OPPOSITION No B 2 469 610

Sportsdirect.com Retail Limited, Unit A, Brook Park East, Shirebrook  NG20 8RY, United Kingdom (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue

London, EC2N 2DG, United Kingdom (professional representative)

a g a i n s t

Lifestyle Sports (Ireland) Ltd.,  40 Mary St., Dublin 1, Ireland (applicant), represented by FR Kelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative).

On 08/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 469 610 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 228 374 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 228 374. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 597 152 B and No 2 646 812. The opponent invoked Article 8(1)(b), 8(4) and 8(5) 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 United Kingdom trade mark registration No 2 597 152 B and United Kingdom trade mark registration No 2 646 812.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

United Kingdom trade mark registration No 2 597 152 B

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, parasols and walking sticks; whips, harness and saddlery; luggage; belts made of leather; belts made of imitation leather; wallets for attachment to belts; wallets; purses; pouches; golf umbrellas; luggage straps; garment bags; briefcases; art portfolios [cases]; leather portfolios [covers]; Portfolios [briefcases] attache cases; handbags; evening bags; clutch bags; tote bags; athletic bags; duffel bags; gym bags; sports bags, other than shaped to contain specific apparatus used in playing sports; beach bags; shoe bags; diaper bags; shopping bags; shopping carts [wheeled shopping bags); cosmetic bags; toiletry bags; school bags; knapsacks; waist packs; billfolds; business card cases; credit card cases; key cases; key holders; key pouches; backpacks; schoolchildren's backpacks; framed carrying apparatus in the nature of rucksacks for carrying babies; shoulder bags; overnight bags; parts and fittings for the aforesaid goods.

Class 25: Clothing, footwear, headgear; sleeping attire; fashion-wear; leisurewear; sports shoes; trainers; boots; walking boots; football boots; waterproof clothing;  weatherproof clothing; thermal clothing; lightweight clothing; coats; exercise wear; sportswear; swimwear; wet suits; surf shorts; protective clothing for surfing; ski wear; jackets; anoraks; pullovers; trousers; shirts; T-shirts; cagoules; smocks; salopettes; scarves; belts [clothing]; gloves; hats; balaclavas; socks; underwear; gaiters; football jerseys; replica football kits; safety clothing [other than for protection against accident or injury]; sports headgear [other than helmets]; safety footwear [other than for protection against accident or injury]; sports uniforms; clothing for equestrian use; studs for football boots [shoes]; armbands [clothing]; all the aforesaid excluding clothing for cyclists including gloves in class 25.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; apparatus for boxing; apparatus for skiing; body-building apparatus sporting articles for use in racquet games; string materials for sporting racquets; exercise equipment, other than for medical rehabilitative purposes; fitness exercise machines; decorations for Christmas trees; play tents; sports bags shaped to contain specific apparatus used in athletics [other than clothing or footwear]; balls; bats; baseball masks; body protectors; breast protectors; stomach protectors [adapted for use in a specific sport]; knee protectors adapted for use whilst playing sports; leg guards adapted for playing sport; shin pads [sports articles]; elbow guards (sport articles); hip-guards specially made for playing sports [parts of sports suits]; shin guards for athletic use; wrist guards for athletic use; fist guards [sporting articles]; hand protectors adapted for sporting use; gloves for sporting purposes [specifically adapted for]; apparatus for use in the game of football; football gloves; sporting articles for use in playing football [other than clothing or articles for protective purposes]: football or soccer goals; training apparatus for use in relation to football; goal nets; soccer ball goal nets; goal posts; whistles; parts and fittings for all of the foregoing; cards (Playing-).

Class 35: Retail clothing shop services; the bringing together, for the benefit of others, of a variety of footwear, headgear, […], goods made of leather and imitation leather, trunks and travelling bags, umbrellas, parasols, walking sticks, whips, harness, saddlery, luggage, wallets for attachment to belts, wallets, purses, pouches, golf umbrellas, luggage straps, bags, briefcases, portfolios briefcases, attache cases, knapsacks, waist packs, billfolds, business card cases, credit card cases, key cases, key holders, key pouches, backpacks, schoolchildren's backpacks, framed carrying apparatus in the nature of rucksacks for carrying babies, […]; sporting articles and parts and fittings for all of the aforesaid goods; […] all the aforesaid excluding retail services connected with the sale of cycle parts or cycle accessories, cycle helmets, cycle bags, cycling gloves and clothing for cycling.

United Kingdom trade mark registration No 2 646 812

Class 35: Advertising; business management; business administration; office functions […].

The contested goods and services are the following:

Class 18: Leather and imitations of leather; animal skins; hides; trunks and travelling bags; sports bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; luggage; bags included in class 18.

