OWN | Decision 2700006 - Qing Li v. Djeylan Nadjari
Date Published: Oct 1, 2017
OPPOSITION No B 2 700 006
Qing Li, Félix Rodríguez de la Fuente, 81, 1º, 03206 Elche (Alicante), Spain (opponent), represented by Sonia del Valle Valiente, c/ Miguel Angel Cantero Oliva, 5, 53, 28660 Boadilla del Monte (Madrid), Spain (professional representative)
a g a i n s t
Djeylan Nadjari, Brogatan 16, 17441 Sundbyberg, Sweden (applicant), represented by Vamo Varumärkesombudet AB, Kungsportsavenyen 3, 411 36 Göteborg, Sweden (professional representative).
On 24/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 700 006 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 of European Union trade mark application No 15 081 466, namely against all the goods in Class 25. The opposition is based on European trade mark registration No 7 556 111 and on Spanish trade mark registration No 2 973 440. 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 signs
Earlier trade marks | Contested sign |
The relevant territory is the European Union for the earlier mark No 7 556 111 and Spain for the earlier mark No 2 973 440.
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 marks are figurative signs which consist of the central verbal element ‘OWN’ written in fairly standard characters in dark blue. On the left hand side of the marks next to the element ‘OWN’, there is a figurative element represented in pale blue. Below the letters ‘W’ and ‘N’ to the right, in a smaller size, the word ‘personality’ is written in lower case letters in pale blue. The non-English-speaking part of the public will not attribute any meaning to the verbal elements included in these marks. However, the part of the public with sufficient knowledge of English, will understand the verbal elements ‘OWN PERSONALITY’ as the combination of characteristics or qualities that form and individual´s character. Be as it may be, these elements have no relation to the relevant goods therefore they have an average degree of distinctive character. The figurative element conveys no meaning for the relevant public and it is therefore distinctive.
The word ‘OWN’ and the figurative element included in the earlier marks are the co-dominant elements as they are the most eye-catching. The element ‘personality’, due to its size and position plays a secondary role.
On the other hand, the contested sign is a figurative mark which consists of a circle with a white background outlined in black. Inside of it, black lines forming a zig zag are depicted. Since these elements are fanciful and do not have any meaning for the relevant public, they are distinctive.
The contested sign has no elements that could be considered clearly more dominant than other elements.
In its observations, the opponent states that the contested sign is the word ‘OWN’ and that those of the earlier marks are ‘OWN’ and ‘personality’. It adds that there is a coincidence between the marks because the contested application reproduces phonetically all letters included in the opponent´s signs so the pronunciation is the same in both cases. However, the Opposition Division is of the opinion that it is highly unlikely that the average consumer within the relevant territories will perceive the circle as the letter ‘O’ and the zig zag inserted inside it as the letters ‘W’ and ‘N’, all forming the word ‘OWN’. The contested mark will rather be perceived as a purely figurative sign. Therefore, the opponent’s argument is dismissed as unfounded.
Visually, as the signs do not coincide in any element, it is concluded that the signs are not visually similar.
Aurally, the earlier marks will be pronounced as /own-personality/ whereas the contested sign cannot be pronounced. As one of the signs is purely figurative, it is not possible to compare them aurally.
Conceptually, although a part of the public in the relevant territory will perceive the contested sign as a circle with zig zag lines inside of it, as explained above, the other marks have no meaning for that part of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for that part of the public.
For the remaining part of the relevant public which perceives the verbal elements of the earlier marks, as the signs will be associated with a dissimilar meaning, the signs are not conceptually similar.
Therefore, as the signs do not coincide in any element, they are dissimilar.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Elisa ZAERA CUADRADO | Carmen SÁNCHEZ PALOMARES | Ana MUÑIZ RODRIGUEZ |
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.