OPPOSITION No B 2 673 963

Aguirre y Compañia, S.A., C/ Trespaderne, 29 Edificio Barajas, 1, 4ª planta, 28042 Madrid, Spain (opponent), represented by Salvador Ferrandis IP Legal SLP, C/ Joaquin Costa nº 24, 28002 Madrid, Spain (professional representative)

a g a i n s t

Alexandra Bring AB, Tre Liljor 2 B, 11344 Stockholm, Sweden (applicant), represented by Otmore AB, Kungsportsavenyn 10, 6 tr, 41136 Göteborg, Sweden (professional representative).

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

DECISION:

1.        Opposition No B 2 673 963 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 864 037. The opposition is based on European Union trade mark registration No 7 480 767, in relation to which the opponent invoked Article 8(1)(b) EUTMR, and Spanish trade mark registration No 2 662 146, in relation to which the opponent invoked Article 8(1)(b) and Article 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.

1. The goods

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

EUTM No 7 480 767

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; all the aforementioned goods only to be used in the field of sports.

Class 25: Sports clothing, sports footwear, sports headgear.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

ES No 2 662 146

Class 25: Clothing; footwear; headgear.

Class 28: Games; Toys; Gym and sport articles not included in other classes; Decorations for Christmas trees.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers.

Class 25: Footwear; Hats; Clothing.

Class 28: Sporting articles and equipment.

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 18

The contested bags, wallets and other carriers are similar to the opponent’s travelling bags; all the aforementioned goods only to be used in the field of sports covered by earlier EUTM No 7 480 767. The goods have the same purpose (containers used for carrying things), target the same public and have the same distribution channels.

The contested bags, wallets and other carriers are also similar to the opponent’s clothing covered by earlier ES No 2 662 146. This is because consumers are likely to consider the contested goods as accessories that complement articles of outer clothing, as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing to directly produce and market related bags, wallets and other carriers. Moreover, these goods can be found in the same retail outlets.

The contested luggage includes, as a broader category, the opponent’s travelling bags; all the aforementioned goods only to be used in the field of sports covered by earlier EUTM No 7 480 767. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

However, the contested luggage is considered dissimilar to the opponent’s clothing; footwear; headgear covered by earlier ES No 2 662 146. Luggage is for carrying things when travelling and does not satisfy the same needs as clothing, headgear and footwear. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary.

Luggage is also dissimilar to the opponent’s games; toys; gym and sport articles not included in other classes; decorations for Christmas frees covered by earlier ES No 2 662 146. These goods differ as regards their nature, purpose, method of use. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, they are neither in competition nor complementary.

Contested goods in Class 25

The contested footwear; hats; clothing are identically contained in the list of goods of earlier Spanish trade mark No 2 662 146 (including synonyms) and include, as broader categories, the opponent’s sports clothing, sports footwear, sports headgear covered by earlier European Union trade mark No 7 480 767. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 28

Sporting articles are identically contained in all lists of goods (including synonyms) and the contested sporting equipment includes the opponent’s sporting articles and sport articles not included in other classes covered by the earlier marks. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. The signs

EUTM No 7 480 767 ES No 2 662 146
Earlier trade marks	Contested sign

The relevant territory is the European Union for earlier mark No 1 and Spain for earlier mark No 2.

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).

Earlier mark No 1 is composed of an orange oval shape, leaning to the right, containing the stylised letter ‘B’. The word ‘Bullpadel’ is written below in slightly slanted grey lower case letters (except the first letter, ‘B’, which is upper case). The earlier mark has no elements that could be considered clearly more dominant than other elements.

For part of the public, the word ‘Bullpadel’ will be perceived as an indivisible unit, meaningless and thus distinctive. However, taking into account that the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58), some of the consumers, such as the English-speaking public, will perceive the word ‘Bull’ as referring to the male animal of the cow family and the word ‘PADEL’ as referring to the racquet sport played in doubles on an enclosed court a third the size of a tennis court, also called ‘short tennis’. For part of the public, such as the Spanish-speaking public, only the word ‘PADEL’ will be understood, with the abovementioned meaning. The word ‘PADEL’, when understood, is non-distinctive or weak, since it indicates that the goods are used for playing padel. In relation to the relevant goods in Classes 18, 25 and 28, the word ‘BULL’ is distinctive regardless of the part of the public taken into account, given that no direct or clear association can be made with the goods. Indeed, to perceive that the element could refer to a kind of skin perhaps used in the composition of the goods is rather far-fetched, too distant and does not reflect market reality.

