EU:T:2009:208; 15/11/2011, T-434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663; 29/11/2012, C-42/12 P, Alpine Pro Sportswear & Equipment, EU:C:2012:765, appeal dismissed).

Bearing in mind the above findings and the fact that the signs have identical beginnings, which is particularly relevant since consumers generally pay more attention to the beginnings of marks rather than the endings (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, §§ 64, 65), the Opposition Division considers the two signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‛next’ and differs in the sound of the verbal element ‘mia’ of the contested sign, placed at its end, which has no counterpart in the earlier mark. Nevertheless, considering that when pronounced, the beginning of a mark also plays a more essential part in striking the attention of the consumer than the ending, the marks in question are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Considering the above findings regarding the recognition of the element ‘Next’ in the contested sign and bearing in mind that despite the presence of the verbal element ‘mia’, the relevant public will still be aware of the semantic content of the word ‘Next’ when perceiving that sign as a whole. It is noted that the perception of ‘mia’ as a common female name does not change the perception of the meaning of the word ‘Next’ significantly.

Therefore, the signs are conceptually similar to at least an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16).

In the present case, the goods at issue have been found identical and are directed at the public at large, whose degree of attention will be average. The distinctiveness of the earlier mark is considered normal.

The marks at issue are similar due to their coincidence in the verbal element ‘NEXT’, which is the only verbal element of the earlier mark and is fully included at the beginning of the contested sign. While the slight stylization of the two signs and the remaining verbal element ‘mia’ in the contested sign will not be overlooked, these differences between the signs at issue are not sufficient to counteract the visual, aural and conceptual similarity between them, and as such do not allow the consumers to distinguish between them safely.

In addition, the Opposition Division notes, that it is a common practice for manufacturers/service providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product/service lines, or to endow their trade mark with a new, modernized image.

Accordingly, it is very likely in this case that the relevant consumer may perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (see by analogy 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, the public may attribute the same (or an economically linked) commercial origin for all the goods at issue.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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 17 607 474. It follows that the contested trade mark must be rejected for all the contested goods.

As the aforementioned earlier right 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 two earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). At the same time it is unnecessary to examine the evidence of use in relation to these other earlier rights as requested by the applicant and consequently filed by the opponent.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is also no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Besides, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Tu Nhi VAN

Renata COTTRELL

Marta Maria CHYLIŃSKA

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.