LayZee | Decision 2729468 - ASTRATEX s.r.o. v. Delroy Anthony Rennalls
Date Published: Sep 28, 2017
OPPOSITION No B 2 729 468
Astratex s.r.o., Kubelikova 1224/42, 13000 Praha 3, Zizkov, Czech Republic (opponent), represented by Milan Škoda, Nahořanská 308, 549 01 Nové Město nad Metují, Czech Republic (professional representative)
a g a i n s t
Delroy Anthony Rennalls, Brehmstr. 36, 30173 Hannover, Germany (applicant), represented by Nahme & Reinicke, Leisewitzstr. 41-43, 30175 Hannover, Germany (professional representative).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 729 468 is upheld for all the contested goods, namely:
Class 25: Clothing, namely, Shirts, Tee-shirts, Sweat shirts, Tank tops, Headgear, Hats, Footwear, Socks.
2. European Union trade mark application No 15 310 964 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 310 964, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 14 224 901. 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 goods
The goods on which the opposition is based are the following:
Class 25: Ladies’ underwear, men’s underwear, bathing suits, dressing gowns, nightie, stockings, tights, T-shirts, singlets, straps for ladies’ lingerie.
The contested goods are the following:
Class 25: Clothing, namely, shirts, tee-shirts, sweat shirts, tank tops, headgear, hats, footwear, socks.
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.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
Contested goods in Class 25
The contested clothing, namely, tee-shirts are identically contained in the opponent’s list of goods (including synonyms).
The contested clothing, namely, shirts, tank tops, sweat shirts are types of clothing for covering the human torso. The opponent’s t-shirts also serve to cover the torso. They differ only in their style. These goods have similar natures and purposes, namely being clothes that are meant to be worn on the torso, and they have the same method of use. They can have the same producers, end users and distribution channels. Therefore, these goods are similar to a high degree.
The contested clothing, namely, socks are garments to cover the feet, reaching to between the ankle and the knee. The opponent’s stockings are close-fitting garments made to cover the foot and part or all of the leg. These goods have similar natures and purposes, namely being garments that are meant to be worn on the foot and cover part of the leg, and they have the same method of use. They can have the same producers, end users and distribution channels. Therefore, these goods are similar to a high degree.
The contested clothing, namely, headgear, hats are items that are worn on one’s head. The opponent’s t-shirts are elements of clothing that serve to cover the torso. They have the same purpose of covering the human body and protecting it from the elements, and they serve as fashion articles, possibly matching an outfit, and for these reasons they are sometimes chosen to complement other clothing. They can coincide in their producers, end users and distribution channels. Therefore, they are similar.
The contested clothing, namely, footwear are items that are worn on one’s feet. The opponent’s t-shirts are elements of clothing that serve to cover the torso. These goods have the same purpose, as they are both used to cover and protect parts of the human body and for fashion. They can coincide in their producers, end users and distribution channels. Therefore, they are 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 to various degrees are directed at the public at large.
The degree of attention is considered average.
- The signs
LayCee | LayZee |
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).
Both signs are word marks consisting of one word, namely ‘LayCee’ (the earlier mark) and ‘LayZee’ (the contested sign).
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 Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public to which neither the signs themselves nor their elements (i.e. ‘Lay’, ‘Cee’ and ‘Zee’) convey any meaning, for example the Czech-, German-, Hungarian-, Polish- and Slovak-speaking parts of the public.
Neither of the signs, each consisting of one word, has any elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.
Visually, the signs are both composed of six letters and they coincide in their first three letters, ‘Lay’, and their endings, ‘ee’. However, the signs differ in their fourth letters, namely ‘C’ (the earlier sign) and ‘Z’ (the contested sign). The manner in which the signs are depicted is identical, as the first and fourth letters are in upper case (and the rest of the letters are in lower case).
Therefore, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛lay*ee’, present identically in both signs. The pronunciation differs, for at least a part of the relevant public, in the sound of their fourth letters, namely ‛c’ (the earlier sign) and ‛z’ (the contested mark). Furthermore, the pronunciation of these differing letters is very similar. The signs’ lengths and rhythms are identical.
Therefore, the signs are aurally at least highly similar.
Conceptually, neither of the signs (or their parts) 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.
- 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
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 goods are identical and similar to various degrees, and they target the public at large, whose degree of attention is average. The signs are visually similar to a high degree and aurally at least highly similar. The conceptual comparison of the signs is not possible as explained above. Furthermore, the earlier mark has a normal degree of distinctiveness.
The first element of the earlier mark, ‘Lay’, and its ending, ‘ee’, are identically included in the contested sign, which results in a high degree of visual and aural similarity between the marks. The differences between the signs are confined to their fourth letters (i.e. ‘C’ versus ‘Z’, both depicted as upper case letters).
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).
Therefore, a significant part of the relevant public, when encountering identical or similar (to various degrees) goods under the marks in question, is likely to believe that the goods come from the same undertaking or from economically linked undertakings, also taking into account that, for a part of the public, neither of the signs has a meaning that could help consumers to distinguish between the signs, and that the degree of attention is average.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public to which the signs do not convey any meaning, for instance the Czech-, German-, Hungarian-, Polish- and Slovak-speaking parts of the public, and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 224 901. 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.
It follows that the contested trade mark must be rejected for all the contested goods.
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
Natascha GALPERIN | Michal KRUK | Judit NÉMETH |
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.