SISVIV | Decision 2724253 - GILFIN S.P.A. v. Beijing Tidebuy Technologies Co., Ltd.

Date Published: Sep 28, 2017

OPPOSITION No B 2 724 253

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 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 724 253 is upheld for all the contested goods, namely 

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.

2.        European Union trade mark application No 15 250 509 is rejected for all the contested goods. It may proceed for the remaining goods.

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 15 250 509, 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.

1. 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; dust coats; jumpers [pullovers]; pullovers; trousers; pants (am.); outerclothing; 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.

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 average.  As regards the identical goods in Class 25, the Court held that ‘clothing for men and women are everyday consumer items and the trade mark on which the opposition is based is registered is a Community trade mark. It follows that the relevant public by reference to which the likelihood of confusion must be assessed is composed of the general public in the European Union’ (judgments of 06/10/2004, T-117/03 to T-119/03 and T-171/03, NL, EU:T:2004:293, § 25). Consumers will display an average degree of attention.

3. The signs

SISI	SISVIV
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, and in the letter I. The marks differ in the remaining letters V_V of the contested mark.

Therefore, the signs are visually and aurally similar to an average 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.

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 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_I. The two word elements of the marks under comparison are confusingly similar for the consumer from and aural and visual point of view. The differentiating letters V_V in the contested sign are placed in the middle and end of the sign and can easily be absorbed in sound by the surrounding letters. The marks can be easily mistaken by public when seen or pronounced as the similarities are not outweighed by dissimilarities that would help the consumers to distinguish between the marks.

Based on the principle of imperfect recollection, it is considered that the similarities between the signs established above are sufficient to cause at least part of the public to believe that the conflicting goods, which are identical, come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM No 13 724 158. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right EUTM No 13 724 158 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 rights 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

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.

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.