ZICHO | Decision 2677071 - ZICO ESPAÑA, S.L. v. Zicho International AB
Date Published: Sep 28, 2017
OPPOSITION No B 2 677 071
Zico España, S.L., Avda. Buenos Aires, 69, 36400 Porriño (Pontevedra), Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)
a g a i n s t
Zicho International AB, Lantmannavägen 34, 461 60 Trollhättan, Sweden (applicant), represented by Ports Group AB, Kalkylvägen 3, 435 33 Mölnlycke, Sweden (professional representative).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 677 071 is partially upheld, namely for the following contested goods and services:
Class 25: Clothing; Pants; Vests; Denim jeans; Clothing for gymnastics; Jogging sets [clothing]; Hats; Footwear; Shirts; Stockings; Underwear; Dresses; Skirts; Jackets [clothing]; Mufflers [clothing]; Shifts; Tee-shirts; Belts [clothing].
Class 35: Retail services in relation to clothing; Retail services in relation to footwear; Wholesale services in relation to clothing; Retail services in relation to clothing; Online retail store services relating to clothing; Wholesale services in relation to footwear.
2. European Union trade mark application No 14 876 692 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 876 692, namely against all the goods and services in Classes 25 and 35. The opposition is based on European Union trade mark registration No 1 538 271. 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 25: Clothing for women, men and children, footwear (except orthopaedic) and headgear.
Class 39: Distribution, transport and storage of clothing for women, men and children, footwear (except orthopaedic) and headgear.
The contested goods and services are the following:
Class 25: Clothing; Pants; Vests; Denim jeans; Clothing for gymnastics; Jogging sets [clothing]; Hats; Footwear; Shirts; Stockings; Underwear; Dresses; Skirts; Jackets [clothing]; Mufflers [clothing]; Shifts; Tee-shirts; Belts [clothing].
Class 35: Advertising; Business management; Business administration; Marketing services; Online advertising; Commercial information services; Retail services in relation to clothing; Retail services in relation to footwear; Retail services in relation to jewellery; Retail services in relation to sporting articles; Retail services in relation to bags; Wholesale services in relation to bags; Wholesale services in relation to clothing; Retail services in relation to clothing; Online retail store services relating to clothing; Wholesale services in relation to footwear; Wholesale services in relation to jewellery.
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
The contested clothing includes, as a broader category, the opponent’s clothing for women. 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 pants; vests; denim jeans; clothing for gymnastics; jogging sets [clothing]; shirts; stockings; underwear; dresses; skirts; jackets [clothing]; mufflers [clothing]; shifts; tee-shirts; belts [clothing] are included in the broad category of the opponent’s clothing for women, men and children. Therefore, they are identical.
The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.
The contested footwear is identical to the opponent’s footwear (except orthopaedic), as orthopaedic footwear belongs to Class 10.
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.
The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.
Therefore, the contested retail services in relation to clothing (which appears twice in the applicant’s list); wholesale services in relation to clothing; online retail store services relating to clothing are similar to a low degree to the opponent’s clothing for women, men and children.
Furthermore, the contested retail services in relation to footwear; wholesale services in relation to footwear are similar to a low degree to the opponent’s footwear (except orthopaedic).
The contested retail services in relation to jewellery; retail services in relation to sporting articles; retail services in relation to bags; wholesale services in relation to bags; wholesale services in relation to jewellery and the opponent’s clothing for women, men and children, footwear (except orthopaedic) and headgear are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services and wholesale services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.
The contested retail services in relation to jewellery; wholesale services in relation to jewellery; retail services in relation to sporting articles; retail services in relation to bags; wholesale services in relation to bags and the opponent’s distribution, transport and storage of clothing for women, men and children, footwear (except orthopaedic) and headgear in Class 39 are also considered dissimilar. They serve completely different purposes and their methods of use are different. Moreover, they have different distribution channels and are neither in competition nor complementary.
The contested advertising; business management; business administration; marketing services; online advertising; commercial information services have nothing in common with the opponent’s clothing for women, men and children, footwear (except orthopaedic) and headgear in Class 25. By their nature, goods are generally dissimilar to services. They have different origins, natures and intended purposes. Moreover, the goods are neither in competition with nor complementary to the opponent’s services. Therefore, they are dissimilar.
The contested advertising; business management; business administration; marketing services; online advertising; commercial information services and the opponent’s distribution, transport and storage of clothing for women, men and children, footwear (except orthopaedic) and headgear in Class 39 are also considered dissimilar. They serve completely different purposes and their methods of use are different. Moreover, they have different distribution channels and are neither in competition nor complementary.
- 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 and services found to be identical or similar are directed at the public at large and (in the case of the contested wholesale services) at business consumers. The degree of attention is considered average.
- The signs
ZICHO | |
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).
Considering the specific pronunciation rules in the different languages, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, as this is the part of the relevant public most likely to be confused.
The earlier sign is a figurative mark consisting of the word ‘ZICO’ written in black italic upper case letters and an abstract figurative device resembling a stylised tick or slightly resembling the shape of a highly stylised letter ‘V’ (contrary to the applicant’s observations, the Opposition Division does not consider that a letter ‘V’ is clearly recognisable in the figurative device); this device appears above the letter ‘I’ and has a black and white border around it.
The word ‘ZICO’ has no meaning in the relevant territory and is, therefore, distinctive. The figurative element has no meaning for the relevant goods either, and is, therefore, distinctive.
However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. 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). Therefore, the verbal element ‘ZICO’ will have a stronger impact on the overall impression of the earlier sign than the figurative element. The earlier mark has no element that could be considered clearly dominant (visually more eye-catching) than other elements.
The contested sign is a word mark consisting of the word ‘ZICHO’. The word ‘ZICHO’ has no meaning for the relevant public and is, therefore, distinctive.
Visually, the signs coincide in their first three letters, ‘ZIC’, which are identical, and in their last letter, ‘O’. However, they differ in the fourth letter, ‘H’, of the contested sign, which has no counterpart in the earlier mark, and in the stylisation and the figurative device of the earlier sign, as described above; the figurative device is distinctive and not less eye-catching than the verbal element but, as explained above, will have less impact on the overall impression of the sign than the verbal element.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ZICO’ and ‘ZICHO’, which will be pronounced in the same way. The Opposition Division considers that abstract figurative device in the earlier mark, due to its stylisation and to the fact that a letter is not clearly or immediately recognisable, will not be pronounced by the relevant public when referring to the signs. Therefore, the signs are aurally identical.
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
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case, the goods and services under comparison are partly identical, partly similar and partly dissimilar. The distinctiveness of the earlier mark is normal.
The signs were found to be visually similar to an average degree and aurally identical. Visually, the signs differ only in the letter ‘H’ of the contested sign, which is not present in the earlier sign, and in the figurative elements of the earlier mark, which have no counterpart in the contested sign. However, and contrary to the applicant´s arguments these visual differences (including the stylised figurative device on top of the element ‘ZICO’ of the earlier mark) cannot outweigh the similarities, in particular the fact that the signs are aurally identical. Furthermore, neither of the signs conveys a clear concept that could assist the public in differentiating between them.
Account is 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). Furthermore, 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.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public (including the professional public) and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.
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.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (including those that are similar to a low degree) to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Arkadiusz GORNY | Jorge ZARAGOZA GOMEZ | Denitza STOYANOVA-VALCHANOVA |
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.