The stylised letter ‘B’ is distinctive, since it is not descriptive, allusive or otherwise weak for the relevant goods.

Earlier mark No 2 is composed of a large oval shape, leaning to the right, containing the stylised letter ‘B’. The word ‘BULL’ is written below in slightly stylised italic letters, followed, underneath, by the word ‘PADEL’ written in smaller and thinner stylised letters. The figurative element and the verbal element ‘BULL’ are the co-dominant elements of the sign due to their size and position in relation to the word ‘PADEL’, written underneath in very small and thin letters.

The word ‘BULL’ is meaningless for the relevant Spanish public and is, thus, distinctive. The word ‘PADEL’ designates a racquet sport (the corresponding word in Spanish is ‘pádel’). In relation to the relevant goods in Classes 25 and 28, this word is non-distinctive or weak, since it indicates that the goods are for playing padel. The stylised letter ‘B’ is distinctive, since it is not descriptive, allusive or otherwise weak for the relevant goods.

The contested sign consists in a circle containing a figurative element, which will be perceived, at least by part of the public, as a very stylised letter ‘B’. This element is distinctive, since it is not descriptive, allusive or otherwise weak for the relevant goods.

Visually, even though part of the public will perceive the figurative element of the contested sign as a stylised letter ‘B’ within a circle, the graphic stylisation of this element is very different from the graphic stylisation of the figurative element of the earlier marks. In the earlier marks, the letter ‘B’ is clearly recognisable, since it corresponds to the first letter of the element that follows, ‘Bullpadel’ or ‘BULL’, and it is depicted within an oval shape leaning to the right (in orange in earlier mark No 1). The ‘B’ is joined to the left-hand side of the oval and its two bowls are stretched horizontally towards the right. In the contested sign, the graphic depiction of the letter ‘B’ is very stylised, part of its first bowl is missing and the second bowl has a triangular shape, and it is depicted within a circle. The signs further differ in the verbal element ‘Bullpadel’ in grey of earlier mark No 1 and in the verbal elements ‘BULL’ and ‘PADEL’ of earlier mark No 2. The structures of the signs are very different, as are their overall impressions. Therefore, it is concluded that the signs are visually dissimilar.

Aurally, as explained above, at least part of the public will pronounce the contested sign as /b/. Earlier mark No 1 will be pronounced in three syllables, /bull-pa-del/, irrespective of the different pronunciation rules in different parts of the relevant territory. Earlier mark No 2 will be pronounced /bull-pa-del/ or possibly only /bull/ given the small size of the element ‘PADEL’, which is hardly legible and is non-distinctive or weak for the goods. Since the stylised letter ‘B’ of the earlier signs will be perceived as the first letter of the verbal elements ‘Bullpadel’ and ‘Bull’ placed below, it will not be referred to aurally. Furthermore, 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). In the present case, the figurative elements of the earlier signs will be perceived as mere decorative elements and the public will not refer to the signs by pronouncing the letter ‘B’. As the signs do not coincide aurally in any element, it is concluded that the signs are not aurally similar.

Conceptually, reference is made to the above findings. The contested sign conveys the concept of the letter ‘B’ for at least part of the public. For part of the public, earlier sign No 1 conveys the concept of the male animal of the cow family and/or the concept of the racquet sport, whereas for part of the public the verbal element, ‘Bullpadel’, of the sign is meaningless. Earlier mark No 2 conveys the concept of the racquet sport, whereas the element ‘BULL’ is meaningless. The figurative elements of the earlier signs do not convey the concept of the letter ‘B’, since they will be perceived as decorative elements depicting the first letter of the verbal elements ‘Bullpadel’ and ‘BULL’ placed below. Therefore, the signs are not similar conceptually.

As the signs coincide merely in irrelevant aspects, they are, overall, dissimilar.

3. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier Spanish trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As explained above, the signs are, overall, dissimilar.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Adriana Van ROODEN

Frédérique SULPICE

Pedro JURADO MONTEJANO

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.