Yu ppy | Decision 2719824
Date Published: Sep 28, 2017
OPPOSITION No B 2 719 824
Yuppie GmbH & Co. KG Sportswear in Leather, Birkenstr. 8, 88285 Bodnegg (Rotheidlen), Germany (opponent), represented by Manitz Finsterwald Patentanwälte PartmbB, Martin-Greif-Str. 1, 80336 München, Germany (professional representative)
a g a i n s t
Pizpireta Shoes, Avenida Salamanca Num 12-1-7, 03130 Santa Pola, Spain (applicant).
On 23/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 719 824 is upheld for all the contested goods.
2. European Union trade mark application No 15 301 856 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 15 301 856. The opposition is based on European Union trade mark registration No 12 115 457. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols.
Class 25: Clothing, footwear, headgear.
Class 35: Retailing, mail order and wholesaling in relation to the following goods: leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas and parasols, clothing, footwear, headgear.
The contested goods are the following:
Class 25: Clothing; headgear; footwear.
Contested goods in Class 25
Clothing; headgear; footwear are identically contained in both lists of goods.
- 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 average.
- The signs
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 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, for which the verbal elements of the marks under comparison, ‘Yuppie’ and ‘Yuppy’, are meaningful and will, therefore, have an impact on the conceptual perception of the signs.
The earlier mark is a figurative mark consisting of the words ‘Yuppie SPORTSWEAR IN LEATHER’.
The word element ‘Yuppie’ is written in slightly slanted bold letters in various shades of grey. The first letter, ‘Y’, is upper case, while the remaining letters, ‘uppie’, are lower case.
The words ‘SPORTSWEAR IN LEATHER’ of the earlier mark are written below the word ‘Yuppie’ and between two parallel horizontal grey lines. Due to their smaller size and light grey colour, these word elements are overshadowed by the other verbal element ‘Yuppie’. Moreover, bearing in mind that the relevant goods are clothing, headgear and footwear, the expression ‘SPORTSWEAR IN LEATHER’ is devoid of distinctiveness, as it would be understood as indicating characteristics of these goods, namely their nature (‘SPORTSWEAR’) and the material they are made of (‘LEATHER’).
The contested sign is a figurative mark consisting of the verbal element ‘Yu*ppy’ written in slightly stylised letters in a multicoloured font, with the first letter, ‘Y’, in upper case, and the remaining letters, ‘uppy’, in lower case. Between the letters ‘Yu’ and ‘ppy’, a white heart with a multicoloured outline is depicted. Despite the presence of the slightly stylised heart between the letters ‘Yu’ and ‘ppy’, these letters are likely to be read as a single word, ‘Yuppy’, which is a meaningful word as explained in detail in the next paragraph.
The English words ‘Yuppie’ and ‘Yuppy’, in the earlier and contested signs, respectively, will both be understood by the relevant public to mean ‘a young person who has a well-paid job and likes to show that they have a lot of money by buying expensive things and living in an expensive way’ (information extracted from Collins Dictionary on 03/05/2017 at https://www.collinsdictionary.com/dictionary/english/yuppie). These words are considered distinctive, since they are neither descriptive nor allusive of the relevant goods to an extent that would materially affect their degree of distinctiveness.
As regards the contested sign’s figurative element (i.e. the slightly stylised heart), it has to be noted that a heart-shaped device is commonly used, in the course of trade and marketing, as an expression of love.
The parallel grey lines in the earlier mark are simple geometric shapes that will be seen by consumers as merely decorative.
In addition, when signs consist of both verbal and figurative components, the impact of the figurative elements on the consumer is, in principle, less than that of the verbal elements. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 1 3/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Consequently, these figurative elements have only a limited impact on the comparison of the trade marks.
Visually, the signs coincide in the sequence of letters ‘Yupp*’, that is, the first four letters out of six of the distinctive verbal element of the earlier sign, ‘Yuppie’, and the first four letters out of five of the only verbal element of the contested sign, ‘Yuppy’. The signs differ in their last letters, namely ‘ie’ in the earlier mark versus ‘y’ in the contested sign. As consumers tend to focus on the initial parts of signs, they will perceive the identity between the first four letters, ‘Yupp’, of the signs and will pay much less attention to the different letters, ‘ie’ versus ‘y’, which appear towards the end of the earlier and contested signs, respectively. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
The signs also differ in the non-distinctive expression ‘SPORTSWEAR IN LEATHER’ of the earlier mark, which has no counterpart in the contested sign, and in the colours, stylisations and figurative elements of the earlier and contested signs, namely the two parallel lines and the slightly stylised heart, respectively; those components have less impact on the overall impression produced by a sign as a whole, for the reasons given above.
The different stylisations and colours of the signs under comparison will be perceived as merely decorative and, therefore, will have a less impact on the consumer.
Therefore, the signs are visually similar to an average degree.
Aurally, the verbal elements ‘Yuppie’ and ‘Yuppy’, of the earlier and contested signs, respectively, are pronounced identically by the English-speaking part of the public, as the last letters, ‘ie’ and ‘y’, of those verbal elements have the same sound. The signs differ in the pronunciation of the words ‘SPORTSWEAR IN LEATHER’ of the earlier mark, which have no counterparts in the contested sign.
As the pronunciation of the signs differs in only a non-distinctive element, the signs are aurally similar to a high degree.
Conceptually, the signs will be associated with the same meaning, that of the words ‘Yuppie’ and ‘Yuppy’ of the earlier and contested signs, respectively. On the other hand, they will also be associated with different concepts related to the non-distinctive or less relevant elements (the words ‘SPORTSWEAR IN LEATHER’ of the earlier mark and the slightly stylised heart of the contested sign). Therefore, the signs are conceptually similar to a high degree.
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, despite the presence of non-distinctive verbal elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The goods at issue are identical. The degree of attention is average.
The conflicting signs are visually similar to an average degree and aurally and conceptually similar to a high degree, on account of the coinciding sequence of letters ‘Yupp’, which constitutes nearly the entirety of their distinctive verbal elements, ‘Yuppie’ versus ‘Yuppy’.
It is true that the sign contains additional figurative and verbal elements, in particular the expression ‘SPORTSWEAR IN LEATHER’ and the parallel lines in the earlier sign and the slightly stylised heart in the contested sign. However, as mentioned above, these additional elements are non-distinctive for the relevant goods or are less relevant and the public will not pay as much attention to these elements as to the other, more distinctive, elements of the signs, namely the verbal element ‘Yuppie’, which coincides nearly in full with the only word element of the contested sign, ‘Yuppy’.
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.
Taking all the above into account, the Opposition Division considers that the additional and differing elements of the signs are not sufficient to counteract the average degree of visual similarity and the high degree of similarity from the aural and conceptual perspectives, to the extent that the relevant public, when encountering the signs in relation to identical goods, is likely to think that they come from the same undertaking or from economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 12 115 457. It follows that the contested trade mark must be rejected for all the contested 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 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
María Belén IBARRA DE DIEGO | Angela DI BLASIO | Michele M. BENEDETTI - ALOISI |
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.