funky socks | Decision 2728387

Date Published: Sep 25, 2017

OPPOSITION No B 2 728 387

Licencias Y Exclusivas Textiles S.A., Avenida de Balmes, 16, 08700 Igualada, Spain (opponent), represented by Oficina Ponti SLP., Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Brandlab AG, Bundesstrasse 3, 6300 Zug, Switzerland (holder), represented by Stumpf Patentanwälte PARTGMBB, Alte Weinsteige 73, 70597 Stuttgart, Germany (professional representative)

On 24/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 728 387 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 268 349, namely against all the goods and services in Classes 25 and 35. The opposition is based on European Union trade mark registration No 12 335 841. 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.

1. The goods and services

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

Class 25: Stockings and socks; Clothing for gentlemen, ladies and children; Pyjamas; Lingerie and swimwear; Waist belts; Headwear and footgear.

Class 35: Wholesaling and retailing in shops, and via global communications networks, of perfumery and cosmetics, textiles, textile goods for the home, bed covers, table covers, stockings, socks, clothing for men, women and children, pyjamas, underwear, bath linen, belts, headgear and footwear.

The contested goods and services are the following:

Class 25: Clothing, footwear, socks, headgear.  

Class 35: Advertising; marketing; telemarketing; public relations; organization of industrial and commercial exhibitions; office functions; business management and organization consultancy; accounting, account auditing and review; business management; provision of commercial information via global computer networks; business administration; consultancy for carrying out commercial operations; collection, processing and systematization of data in computer databases; computerized file management; e-commerce services, namely provision of product information via global computer or telematic networks for advertising or sales purposes; retail trading via global electronic networks (the Internet); consulting services for all of the above-mentioned services.  

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

2. 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 and services considered to be identical are directed at the public at large (for example clothing) and at business customers with specific professional knowledge or expertise (for example business management).

The degree of attention may, therefore, vary from average to high.

3. The signs

EASY SOCKS BY PUNTO BLANCO
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The coinciding element ‘SOCKS’ is commonly understood in part of the European Union as referring to a garment for the foot, either because the consumers understand English or because they have similar equivalent words in their languages, for example Danish (sokker), Dutch, (sokken), German (Socken). Given this, in relation to some relevant goods such as clothing; footwear; socks this element is purely descriptive.

However, for other parts of the public, such as the French-, Greek-, Italian-, Polish-, Portuguese- and Romanian-speaking parts, this element has no meaning and is distinctive for both the relevant goods and services. The Opposition Division will therefore first examine the opposition in relation to this part of the public, which is the best scenario in which the opponent’s case can be considered.

The earlier mark is a word mark composed of five words ‘EASY SOCKS BY PUNTO BLANCO’, which are meaningless to the relevant public in relation to the relevant goods. Being a word mark, it has no elements that are more visually outstanding than others.

The contested sign is a figurative mark composed of a white guitar placed on the right side of a rectangular black background. On the lower bout of the guitar the meaningless words ‘FUNKY SOCKS’ are placed in different shades of dark grey. The letters vary in size, but are depicted in a fairly standard typeface. The guitar is the element that is considered visually outstanding in the contested sign, caused by the fact that the word elements are smaller and it is in white placed on a black background. The black rectangular is considered non-distinctive, as it is a banal feature often used as a background, to which hardly any distinctive character can be attributed.

Visually, the signs coincide in ‘SOCKS’. However, they differ in the word ‘EASY’ and the expression ‘BY PUNTO BLANCO’ of the earlier mark, the word ‘FUNKY’, the colours, the stylisation of the words and the other elements of the contested sign, namely the white guitar on a black rectangular.

Therefore, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs only coincides in the word element ‘SOCKS’. However, it differs in the elements ‘EASY’ and ‘BY PUNTO BLANCO’ of the earlier mark and ‘FUNKY’ of the contested sign.

Consumers tend to focus on the first elements of the signs, which are totally different in the present case.

Therefore, the signs are aurally similar to a very low degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory on which this examination is focused. 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 to a certain extent in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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. The earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the French-, Greek-, Italian-, Polish-, Portuguese- and Romanian-speaking public, on which the present examination is focused. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

When determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison 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, ‛Sabel’, EU:C:1997:528 § 23)

In the present case, the goods and services are assumed to be identical and the degree of attention paid by the relevant public varies from average to high. The marks are visually and aurally similar to a very low degree. Conceptually, the signs are not similar.

It should be noted that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

In the present scenario, contrary to the opponent’s arguments, the coincidence between the signs is confined to a five letter word, placed in second position in both marks. The opponent compares only the elements ‘EASY SOCKS’ versus ‘FUNKY SOCKS’ of the signs, not taking account of the signs a whole and argues that they are therefore aurally and visually highly similar. However, the considerable visual and aural differences between the signs caused by all the differentiating elements as described above are particularly relevant when assessing the overall impression and the possible likelihood of confusion between them.

Moreover, the signs differ entirely in their structure; the earlier mark being a word mark composed of five words whereas the contested mark is a figurative mark in which the only two word elements are less dominant.

Also taking into account the lack of conceptual similarity, the Opposition Division considers that, contrary to the opponent’s arguments and despite the assumed identity of the goods and services in question, the differences between the marks are sufficient to avoid any likelihood of confusion, even when the degree of attention of the relevant public is average.

Considering all the above, there is no likelihood of confusion on the part of the French-, Greek-, Italian-, Polish-, Portuguese- and Romanian-speaking part of the public.

This absence of a likelihood of confusion even more so applies to the part of the public for which the element ‘SOCKS’ is non-distinctive. This is because as a result of the non-distinctive character of that element, that part of the public will perceive the signs as even less similar.  

Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ioana MOISESCU

Cynthia DEN DEKKER

Loreto URRACA LUQUE

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.