HEIO | Decision 2558446 - Gica Textile Group s.r.l. v. KYUNG-AE PARK LEE
Date Published: Sep 28, 2017
OPPOSITION No B 2 558 446
Gica Textile Group s.r.l., via Mottola zona industriale km.2,100, 74015 Martina Franca (Ta), Italy (opponent), represented by Francesco Paolo Fumarola, Via Paretone Zona I, 109/B, 74015 Martina Franca, Italy (professional representative)
a g a i n s t
Kyung-Ae Park Lee, Paseo Taulat 283 4º 3ª, 08019 Barcelona, Spain (applicant), represented by Durán - Corretjer S.L.P., Còrsega 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative).
On 08/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 558 446 is upheld for all the contested goods.
2. European Union trade mark application No 13 942 859 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 13 942 859. The opposition is based on, inter alia, European Union trade mark registration No 13 257 662. 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.
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 the opponent’s European Union trade mark registration No 13 257 662.
- The goods
The goods on which the opposition is based are the following:
Class 25: Jackets, Jackets [clothing], Blousons, Mackintoshes, Clothing of leather, Jumpers, Hosiery, Pullovers, Cloaks, Ponchos, Topcoats and Shoulder scarves, Other than sportswear for playing golf and skiing and technical sportswear, in particular for playing golf and skiing.
The contested goods are the following:
Class 18: Handbags, canvas bags, leather handbags, knitted bags, small clutch purses, clutch bags, waterproof bags, travelling handbags, beach bags, evening bags, purses [handbags].
Class 25: Clothing, footwear, headgear.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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 opponent’s items of clothing in Class 25 are not only used to cover parts of the human body and to protect them against the elements, but are also articles of fashion.
All the contested types of handbags: handbags, canvas bags, leather handbags, knitted bags, small clutch purses, clutch bags, waterproof bags, travelling handbags, beach bags, evening bags, purses [handbags] in Class 18 are related to items of clothing in Class 25. This is because consumers are likely to consider these goods in Class 18 accessories that complement, for example, articles of outer clothing, as they can be closely co-ordinated with each other. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of items of clothing to directly produce and market related goods, such as handbags. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.
Contested goods in Class 25
The contested clothing includes, as a broader category, all the opponent’s goods. Since the Opposition Division cannot dissect ex officio the broad category of clothing, they are considered identical to the opponent’s goods.
The contested footwear serves the same purpose as some of the opponent’s goods, such as clothing of leather other than sportswear for playing golf and skiing and technical sportswear, in particular for playing golf and skiing, in that both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. 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 of leather and footwear. Therefore, the goods are similar.
Headgear and clothing of leather other than sportswear for playing golf and skiing and technical sportswear, in particular for playing golf and skiing are identical or very similar in nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing of leather. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, the contested headgear and the opponent’s clothing of leather are considered similar.
- 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.
- The signs
HEIO | |
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 the earlier mark is an European Union trade mark registration, this analysis must in principle extend to the whole EU. However, in situations where there is likelihood of confusion in a part of the EU and when justifiable for reasons of economy of procedure, such as to avoid examining specific pronunciations of marks in several languages, the Office’s analysis need not extend to the whole EU but may instead focus on only one part or parts where there is a likelihood of confusion.
Taking into account the pronunciations of both marks in several languages, the Opposition Division finds it appropriate in this case to focus the comparison of the signs on the Romanian-, Polish- and Swedish-speaking parts of the public.
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The earlier mark is a figurative mark consisting of the word ‘HEVO’ written in a stylised black italic script with four black dots depicted above the verbal element. The contested sign is a word mark, ‘HEIO’.
Since the contested mark consists of only one word, it has no elements that could be considered clearly more distinctive or more dominant than other elements. The verbal element ‘HEVO’ in the earlier mark, however, is – because of its size – visually more eye-catching and more distinctive than the purely decorative dots above it. Therefore, it is considered that ‘HEVO’ is the more dominant element of the earlier mark and also the more distinctive.
Visually, the signs coincide in the letters ‘HE*O’. They differ only in their third letters, ‘V’ of the earlier mark and ‘I’ of the contested sign, as well as in the additional four dots and the stylised italic script in which the earlier mark is depicted.
However, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
This principle is fully applicable to the present case, as the relevant public will read and pronounce the verbal element ‘HEVO’ in the earlier sign and will readily use it to refer to the mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘HE*O’, present identically in both signs. The pronunciation differs in the sound of the third letters of the signs, ‘V’ in the earlier mark and ‘I’ (which will be pronounced in the same way as the letter ‘j’ when it is placed between two vowels) in the contested sign.
Considering that the verbal element of each sign is formed of a total of four letters, of which three are the same and placed in the same order, with the only difference being in one letter in third place, the signs have a very similar rhythm and intonation when pronounced by the relevant public, as /hè-vo/ and /hè-jo/.
Therefore, the signs are aurally highly similar.
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.
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.
- Global assessment, other arguments and conclusion
Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR and 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The contested goods are partly identical and partly similar to the opponent’s goods. The degree of attention of the relevant public is deemed average.
The verbal element of the earlier mark, ‘HEVO’, and the contested sign, ‘HEIO’, differ in only one letter, placed in third position; consequently it is important to consider that, in terms of recognition and recall, the identity between the initial letters and the final letters of the marks is more important.
The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.
Taking into account that the visual degree of similarity between the marks is average, that the aural degree of similarity is high, that the degree of distinctiveness of the earlier trade mark is average and that the goods are identical and similar, the Opposition Division considers that there exists a likelihood that the marks will be confused on the market by, at least, the Romanian-, Polish- and Swedish-speaking parts of the public.
As stated above in section b) 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 13 942 859. It follows that the contested trade mark must be rejected for all the contested goods.
As this earlier right 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Zuzanna STOJKOWICZ | Cynthia DEN DEKKER | Jessica LEWIS |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.