Class 25: Clothing; footwear; headgear; sportswear.

Class 28: Games and playthings; bags adapted to carry sports implements; gymnastic and sporting articles not included in other classes.

Class 35: Retail services in relation to leather and imitations of leather, animal skins, hides, trunks and travelling bags, sports bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, luggage, bags, clothing, footwear, headgear, sportswear, games and playthings, bags adapted to carry sports implements, gymnastic and sporting articles; services for the promotion of sporting events.

Comparison with the goods covered by United Kingdom trade mark registration No 2 597 152 B

Contested goods in Classes 18, 25 and 28

The following goods identically appear in both lists:

• Leather and imitations of leather; animal skins; hides; trunks and travelling bags; sports bags; umbrellas and parasols; walking sticks; whips, harness and saddlery, luggage in Class 18

• Clothing; footwear; headgear; sportswear in Class 25,

• Games and playthings; gymnastic and sporting articles not included in other classes in Class 28

Furthermore, the contested bags included in class 18 include, as broad categories, the opponent’s sports bags, which cannot be dissected ex officio from the applicant’s goods, and therefore are considered identical.

The contested bags adapted to carry sports implements in Class 28 include the opponent’s sports bags shaped to contain specific apparatus used in athletics [other than clothing or footwear], which cannot be filtered from the opponent’s broad categories. Therefore, the goods are identical.

Contested services in Class 35

Retail services in relation to clothing, sportswear fall under the broad category of the opponent’s retail clothing shop services. Therefore, the services are identical.

The contested retail services in relation to trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, luggage, bags, footwear, headgear, and sporting articles are broad categories which include the opponent’s bringing together, for the benefit of others, of a variety of trunks and travelling bags, bags, umbrellas, parasols, walking sticks, whips, harness, saddlery, luggage, footwear, headgear, sporting articles; all the aforesaid excluding retail services connected with the sale of cycle parts or cycle accessories, cycle helmets, cycle bags, cycling gloves and clothing for cycling’, since these limitations cannot be dissected ex officio from the broad categories of the applicant’s retail services. Therefore, the services are identical.

The contested retail services in relation to sports bags fall into the broad category of the opponent, the bringing together, for the benefit of others, bags. Therefore, the services are identical.

The contested retail services in relation to leather and imitations of leather, animal skins, hides are considered to be similar to the opponent’s services the bringing together, for the benefit of others, of a variety of bags independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use.

Furthermore, in relation to the contested retail services in relation to games and playthings, bags adapted to carry sports implements, gymnastic articles, they are considered to be highly similar to the opponent’s services bringing together, for the benefit of others, of a variety of sporting articles given that the goods in question are commonly retailed in the same outlets, and therefore they also coincide in relevant public and distribution channels.

Comparison with the services covered by United Kingdom trade mark registration No 2 646 812

The contested services for the promotion of sporting events are included in the broad category of the opponent’s advertising services. Therefore, the services 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 and their retail services found to be identical or similar are directed at the public at large. The degree of attention is considered average.

The contested promotion services are also directed at business customers with specific professional knowledge or expertise; therefore, the degree of attention will vary from average to high, depending on the price of these services and the expertise of the client company.  

3. The signs

(1) UK 2 597 152 B SPORTSDIRECT (2) UK 2 646 812	Life Style Sports Direct
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 earlier mark (1) is a word mark ‘SPORTSDIRECT’. The earlier mark (2) is a figurative mark consisting of the term ‘SPORTSDIRECT.COM’ written in standard blue and red upper case italic font. The contested mark is a word mark ‘Life Style Sports Direct’.

The element ‘Sport’ present in all the marks will be associated with “games and other competitive activities which need physical effort and skill.” Bearing in mind the relevant goods and services in Classes 18, 25, 28 and 35 it is considered  that this element will be seen to describe the nature and purpose of the goods concerned in Classes 18, 25 and 28,  including that of the associated retail and promotion services in Class 35. This element is therefore non-distinctive.

The element ‘.COM’ in the earlier figurative mark is a technical and generic element, the use of which is required in the normal structure of the address of a commercial internet site. Furthermore, it may also indicate that the goods and services covered by the trade mark application can be obtained or viewed online, or are internet related. Accordingly, the element in question must also be considered to be devoid of distinctive character in respect of the goods or services concerned. (21/11/2012, T-338/11, Photos/com, EU:T:2012:614, § 22).

Moreover, the element ‘SPORTSDIRECT’ is the dominant element of the earlier figurative mark given its larger size.

