SISJULY | Decision 2724287 - GILFIN S.P.A. v. Beijing Tidebuy Technologies Co., Ltd.
Date Published: Sep 28, 2017
OPPOSITION No B 2 724 287
Gilfin S.P.A., Via G. Leopardi 3/5, 46043 Castiglione Delle Stiviere (Mn), Italy (opponent), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)
a g a i n s t
Thompso Laura, 10 Milne Close, Dukinfield, Cheshire SK16 4SN, United Kingdom, Beijing Tidebuy Technologies Co., Ltd., 201 2nd floor 11th block, 5th building 5 yard Beiyuan Road, Chaoyang District, Beijing 10000, People’s Republic of China (applicants).
On 12/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 724 287 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 251 523, namely against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 13 724 158. 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 13 724 158.
- The goods
The goods on which the opposition is based are the following:
Class 25: Stockings; Slippers; Socks; Tights; Underwear; Suspenders; Brassieres; Boxer shorts; Undergarment slips; Petticoats; Bodies; Underwear; Ready-to-wear clothing; Skirts; Shirts and slips; Jumpers; Corsetry; Underwear; Footwear; Footwear; Boots; Mules; Shirts; Chemisettes; Pajamas (am.); Clothing; Gowns; Lounging robes; Topcoats; Headgear; Berets; Swimming costumes; Smocks; Corsets; Ties; Sashes for wear; Shawls; Scarves; Gloves; Pelisses; Stoles and clothing of fur.
The contested goods are the following:
Class 25: Shirts; Sweaters; Jumpers [pullovers]; Pullovers; Clothing; Trousers; Pants (Am.); Outerclothing; Knitwear [clothing]; Coats; Skirts; Underwear; Overcoats; Bathing suits; Tee-shirts; Dust coats; Layettes [clothing]; Masquerade costumes; Footwear; Caps [headwear]; Panty hose; Gloves [clothing]; Wedding dresses.
The contested shirts; clothing; coats; skirts; underwear; overcoats; bathing suits; footwear; panty hose; gloves [clothing] are identically contained in both lists of goods (including synonyms).
The contested sweaters; jumpers [pullovers]; pullovers; trousers; pants (am.); outerclothing; dust coats; knitwear [clothing]; tee-shirts; layettes [clothing]; masquerade costumes; wedding dresses are included in the broad category of the opponent’s clothing. Therefore, they are identical.
The contested caps [headwear] are included in the broad category of the opponent’s headgear. Therefore, they are identical.
- 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. Consumers will display an average degree of attention.
- The signs
SISI | SISJULY |
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 word marks have no meaning for the relevant public and are, therefore, distinctive.
Visually and aurally, the signs coincide in the first letters SIS which are placed at the beginning of the signs. The marks differ in the remaining letters I/ JULY of the respective marks. The marks also differ in length and rhythm. The earlier mark will be pronounced as SI-SI in two syllables whereas the contested sign SIS-JU-LY, in three, the change in the first syllable is notable.
Therefore, the signs are visually and aurally similar to a low degree.
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
According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).
The goods have been found to be identical. The similarities and dissimilarities between the signs have been established.
The signs have been found to be similar to the extent that they share the letters SIS. However, they differ in the remaining letters I/ JULY, in their overall length and rhythm. No higher distinctive character has been claimed in respect of the earlier mark. In addition, while it is clear that the consumer normally attaches more importance to the first part of words, that consideration cannot apply in every case (16/05/2007, T-158/05, Alltrek, EU:T:2007:143, §70).
The considerable differences between the signs caused by the additional and/or different verbal elements are particularly relevant when assessing the likelihood of confusion between them. These differences create visual and aural distance between the signs at issue. The Opposition Division considers that, despite the identity of the goods at issue, even persons with only an average level of attention will not confuse the marks.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
The opponent has also based its opposition on the European Union trade mark No 11 088 739 for goods in Class 25.
The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains further figurative aspects, consisting of a highly stylised typeface, which are not present in the contested trade mark. Moreover, the mark covers the same scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
José Antonio GARRIDO OTAOLA | Erkki MÜNTER | Irina SOTIROVA |
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.