FLOSEED | Decision 2743311
Date Published: Sep 22, 2017
OPPOSITION No B 2 743 311
Sovenca, S.L., Polígono Raposal, 47, 26580 Arnedo (La Rioja), Spain (opponent), represented by María Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative)
a g a i n s t
Yaping Hu, No. 49, Baogulingjiao, Shangping Village, Huyuan Town, Jinyun, Zhejiang, People’s Republic of China (applicant), represented by Rolim, Mietzel, Wohlnick, & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative)
On 15/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 743 311 is upheld for all the contested goods.
2. European Union trade mark application No 15 590 921 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 15 590 921 . The opposition is based on European Union trade mark registration No 13 427 943 ‘FLOSSY STYLE’ and Spanish trade mark registration No 1 243 099 ‘FLOSSY’. The opponent invoked Article 8(1)(b) and 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 earlier Spanish trade mark No 1 243 099 ‘FLOSSY’.
- The goods
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear (except orthopedic); excluding insteps and fake soles for footwear, headgear; all of these of the included in this class.
The contested goods are the following:
Class 25: Clothing; Baby layettes for clothing; Swim suits; Waterproof jackets; Waterproof pants; Tights; Dresses; Dance costumes; Shoes; Socks; Gloves; Waistbands; Trouser straps; Suspenders; Underwear; Hats; Caps; Neckties; Leather belts [clothing]; Wedding dresses; Yoga pants.
Contested goods in Class 25
The contested shoes fall under the broader term of the opponent’s footwear (except orthopedic); excluding insteps and fake soles for footwear; all of these of the included in this class. These goods are identical.
Clothing; all of these of the included in this class is identically included in both lists.
The contested baby layettes for clothing; swim suits; waterproof jackets; waterproof pants; tights; dresses; dance costumes; socks; gloves; waistbands; trouser straps; suspenders; underwear; neckties; leather belts [clothing]; wedding dresses; yoga pants fall under the general term of the opponent’s clothing; all of these of the included in this class. These goods are identical.
The contested hats; caps fall under the general term of the opponent’s headgear; all of these of the included in this class. These goods are identical.
- 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.
- The signs
FLOSSY | |
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 sign is the word mark ‘FLOSSY’. As a word mark it has no element that could be considered more dominant than other elements. The word ‘FLOSSY’ is meaningless in Spanish, therefore, the distinctiveness of the earlier mark is average.
The contested sign is the figurative mark ‘FLOSEED’. Its figurative elements concern only the colour purple, a rather standard typeface and the slightly unusual representation of the letters ‘O’ and ‘D’. The word ‘FLOSEED’ is meaningless in Spanish and has, therefore, a normal distinctiveness. The contested sign has no element that could be considered to be more eye-catching than other elements.
Visually, the signs coincide in the string of their first four letters ‘FLOS’. They differ in the ending of this word, namely ‘SY’ in the earlier mark and ‘EED’ in the contested sign. Furthermore, they differ in the colour and typeface of the contested mark, which are rather standard. As regards their distinctive verbal elements, the signs coincide in four out of six/seven letters. Overall, the signs are visually similar to an at least average degree.
Aurally, in Spanish the pronunciation of the signs coincides in the sound of the letters ‘FLOS’, present identically at the beginning of both signs. The pronunciation differs in the sound at the end, namely in ‘Y’ (pronounced as ‘ɪ’) and ‘EED’ (pronounced as (ɛd) or (ət)). Therefore, the signs are phonetically similar to an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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, even reputation. 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.
- Global assessment, other arguments and conclusion
The contested goods are identical to those of the earlier mark. The level of attention of the relevant public is average. The distinctiveness of the earlier mark is deemed to be average.
The signs are visually similar to an at least average degree, as they coincide in their first four out of six/seven letters. The common letters are placed at the beginning of the signs, where the attention of the public is usually higher. Aurally, the marks are similar to an average degree. The signs have no concepts which could help to tell them apart.
The differences at the end of the signs, the colour and the minor figurative elements of the contested sign are not sufficient to differentiate the signs, even in relation to goods in Class 25, which are usually bought on sight.
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 earlier Spanish trade mark No 1 243 099. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier Spanish trade mark No 1 243 099, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier Spanish trade mark No 1 243 099 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).
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 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Octavio MONGE GONZALVO | Julia SCHRADER | Denitza STOYANOVA-VALCHANOVA |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.