SAYMON FAYE | Decision 2802422

Date Published: Sep 22, 2017

OPPOSITION No B 2 802 422

Tod's S.P.A., Via Filippo Della Valle, 1, 63811 Sant'Elpidio a Mare (FM), Italy (opponent), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative)

a g a i n s t

Saymon Faye Lda., Rua dos Meirais, nº 667, 3720-750 São Roque, Portugal (applicant), represented by Raul César Ferreira (Herd.) S.A., Rua do Patrocínio, 94, 1399-019 Lisboa, Portugal (professional representative)

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 802 422 is upheld for all the contested goods.

2.        European Union trade mark application No 15 622 855 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 622 855 for the word mark ‘SAYMON FAYE’. The opposition is based on, inter alia, European Union trade mark registration No 10 158 996 for the word mark ‘FAY’. 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 10 158 996.

1. The goods

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

Class 18: Bags, handbags, travelling bags, card cases, card cases (leatherware), leather credit card holders, notecases, leather portfolios (covers), leather key chains, handbags, trunks, valises, cosmetics bags, sports bags included in this class, bags for sports articles, evening bags and shoulder bags for women, shopping bags of leather, school bags, garment bags for travel, hat boxes for travel, shoes bags for travel, beach bags, haversacks, diaper bags, rucksacks, boston bags, travelling cases, cloth bags, overnight bags, trolleys, bags for climbers, school bags, formal handbags, vanity cases, not fitted, leather, cases and boxes of leather, covers of leather, harness made from leather, umbrellas, leather leashes.

Class 25: Coats of leather, jackets of leather, trousers of leather, skirts of leather, tops of leather, waterproof clothing of leather, long coats of leather, overcoats of leather, belts of leather, shoulder belts for clothing of leather, belts, clothing, stuff jackets, jackets, greatcoats, jumpers, trousers, jeans, skirts, dresses, coats, overcoats, cloaks, parkas, jerseys of wool, shirts, tee-shirts, blouses, cardigans, underwear, nightdresses, bath robes, bathing suits, negligees, bathing suits, dressing gowns, eveningwear, one-piece clothing, two-piece clothing, evening gowns, shawls, sashes for wear, neckties, bow ties, clothing for men, clothing for women, shirts, Hawaiian shirts, sweatshirts, underwear, polo shirts, bodysuits, blazers, shorts, sport shirts; Shoes, athletic shoes, slippers, shoe covers, low shoes, shoes of leather, shoes of rubber, galoshes, golf shoes, clogs, fishing shoes, basketball shoes, dress shoes, heels, hiking boots, rugby boots, boxing shoes, baseball shoes, patent shoes, beach shoes, inner soles, soles for footwear, footwear uppers, heels for shoes and boots, non-slipping devices for shoes and boots, tips for footwear, rain shoes, running shoes, work shoes, shoes of straw, gymnastics shoes, boots, ski boots, half-boots, après ski boots, football boots, lace boots, hockey shoes, handball shoes, esparto shoes or sandals, sandals, bath sandals; Gloves, gloves for protection against the cold, gloves of leather, mittens; Hats and caps, visors (headgear), hats and caps of leather.

The contested goods are the following:

Class 18: Trunks and travelling bags.

Class 25: Clothing, footwear, headgear.

Contested goods in Class 18

Trunks and travelling bags are identically contained in both lists of goods.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

The contested footwear includes, as a broader category the opponent’s shoes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested headgear includes, as a broader category the opponent’s hats and caps. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 is considered to be average.

3. The signs

FAY	SAYMON FAYE
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 earlier mark is the word mark ‘FAY’, which means, inter alia, ‘a fairy or sprite‘ in English (information extracted from Collins English Dictionary on 14/09/2017 at www.collinsdictionary.com/dictionary/english/fay). However, it is also a rare Irish surname and it can therefore not be ruled out that at least part of the English-speaking public, e.g. in Ireland, may perceive the earlier mark as a surname. For the non-English-speaking public it will be perceived as a fanciful word without any meaning. Either way, it has no particular meaning in relation to the goods concerned and is, therefore, distinctive.

