OPPOSITION No B 3 052 405

X-Technology Swiss GmbH, Samstagernstr. 45, 8832 Wollerau, Switzerland (opponent), represented by Spieker & Jaeger, Kronenburgallee 5, 44139 Dortmund, Germany (professional representative)

a g a i n s t

Xinying Luo, Room 401, Building 11, Dafen Kangdaer Garden, Longgang District Shenzhen, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center, Vertas Gynéjų str. 16, LT‑01109 Vilnius, Lithuania (professional representative).

On 18/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 405 is partially upheld, namely for the following contested goods:

Class 18: School bags; credit card cases [wallets]; bags; card wallets [leatherware]; all-purpose sports bags; clutch bags; handbags; travelling bags; leather bags; cosmetic bags sold empty; backpacks; hip bags; trunks and travelling bags; sports packs; key cases; pocket wallets; purses.

Class 25: Tee-shirts; tops [clothing]; bottoms [clothing]; silk scarves; underwear; underpants; scarfs; outerclothing; clothing for babies; infants’ footwear; headgear for wear; gloves [clothing]; clothing; swimsuits; shirts; hosiery; skirts; trousers; dresses; shoes.

2. European Union trade mark application No 17 884 308 is rejected for all the above goods. It may proceed for the remaining goods, namely the following:

Class 18: Leather leads; dog clothing; dog leashes.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 884 308 for the word mark ‘Xidan’. The opposition is based on European Union trade mark registration No 4 019 998 for the word mark ‘Xitan’. 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.

a) The goods

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

Class 18: Trunks and travelling bags, rucksacks, bags.

Class 25: Articles of clothing and headgear.

The contested goods are the following:

Class 18: School bags; credit card cases [wallets]; leather leads; bags; card wallets [leatherware]; all-purpose sports bags; clutch bags; handbags; travelling bags; dog clothing; dog leashes; leather bags; cosmetic bags sold empty; backpacks; hip bags; trunks and travelling bags; sports packs; key cases; pocket wallets; purses.

Class 25: Tee-shirts; tops [clothing]; bottoms [clothing]; silk scarves; underwear; underpants; scarfs; outerclothing; clothing for babies; infants’ footwear; headgear for wear; gloves [clothing]; clothing; swimsuits; shirts; hosiery; skirts; trousers; dresses; shoes.

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.

Contested goods in Class 18

The contested school bags; bags; all-purpose sports bags; clutch bags; handbags; travelling bags; leather bags; cosmetic bags sold empty; backpacks; hip bags; trunks and travelling bags; sports packs; purses are identical to the opponent’s bags or trunks and travelling bags, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

The contested credit card cases [wallets]; card wallets [leatherware]; key cases; pocket wallets are similar to a low degree to the opponent’s bags, since they can be produced by the same undertakings, can be distributed through the same commercial channels and can target the same consumers.

The contested dog clothing; dog leashes; leather leads are dissimilar to all the goods on which the opposition is based, since they differ in distribution channels, are neither complementary nor in competition and are usually produced by different undertakings. These goods will, in principle, target pet owners and their points of sales will be pet stores.

Contested goods in Class 25

The contested tee-shirts; tops [clothing]; bottoms [clothing]; silk scarves; underwear; underpants; scarfs; outerclothing; clothing for babies; headgear for wear; gloves [clothing]; clothing; swimsuits; shirts; hosiery; skirts; trousers; dresses are identically contained in both lists (including synonyms) or included in the broad categories of the opponent’s articles of clothing and headgear. Therefore, they are identical.

Footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets and target the same public. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the contested infants’ footwear; shoes are similar to the opponent’s articles of clothing.

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 varying degrees) are directed at the public at large. The degree of attention paid to the goods subject to purchase is deemed to be average.

c) The signs

Xitan	Xidan
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 words ‘Xitan’ and ‘Xidan’ constituting the two signs in question are meaningless for the relevant public and, therefore, they have a normal degree of distinctiveness. In addition, in view of the foregoing, a conceptual comparison is not possible, and therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

The contested sign and the earlier mark are word marks consisting of five letters each. Visually and aurally, the signs coincide in the letters/sounds ‘Xi*an’. They differ only in one letter/sound, namely ‘t’ versus ‘d’, written in the middle of the signs, the pronunciation of which is similar. Therefore, the signs are visually and aurally highly 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

The goods are partly identical, partly similar (to varying degrees) and partly dissimilar. They are directed at the public at large whose degree of attention is deemed to be average.

The earlier mark is of average distinctive character.

As explained in section c) of this decision, the signs are considered visually and aurally highly similar due to the fact that they differ only in one letter, positioned in their middle parts between identical strings of letters. The conceptual comparison is not possible and does not influence the outcome. Consequently, consumers will not be able to rely on any conceptual references in order to safely distinguish between the marks.

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).

Moreover, 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In view of the foregoing, the differences between the signs are clearly not enough to offset their overwhelming similarities and the Opposition Division finds that there is a likelihood of confusion on the part of the public, even in relation to goods that are similar to a low degree, and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 4 019 998.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Manuela RUSEVA

Meglena BENOVA

Martina GALLE

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.