OPPOSITION No B 3 101 755

Longworth Industries, Inc, 565 Air Tool Drive, Suite K, 28387, Southern Pines, United States of America (opponent), represented by Womble Bond Dickinson (UK) LLP, 1 Whitehall Riverside, LS1 4BN, Leeds, United Kingdom (professional representative)

a g a i n s t

JianEn Xie, No. 139, QianCuo, XiBian Village, PingHai Town, XiuYu District, 351100 PuTian City, FuJian Province, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 08/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 101 755 is partially upheld, namely for the following contested goods:

Class 18: Bags for sports; bags; school satchels; backpacks; pocket wallets; shopping bags; attaché cases; handbags; briefcases.

Class 25: Shoes; boots; sports shoes; sports shirts; mountaineering shoes; tights; hosiery; athletic uniforms; sport stockings; hiking boots; climbing boots [mountaineering boots]; sports vests; play suits; T-shirts; sweat shorts; sports jackets; rainwear; men's and women's jackets, coats, trousers, vests; track jackets; dust coats.

2. European Union trade mark application No 18 093 903 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 093 903 (figurative mark), namely against all the goods and services in Classes 18, 25 and 35. The opposition is based on international trade mark registration No 1 369 006 designating the European Union ‘XGO’ (word 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.

a) The goods and services

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

Class 25: Shirts; t-shirts; hooded sweat shirts; pullovers; pants; underwear; base layers, namely, tops and bottoms as clothing; compression garments for athletic or other non-medical use, namely, tops and bottoms; caps being headwear; balaclavas.

The contested goods and services are the following:

Class 18: Trunks [luggage]; bags for sports; umbrellas; travelling bags; bags; school satchels; travelling trunks; backpacks; pocket wallets; shopping bags; attaché cases; handbags; briefcases; pouch baby carriers; mountaineering sticks; leather leashes; clothing for pets.

Class 25: Shoes; boots; sports shoes; sports shirts; mountaineering shoes; tights; hosiery; athletic uniforms; sport stockings; hiking boots; climbing boots [mountaineering boots]; sports vests; play suits; T-shirts; sweat shorts; sports jackets; rainwear; men's and women's jackets, coats, trousers, vests; track jackets; dust coats.

Class 35: Advertising; commercial and industrial management assistance; sales promotion services for third parties; relocation services for businesses; import-export agencies; marketing services; procurement services for others [purchasing goods and services for other businesses]; price comparison services; secretarial services; sales promotion for others; commercial administration of the licensing of the goods and services of others; outdoor advertising.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 bags for sports; bags; school satchels; backpacks; pocket wallets; shopping bags; attaché cases; handbags briefcases are similar to the opponent’s shirts. They usually coincide in producer, relevant public and distribution channels. According to the case-law, goods such as shoes, clothing, hats or handbags may, in addition to their basic function, have a common aesthetic function by jointly contributing to the external image (‘look’) of the consumer concerned (e.g. 27/09/2012, T‑443/05, El Corte Inglés v OHIM – Bolaños Sabri, ECLI:EU:T:2012:502, § 76). In the present case, the same conclusion may be drawn for the aforesaid contested goods in Class 18 and the opponent’s goods.

The contested trunks [luggage]; umbrellas; travelling bags; travelling trunks; pouch baby carriers; mountaineering sticks; leather leashes; clothing for pets are dissimilar to the opponent’s goods in Class 25, namely shirts; t-shirts; hooded sweat shirts; pullovers; pants; underwear; base layers, namely, tops and bottoms as clothing; compression garments for athletic or other non-medical use, namely, tops and bottoms; caps being headwear; balaclavas. These goods have no points of contact. They differ not only in their nature and purpose, but also in their distribution channels, producers and method of use. Furthermore, they are not in competition.

Contested goods in Class 25

The contested sports shirts; tights; hosiery; athletic uniforms; sport stockings; sports vests; play suits; sweat shorts are identical to the opponent’s shirts; T-shirts; underwear, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested sports jackets; rainwear; men's and women's jackets, coats, trousers, vests; track jackets; dust coats are similar to the opponent’s shirts. The have the same nature and purpose, and also often coincide in their distribution channels, producers and method of use. Furthermore, they are complementary.

The contested shoes; boots; sports shoes; mountaineering shoes; hiking boots; climbing boots [mountaineering boots] are similar to the opponent’s shirts. They have the same purpose. They usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 35

The contested advertising; commercial and industrial management assistance; sales promotion services for third parties; relocation services for businesses; import-export agencies; marketing services; procurement services for others [purchasing goods and services for other businesses]; price comparison services; secretarial services; sales promotion for others; commercial administration of the licensing of the goods and services of others; outdoor advertising are dissimilar to the opponent’s goods in Class 25. These goods and services have no points of contact. It should be noted that goods are tangible and services are intangible. They differ not only in their nature and purpose, but also in distribution channels, producers and method of use. Furthermore, they are neither in competition nor complementary.

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 are directed at the public at large. The degree of attention is considered to be average.

c) The signs

XGO
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 ‘XGO’ of the earlier mark and ‘XGGO’ of the contested sign are meaningless for the relevant public and, therefore, they are distinctive.

The letters in the contested sign are slightly stylised. This stylisation is very commonplace and plays a marginal role in the comparison.

The contested sign contains an abstract figurative element which, after a mental step is made, could be perceived, by a part of the public, as a fanciful depiction of a profile of a fox, dog or wolf. As it is not banal, it is distinctive. In this regard it should be also noted that 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).

Visually, the signs coincide in ‘XGO’/’XG*O’. However, they differ in the additional letter ‛**G*’ of the contested sign. Furthermore, the signs differ in the slight stylisation of the letters in the contested sign and its figurative element as described above.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincide in the sound of the letters ‘XGO’ of the earlier mark and ’XG*O’ of the contested sign. The pronunciation differs in the sound of the letter ‛**G*’ of the contested sign, which has no counterpart in the earlier mark. It must be noted that in some relevant languages the double letter ‘GG’ will be pronounced as a single letter ‘G’.

Therefore, the signs are aurally highly similar, if not identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory (those who will not see any meaning in the figurative element of the contested sign). Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. With regard to the remaining part of the public in the relevant territory, which will perceive the meaning of the figurative element of the contested sign as explained above and the other sign without having any meaning, 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

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods are partly identical and partly similar. These goods are directed at the public at large whose degree of attention is average.

The signs are visually similar to an average degree and aurally similar to a high degree, if not identical. As stated above, the signs are either not conceptually similar or the conceptual comparison remains neutral. Furthermore, the earlier mark has a normal degree of distinctiveness.

The signs coincide in ‘XGO’ of the earlier mark and ’XG*O’ of the contested sign. However, they differ in the letter ‛**G*’ of the contested sign. Furthermore, the signs differ in the stylisation of the letters in the contested sign and its figurative element as described above. The two latter differences are either marginal or secondary. It is therefore considered that the differences between the marks are clearly not capable to outweigh the visual and aural similarities 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).

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 369 006 designating the European Union.

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

The rest of the contested goods and services 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 and services 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

Vít MAHELKA

Michal KRUK

Chantal VAN RIEL

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.