The contested sign is the word mark ‘SAYMON FAYE’ which is likely to be perceived by at least part of the English-speaking public, e.g. in Ireland, as consisting of a first name (since ‘SAYMON’ is closely equivalent to ‘SIMON’) and a surname (‘FAYE’ being a spelling variation of the surname ‘FAY’) both of which are distinctive in relation to the goods concerned.

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.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public that may perceive both signs as consisting of or containing spelling variations of the same surname ‘FAY/E’.

Visually, the signs coincide in the letters ‘FAY’ which is the only, and distinctive, word of which the earlier mark consists. However, they differ in the first word ‘SAYMON’ of the contested sign and its additional letter ‘E’ at the end of the word ‘FAYE’, both of which are also distinctive.

Although the public generally pays greater attention to the beginning of a mark than to the end, that is not true in all situations and cannot, in any event, undermine the principle that an analysis of the similarity of two trade marks must take into account the overall impression given by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. In the present case, the fact that the word ‘SAYMON’ appears before the word ‘FAYE’ in the contested sign is not very significant as it is normal, when giving the names of persons, to indicate the first name followed by the surname. Therefore, it cannot be asserted that, in the case of a trade mark consisting of a first name followed by a surname, the public will normally ascribe greater importance to the first name than to the surname (03/06/2015, T-559/13, GIOVANNI GALLI, EU:T:2015:353, § 73 and 81). It follows that the public will not pay greater attention to the first word ‘SAYMON’ in the contested sign than to the second word ‘FAYE’, which is highly similar to the earlier mark ‘FAY’.

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

Aurally, the pronunciation of the signs coincides in the identical sound of the word ‛FAY’ since the additional ‛E’ in the word ‛FAYE’ of the contested sign will not be pronounced by the relevant public under analysis. However, the pronunciation differs in the sound of the additional word ‛SAYMON’ at the beginning of the contested sign which has no counterpart in the earlier mark.

Since the public will not pay greater attention to the sound of the first word ‘SAYMON’ in the contested sign than to the coincidence in the identical sound of the word ‛FAY’ as explained above, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to spelling variations of the same rare surname ‘FAY/E’ by the part of the English-speaking public under analysis, the signs are conceptually similar to an average degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 has no meaning for any of the goods in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account should also be 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).

In the present case, the goods are identical and the degree of attention of the relevant public is average.

Although the contested sign contains the first name ‘SAYMON’, which is not present in the earlier mark, for the part of the English-speaking public under analysis, the signs are visually similar at least to a low degree and aurally and conceptually similar to an average degree on account of the coincidence in the surname ‘FAY’, albeit spelled in slightly different ways.

When two signs contain the same, or spelling variations of the same, surname but only one of them also contains a given first name, the rule of thumb is that normally there will be likelihood of confusion. Consumers might be misled and attribute a common origin to the goods/services concerned. The presence of a first name in one of the conflicting signs will not suffice to safely distinguish the signs in the minds of the consumers. The surname alone will be perceived as the short version of the full name, thus identifying the same origin.

In view of the above and since ‘FAY’ (or ‘FAYE’) is not a common surname, even if consumers might be able to distinguish between the signs due to the element ‘SAYMON’ and even if they did recall that the spelling of the surname is slightly different, since they will still perceive them as referring to the same surname and taking into account that the goods concerned are identical, consumers will see a specific line of products or a variation of and extended form of the earlier mark. Consequently, consumers might believe that the signs in dispute belong to the same undertakings or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public that will perceive the signs as consisting of or containing spelling variations of the same surname. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 158 996. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the examined 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 right 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

Benjamin WINSNER

Sam GYLLING

Martina GALLE

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.