OPPOSITION No B 3 079 444

The H.D. Lee Company, Inc., 3411 Silverside Road, 19810 Wilmington, United States of America (opponent), represented by Cooley (UK) LLP, Dashwood 69 Old Broad Street, London EC2M 1QS, United Kingdom (professional representative)

a g a i n s t

Yifan Li, Via Napoleone III, 65, 00185 Roma, Italy (applicant).

On 13/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 079 444 is upheld for all the contested goods.

2. European Union trade mark application No 18 020 523 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 of European Union trade mark application No 18 020 523 for the word mark ‘LEEYO JEANS’. The opposition is based on European Union trade mark registration No 12 066 635 for the word mark ‘LEE’. The opponent invoked Article 8(1)(b) EUTMR. The opponent also initially invoked, and subsequently waived, 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.

a) The goods

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

Class 25: Jeans; clothing, footwear and headgear made wholly or partly of denim.

The contested goods are the following:

Class 25: Clothing; footwear; headgear.

The contested clothing; footwear; headgear include, as broader categories, the opponent’s clothing, footwear and headgear made wholly or partly of denim. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

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 average.

c) The signs

LEE	LEEYO JEANS
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 Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Therefore, the contested sign, although composed of one verbal element, ‘LEEYO’, will be perceived by the English-speaking public as a combination of two elements: ‘LEE’, which refers, inter alia, to an English masculine or feminine name’ (Collins English Dictionary https://www.collinsdictionary.com/dictionary/english/lee) and ‘YO’, which refers to an exclamation used to greet people or to get their attention (Collins English Dictionary https://www.collinsdictionary.com/dictionary/english/yo). Since these terms are not directly related to the relevant goods or their characteristics, they are distinctive.

Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The element ‘JEANS’ of the contested sign is a widely used term in the fashion sector referring to garments of a twilled cotton cloth (Oxford English Dictionary https://www.oed.com/view/Entry/100960?redirectedFrom=jeans#eid). As it is descriptive of the material of which the clothing, footwear, headgear covered by the contested sign are or could be made (18/05/2016, R 1777/2015-2, JEANS ONLY (fig.) / ONLY, § 33; 10/11/2011, R 1022/2010-2 AMICIJEANS (fig.) / AMICHI (fig.) and others, § 19; 14/09/2000, R 0153/2000-1, ONLY JEANS WEAR, § 12; and, by analogy, 13/07/2004, T‑115/03, Gas Station, EU:T:2004:236, § 34), it lacks any distinctive character in relation to these goods.

The element ‘LEE’ in the earlier mark will be perceived as a name as explained above, and, therefore, is normally distinctive.

Visually and aurally, the signs coincide in ‘LEE’ and its sound. This element constitutes the entire earlier mark and the first component of the contested sign. However, the signs differ in the distinctive component ‘YO’ of ‘LEEYO’ and the non-distinctive element ‘JEANS’ in the contested sign.

Taking into account that 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, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. Therefore, the fact that the contested sign reproduces the only element of the earlier mark as its first component will make a strong impact on the consumers’ perception of the signs.

Consequently, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as a reference to the same notion of ‘LEE’, which in the contested sign is emphasized by the addition of the exclamation ‘YO’, the signs are conceptually highly similar. The presence of the element ‘JEANS’ does not alter this conclusion given that it is non-distinctive in the contested sign.

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 claimed that ‘the earlier ‘LEE’ mark is highly distinctive in relation to the goods at issue and that it is objectively inherently distinctive’ but did not file any evidence in order to prove the claim of enhanced distinctiveness.

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

In the present case, the goods are identical and target the public at large whose level of attention is average. The signs are visually and aurally similar to an average degree, and conceptually similar to a high degree. The distinctiveness of the earlier mark is normal.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

It is common in the clothing sector for the same mark to be configured in various different ways according to the type of product which it designates. It is also common for the same clothing manufacturer to use sub-brands, that is to say signs that derive from a principal mark and which share with it a common dominant element, in order to distinguish the various lines from one another. In such circumstances it is conceivable that the targeted public may regard the clothing designated by the conflicting marks as belonging to two distinct ranges of products coming from the same manufacturer (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that 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 12 066 635. It follows that the contested trade mark must be rejected for all the contested goods.

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, 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

Helen Louise MOSBACK

Marzena MACIAK

Eva Inés PÉREZ SANTONJA

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.