MOREFIT | Decision 2724030 - Adler Modemärkte AG v. Zhengsong Wu

Date Published: Sep 28, 2017

OPPOSITION No B 2 724 030

Adler Modemärkte AG, Industriestr. Ost 1-7, 63808 Haibach, Germany (opponent), represented by Adler Modemärkte AG Christina Hambeck-Joh, Industriestr. Ost  1-7

63808 Haibach, Germany (employee representative)

a g a i n s t

Zhengsong Wu, 2010 Foreign School,Shengzhi Department, No.4089, Shahe West Road,Nanshan Dist., Shenzhen,Guangdong,  People's Republic Of China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid,

Spain (professional representative).

On 10/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 724 030 is upheld for all the contested goods, namely:

        Class 25: Cyclists' clothing; bathing suits; sports jerseys; uniforms; sports singlets; caps [headwear]; hosiery; leggings [leg warmers]; gloves [clothing]; scarves; mantillas; shower caps; wedding dresses; cummerbunds; jerseys [clothing]; bathing trunks; bathing caps; footwear; ties [clothing].

2.        European Union trade mark application No 15 260 375 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 320.

 

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 260 375. The opposition is based on the European Union trade mark registration No 4 600 144. 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

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

Class 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 25:        Cyclists' clothing; bathing suits; sports jerseys; uniforms; sports singlets; caps [headwear]; hosiery; leggings [leg warmers]; gloves [clothing]; scarves; mantillas; shower caps; wedding dresses; cummerbunds; jerseys [clothing]; bathing trunks; bathing caps; footwear; ties [clothing].

Contested goods in Class 25

The contested cyclists' clothing; bathing suits; sports jerseys; uniforms; sports singlets; hosiery; leggings [leg warmers]; gloves [clothing]; scarves; mantillas; wedding dresses; cummerbunds; jerseys [clothing]; bathing trunks; ties [clothing] are included in the broader category of the opponent’s clothing. Therefore, these goods are identical.

The contested caps [headwear]; shower caps; bathing caps are included in the opponent’s broader category of headgear. These goods are identical. 

The contested footwear is identically included in the opponent’s specification.

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 found to be identical are directed at the public at large. The degree of attention of the relevant public is average.

3. The signs

fit & more
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 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 main verbal elements ‘fit’, ‘more’ present in both signs are meaningful in the English-speaking territories. Consequently, for this reason the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark composed of three elements ‘fit & more’. The verbal element ’fit’ will be perceived as referring to ‘being right or going in the right place’ (Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/fit). Although, the verbal element ‘fit’ present in both signs will be mainly used as a verb in relation to the relevant goods in class 25, for example, in the context: ‘this dress fits you well’, this word is neither descriptive nor lacking in distinctiveness for any of the relevant goods. It does not describe or even allude to any of their essential characteristics. Its distinctiveness is, therefore, normal.

The verbal element ‘more’ will be associated with a determiner that indicates ‘a greater amount of something than average’ (Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/more) and has a normal distinctiveness in relation to the goods in question.

The ampersand stands for the conjunction ‘and’ and its distinctiveness is normal in relation to the goods in question.

The contested sign is a figurative mark consisting of the word elements ‘more’ and ‘fit’ with the meanings referred to above. The word ‘fit’ is written in lowercase characters, in a fanciful way, in which the letter ‘f’ includes the last letter ‘e’ of the word ‘more’.

As regards the figurative elements of the sign (stylisation and positioning of the letters), account must be taken 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; 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). Although, the words ‘more’ and ‘fit’ create a fanciful figurative representation within the contested sign, the verbal elements, which are perfectly distinguishable, are the ones that will be used to refer to them.

The earlier mark, being a word mark, has no elements that could be considered more dominant (visually eye-catching) than other elements. Although in the contested sign the verbal element ‘more’ is slightly smaller in size than the word element ‘fit’, they create together a figurative element, in which both word elements are interdependent on each other. Consequently, there are no elements which are more dominant (visually eye-catching) than other elements despite a small difference in size between verbal elements ‘more’ and ‘fit’.

Visually, the signs are similar to the extent that they coincide in the verbal elements ‘fit’ and ‘more’. They differ in the symbol of ampersand ‘&’ of the earlier mark, the figurative representation of the contested sign and that the word sequence ‘more’ and ‘fit’ is inverted. The signs are, therefore, visually similar to a medium degree.

Aurally, the pronunciation of the marks coincides in the sound of ‘fit’ and ‘more’ present in both signs. The signs differ aurally in the element ‘&’ of the earlier mark. The order of the words ‘fit’ and ‘more’ is however reversed in the signs, which makes them aurally similar only to a medium degree than it would be the case if they were placed in the same order.

Conceptually, both marks do not convey any particular meaning because from the grammatical point of view they rather represent an unusual combination of words.  However, it cannot be denied that for the relevant public the signs contain two clearly recognizable verbal elements ‘fit’ and ‘more’, that each has a concept, as mentioned above (although their order is reversed in the contested sign). The reversed order of these words in the contested sign does not change the fact that for the relevant public there will be a conceptual association (link) between the signs, having regard to the above mentioned concepts lying behind the words ‘more’ and ‘fit’. Therefore, the signs are conceptually similar to a medium degree.

As the signs have been found similar in at least one of the comparison, the examination of the 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. 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.

5. Global assessment, other arguments and conclusion

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). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case the earlier mark has a normal distinctiveness and the goods are identical.

The marks are visually, aurally and conceptually similar to an average degree.

The similarities between the signs are on account of their normally distinctive verbal elements ‘fit’ and ‘more’, which are the only verbal elements in the contested sign.

Regarding the visual similarity which arises from identical terms being reproduced in both marks albeit as previously mentioned in a different order, it is important to bear in mind that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his or her mind. With this in mind, it is likely that the relevant consumer easily can imperfectly recollect ‘fit & more’ as ‘more fit’ and vice versa especially, since there is a conceptual link between the signs, no matter what order of the words is used.

It must be also noted that the goods in question have been found to be identical, which brings into consideration the principle of interdependence whereby a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and services and vice versa, which applies to the present case.

Consequently, although average consumers may be capable of detecting certain differences between the two conflicting signs, the likelihood that they might associate the signs with each other is very real.

From the wording of Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, it is possible that the relevant consumer may perceive the contested sign as a sub-brand, a variation of the earlier mark configured in a different way according to the type of goods that it designates. It is, therefore, conceivable that the target public may regard the goods designated by the contested sign as belonging to two ranges of goods coming, nonetheless, from the same undertaking, especially that in the present case the goods in question are identical. 

Therefore, having regard to the overall visual, aural and conceptual similarity produced by the main and distinctive verbal elements, ‘fit’ and ‘more’ in both marks, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public, and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 600 144. 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 from the above that the contested trade mark must be rejected for the goods found to be identical to those covered by the earlier trade mark.

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Liliya YORDANOVA

Monika CISZEWSKA

Robert MULAC

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.