OPPOSITION No B 2 366 642

Athleta (ITM) Inc., 2 Folsom Street, San Francisco, California, United States of America (opponent), represented by UNIT4 IP Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

TM Film- u. Fernsehproduktions GmbH, Luxemburger Str. 282 e, 50937 Köln, Germany (applicant), represented by Lentze Stopper Rechtsanwälte, Widenmayerstr. 28, 80538 München, Germany (professional representative).

On 18/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 366 642 is upheld for all the contested goods and services, namely

Class 25: Clothing; scarves; football boots; headgear; headgear; caps [headwear]; collar protectors; tee-shirts; singlets; sports shoes; headbands [clothing].

Class 35:   Dissemination of advertisements; compilation of information into computer databases; radio commercials; compilation of statistics; advertising; marketing services; public relations services; opinion polling; on-line advertising on a computer network; business services relating to the provision of sponsorship; online advertisements; radio commercials; computerised file management.

2.        European Union trade mark application No 12 594 206 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 594 206, namely against all the goods and services in Classes 25 and 35. The opposition is based on European Union trade mark registrations No 7 234 503, No 7 234 529, No 7 234 628 and No 7 561 665.  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 7 234 503.

1. The goods and services

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

Class 3:        Personal care products, toilet preparations, cosmetics, make-up products, perfume and fragrance products, oils, soaps, lotions, creams, powders, balms and gels, bath products, fragranced products for the home, room sprays, potpourri, hair care preparations, sun care products, detergents and cleaning preparations.

Class 9:        Loyalty cards, electronic gift cards, mobile telephone cases, personal digital assistant cases, sunglasses and eyeglasses, sunglass and eyeglass cases, sound and video recordings, computer games, video games, computer software.

Class 14:        Jewellery, watches and clocks; household goods, not included in other classes.

Class 18:        Bags, luggage, leather goods, umbrellas, key cases, handbags, purses, backpacks, school bags, book bags, fanny packs, tote bags, credit card cases, wallets, cosmetic cases.

Class 25:        Clothing, footwear, headgear and clothing accessories.

Class 28:        Games and playthings; stuffed toys; sporting goods; gymnastic and sporting articles not included in other classes; exercise equipment; resistance bands for exercise; exercise balls; ankle and wrist weights for exercise; exercise doorway gym bars; yoga mats.

Class 35:        Retail store services in the field  of a wide variety of general merchandise, clothing, footwear, headgear, clothing accessories, bags, leather goods, sunglasses, jewelry, hair accessories, cosmetics, toiletries, fragrances and personal care products, toys and games, and sporting goods; promotional services in the fashion field including counseling on the selection and matching of fashion products and accessories; management of retail store services in relation to clothing and a variety of other merchandise; advertising and marketing services; operation of consumer loyalty programs; promoting the goods and services of others by placing advertisements and promotional displays on an electronic site accessible through a computer network; providing on-line retail services and on-line ordering services in the field of a wide variety of general merchandise; namely clothing, footwear, headgear, clothing accessories, bags, leather goods, sunglasses, jewelry, hair accessories, cosmetics, toiletries, fragrances and personal care products, toys and games and sporting goods; promotional services in the fashion field including counseling on the selection and matching of fashion products and accessories; mail order catalogue services; computer on-line ordering services.

The contested goods and services are the following:

Class 25:        Clothing; scarves; football boots; headgear; headgear; caps [headwear]; collar protectors; tee-shirts; singlets; sports shoes; headbands [clothing].

Class 35:        Dissemination of advertisements; compilation of information into computer databases; radio commercials; compilation of statistics; advertising; marketing services; public relations services; opinion polling; on-line advertising on a computer network; business services relating to the provision of sponsorship; online advertisements; radio commercials; computerised file management.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

The applicant argues that the opponent’s ‘business activities (as far as can be seen) consists mainly in offering women’s yoga clothing, swimwear, running clothing and athletic clothing for fitness, golf & tennis’ and refers to the opponent’s website in support of its claim. The comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

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, headgear (listed twice in the applicant’s list of goods) are identically contained in both lists of goods.

The contested scarves; collar protectors; tee-shirts; singlets; headbands [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested football boots; sports shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested caps [headwear] are included in the broad category of the opponent’s headgear. Therefore, they are identical.

Contested services in Class 35

Advertising and marketing services are identically contained in both lists of services (including synonyms).

The contested dissemination of advertisements; radio commercials (listed twice in the applicant’s list of goods); public relations services; on-line advertising on a computer network; online advertisements are included in the broad category of the opponent’s advertising and marketing services. Therefore, they are identical.

The contested business services relating to the provision of sponsorship are, in reality, advertising services, for example, companies that promote other companies for potential sponsors and sponsorships. Therefore, the contested services are included in the broad category advertising services of the opponent and are identical.

The contested opinion polling is a specific business management service that can be used as a part of setting out a business strategy (for another company). These services overlap with the opponent’s management of retail store services in relation to clothing and a variety of other merchandise, which are business management services in relation to managing retail stores or outlets for others. Therefore, these services are identical.  

The contested compilation of information into computer databases; compilation of statistics; computerised file management are specific services offered to help in the internal day-to-day operations of an organisation. They are activities that assist in the running of a commercial enterprise. The opponent’s management of retail store services in relation to clothing and a variety of other merchandise are intended to help companies providing retail store services and to manage their business by setting out the strategy and/or the direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning. The services under comparison can be offered by the same specialised undertakings and are aimed at the same consumers, namely professional business customers. They contribute to the same general purpose, namely the proper running and success of an undertaking. Therefore, they are similar to a low degree.

