SOCKATYES | Decision 2741679
Date Published: Sep 28, 2017
OPPOSITION No B 2 741 679
Linko Productions Limited, Room 3208, 32/F Central Plaza, 18 Harbour Road, Wanchai, Hong Kong Special Administrative Region of the People’s Republic of China (opponent), represented by Tomkins & Co., 5 Dartmouth Road, Dublin 6, Ireland, (professional representative)
a g a i n s t
Sockatyes Holding Ltd, Room 1506-1508, F, Laws Commercial Plaza, 788 Cheung Sha Wan Road, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China, (applicant), represented by Swindell & Pearson Ltd, 48 Friar Gate, Derby DE1 1GY, United Kingdom (professional representative).
On 17/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 741 679 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 406 441 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
Initially, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 406 441, namely all the goods in Classes 25 and 28, and some of the services in Class 35. However, following the division of the contested application on 06/02/2017, by which the non-contested services in Class 35 were transferred to the new EUTM No 16 331 126, while the goods and services under opposition remained in the contested application, the opposition is now directed against all of the goods and services of EUTM No 15 406 441.
The opposition is based on European Union trade mark registration No 13 524 558. The opponent invoked Article 8(1)(a) and (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 goods and services
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear; socks; sportswear.
The contested goods and services are the following:
Class 25: Clothing; footwear; socks; sportswear; sports socks; football socks; soccer socks; sock garters.
Class 28: Sporting articles and equipment relating to football; sporting articles and equipment relating to soccer; football kits; soccer kits.
Class 35: Retail services in relation to sportswear.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 25
Clothing; footwear; socks; sportswear are identically contained in both lists of goods.
The contested sports socks; football socks; soccer socks; sock garters are included in the broad category of the opponent’s clothing. Therefore, they are identical.
Contested goods in Class 28
The earlier trade mark is registered for clothing, footwear and headgear and, moreover, for sportswear. These categories include sports clothing, footwear and headgear, which are items of apparel designed specifically to be worn when doing sport. The purpose and nature of these goods are different from those of the contested goods, which are articles and apparatus for football and soccer. However, undertakings that manufacture sporting articles and equipment relating to football; sporting articles and equipment relating to soccer; football kits; soccer kits may also manufacture sportswear. Therefore, their distribution channels can also be the same.
Consequently, the contested sporting articles and equipment relating to football; sporting articles and equipment relating to soccer; football kits; soccer kits are similar to a low degree to the opponent’s clothing, footwear, headgear; sportswear in Class 25.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested retail services in relation to sportswear are similar to a low degree to the opponent’s sportswear in Class 25.
- The signs
SOCKATYES | SOCKATYES |
Earlier trade mark | Contested sign |
The signs are identical.
- Global assessment and conclusion
The signs are identical and some of the contested goods and services are identical, namely:
Class 25: Clothing; footwear; socks; sportswear; sports socks; football socks; soccer socks; sock garters.
Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.
The rest of the contested goods and services are similar to a low degree to those covered by the earlier mark, namely:
Class 28: Sporting articles and equipment relating to football; sporting articles and equipment relating to soccer; football kits; soccer kits.
Class 35: Retail services in relation to sportswear.
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).
Given that the identity between the signs offsets the low degree of similarity between the goods and services, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods and services.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 524 558. It follows that the contested trade mark must be rejected for all the contested goods and services.
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
Solveiga BIEZA | Jorge ZARAGOZA GOMEZ | Begoña URIARTE VALIENTE |
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.