The element ‘DIRECT’ means “moving towards a place or object, without changing direction and without stopping, for example in a journey” or “an experience, activity, or system which only involves the people, actions, or things that are necessary to make it happen.” The applicant argues that the word ‘DIRECT’ is descriptive when used in relation to any goods or services that can be supplied directly to the consumer such as when purchasing products online. However, this interpretation requires several steps of mental deduction and does not result in an immediately recognisable clear concept which can immediately be seen to describe characteristics of the services.

The meaning of the word ‘DIRECT’, and that of ‘SPORTSDIRECT’ has no direct relation to the goods and services at hand and therefore the distinctiveness of these terms, and that of the earlier marks, is considered normal.

As regards the element ‘LIFE STYLE’ of the contested sign, a link will be made by the consumers with lifestyle stores and products which target customers who have a certain set of interests or want to live in a certain way. https://www.collinsdictionary.com/dictionary/english/lifestyle . The fact that it is written in two words will not affect the public’s perception of this concept. In relation to the relevant fashion items and sporting goods and games in Classes 18, 25, 28 and their retail, this element is perceived as weak, as it suggests that the product will fit in with one’s own individual sense of style or will correspond to a certain desirable lifestyle. (22/09/2016, R 346/2016-2, AUTOVISION LIFESTYLE / AUTOVISION et al § 35). Moreover, as for the advertising and promotional services at hand, the term ‘Life Style’ will be perceived as a type of advertising strategy which sells a certain image and identity and therefore the term is weak for the services as well.

Visually, the signs coincide in ‘SPORTS DIRECT’, bearing in mind the lack of distinctive character of ‘SPORTS’. The fact that the term is written in one word in the earlier marks or two in the contested sign has little relevance given that consumers will in any event make the separation between the two meaningful words. Moreover, as regards the earlier figurative sign, the distinction in blue and red colours also reinforces the division between the words.

The standard characters and colours of the earlier figurative sign or the non-distinctive element ‘.COM’ will otherwise have little impact on the consumers, especially since ‘SPORTSDIRECT’ is the sign’s dominant element.

The signs differ in the element ‘Life Style’ of the contested sign, which, however, is of weak distinctive character.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the words ‘SPORTS’ and ‘DIRECT’ present identically in all the signs in the same sequence, bearing in mind the lack of distinctive character of ‘SPORTS’. The pronunciation differs in the contested sign’s weak element ‘LIFE STYLE’ and the earlier figurative sign’s non-distinctive ‘.COM’, but these differences will have a correspondingly limited impact.

Therefore, the signs are aurally similar to an average degree.

Similar considerations apply to the conceptual comparison, where the signs coincide in the concept of the non-distinctive ‘SPORTS’ and the distinctive ‘DIRECT’. Given the little or no distinctive character of the differing concepts, ‘LIFE STYLE’ and ‘.COM’, the signs are conceptually similar to an average degree.

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.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. While the term ‘SPORTS’ is non-distinctive, as seen above in section c) of this decision, the word ‘DIRECT’, and especially the term ‘SPORTDIRECT’ have no meaning in relation to the goods and services in question. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some non-distinctive elements in the marks as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

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).

The signs in the present case visually, aurally and conceptually coincide in the entire earlier word mark. Even though the word ‘SPORTS’ in itself is non-distinctive, the coincidence affects the combination of ‘SPORTS’ and ‘DIRECT’, forming together a distinctive term. The contested sign’s additional term ‘LIFE STYLE’ is of weak distinctive character which thus cannot counteract the fact that the contested sign replicates the entire earlier word mark, including the sign’s most distinctive element, ‘DIRECT’.

The reasonably well informed and reasonably observant and circumspect consumers will thus readily assume that the identical or similar goods and services come from the same or economically linked undertaking.

This finding also applies to the comparison with the earlier figurative mark, as the non-distinctive ‘.COM’, or the mark’s basic stylisation cannot offset the coincidence in the terms ‘SPORTS’ and ‘DIRECT’, and even highly attentive consumers need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The applicant refers to the Office’s previous Decision No. 3738/2004 in relation to Opposition No. B 492 837 to support its arguments.

However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. According to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).

In the present proceedings, moreover, the previous case referred to by the applicant is not relevant since the differing element in that case was meaningless and thus distinctive. At the same time, the term ‘LIFE STYLE’ is not highly distinctive, contrary to the applicant’s claim.

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 two of the opponent’s earlier United Kingdom trade mark registrations. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

As the earlier United Kingdom trade mark registration No 2 597 152 B and United Kingdom trade mark registration No 2 646 812 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) EUTMR.

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

Cynthia DEN DEKKER

Marianna KONDAS

Julie GOUTARD

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.