 

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, while the services found to be identical and similar to a low degree target (mainly) business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average for the goods and above average for the services, since business support and management services are normally offered to companies/professionals that, in general, pay more money for such services than what is the case for ordinary consumer products such as the goods in Class 25.  

3. The signs

ATHLETA
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 earlier mark (‘ATHLETA’) will be understood as alluding to ‘athlete’ by the majority of the public in the relevant territory, for example, in English (athlete), in French (athlète) and in German (Athlet). The mark is therefore weak for the relevant goods in Class 25, since these goods can be athletic sportswear. Nevertheless, for the relevant services in Class 35 no association will be made between ‘ATHLETA’ and the services. Therefore, the earlier mark is distinctive for the relevant services.  

The verbal element ‘ATHLETIA’ of the contested sign will also be understood (by the majority of the public) as allusive and therefore weak for the relevant goods, and distinctive for the relevant services (for the same reasons as regarding the earlier mark). The contested sign (a figurative mark) is furthermore composed of four arrows pointing towards the centre of the mark, and are coloured in different shades of green, against a black squared background. The applicant argues that the ‘arrows are suggestive of the dynamic functioning of the represented company’ and that the ‘arrows put the focus of the spectator to the rough center of the figurative mark’. The arrows are commonly used symbols in trade marks and have therefore a limited distinctive character.

Visually, the signs coincide in the string of letters ‘ATHLET*A’. They differ in the penultimate letter (‘I’) of the word element in the contested sign and its graphical elements. Although the signs’ word elements will be perceived as allusive and weak for the relevant goods, their word elements only differ in one single letter, and therefore create only a minor difference between these words. As regards the differences between the figurative aspects of the signs, it must be noted that in the case of signs which consist of both verbal and figurative components, in principle, the public 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; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, these elements have a limited impact when assessing the likelihood of confusion between the marks. Therefore, the signs are visually similar to an average degree for the relevant goods and highly similar for the relevant services for which ‘ATHLETA’ and ‘ATHLETIA’ are distinctive.

Aurally, the signs are highly similar in, for example, English, French and German, since the differing (and penultimate) letter ‘I’ in the contested sign is hardly audible when pronouncing the signs in these languages.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, that is, the words ‘ATHLETA’ and ‘ATHLETIA’ will be perceived by the majority of the public as alluding to the concept of an athlete. The contested sign contains an additional concept, since the sign’s figurative elements (the arrows) are meaningful in the whole territory. Considering that the distinctive character of these elements is the same – they are all weak in relation to the relevant goods – the signs are conceptually similar to an average degree for the relevant goods, and similar to a high degree for the relevant services for which ‘ATHLETA’ and ‘ATHLETIA’ are distinctive, but the figurative elements are weak.

The applicant claims that ‘ATHLETIA’ ‘does not have an independent meaning’, that it is a ‘fanciful word’. The Opposition Division makes reference to its findings above, but notes that the applicant is contradicting himself when he states that ‘the word “ATHLETIA” as part of the figurative mark is  (…) not the distinctive element of the Applicant’s trade mark’. Either way, as explained above, ‘ATHLETIA’ is weak for the relevant goods and is distinctive for the relevant services.

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.

The applicant argues that the earlier mark is weak for the relevant goods and services since the earlier trade mark ‘describes the goods behind “ATHLETA” and the target group’ and that ‘ATHLETA’, therefore, ‘exhibits only a low level of originality’. As mentioned above in section c) of this decision, the earlier mark will be perceived as having a low degree of distinctiveness (e.g. in English, French and German) for the relevant goods and as having average distinctiveness for the relevant services.  

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the likelihood of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods are identical, whereas the services are partly identical and partly similar to a low degree.

For the relevant goods, the signs are visually similar to an average degree and aurally highly similar. Moreover, the signs are conceptually similar to an average degree. As mentioned above, the earlier mark has a low degree of distinctiveness for the goods in question for the majority of the relevant public. However, while the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (judgment of 29/09/1998, C-39/97, ‘Canon’), this is only one of a number of elements entering into that assessment and it is established case-law that, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 16/03/2005, T-112/03, ‘Flexi Air’, § 61, judgment of 13/04/2011, T-358/09, ‘Toro de piedra’, § 45 and judgment of 13/06/2012, T-534/10, ‘Hellim’, § 53). In the present case, it should be noted that the contested goods are identical to the goods covered by the earlier mark and the degree of attention of the public in relation to these goods is average.

Account is also 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).

For the relevant services, the signs’ word elements are distinctive, which makes the likelihood of confusion between the signs even greater. The signs are visually, aurally and conceptually highly similar in relation to the relevant services in Class 35. Bearing this in mind, and taking into account the principle of interdependence, which states that 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), the similarity is such that it is likely to lead consumers to confuse them even in relation to the services found to be similar to a low degree. Account is also taken of the fact that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

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 European Union trade mark registration No 7 234 503. It follows that the contested trade mark must be rejected for all the contested goods and services. 

As the earlier right leads 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).

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Adriana VAN ROODEN

Christian RUUD

Boyana NAYDENOVA

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.