OPPOSITION No B 2 007 931
Mip Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Mip Metro Group Intellectual Property Gmbh & Co. KG, Eileen Hudson, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)
a g a i n s t
Isa-Traesko GmbH, Oderstr. 9, 24539 Neumünster, Germany (applicant).
On 12/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 007 931 is rejected in its entirety.
2. The opponent bears the costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 10 499 069. The opposition is based on European Union trade mark registration No 3 446 317 and international trade mark registration No 983 458 designating the European Union. 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
The goods on which the opposition is based are the following:
EUTM No 3 446 317
Class 18: Bicycle bags, sport bags, rucksacks, trunks, travel bags.
Class 25: Ready-made clothing for women, men and children; sportswear, ski-wear, gloves, stockings, footwear, sports shoes, hiking shoes, headgear.
Class 28: Games and playthings, gymnastic and sporting articles (included in class 28); sports balls, racquets for ball games, especially for tennis, squash, badminton; golf balls; equipment for tennis, squash, golf and badminton, exercise bikes, exercise equipment, step boards, skateboards, in-line skates, roller skates, rollers for skateboards and roller skates, skates, scooters; special bags for sports equipment, bags for carrying and transporting ice skates and roller skates (included in class 28), equipment for playing, climbing and swings (for outdoor use).
IR No 983 458
Class 18: Goods of leather and imitation leather (to the extent included in this class); trunks and suitcases; rucksacks; bags, to the extent included in this class; pocket wallets; key cases and neck pouches, each to the extent included in this class; parasols, umbrellas, walking sticks; mountaineering sticks.
Class 24: Woven and textile goods (to the extent included in this class); bed and table covers; protective covers (loose covers) for garden furniture and sun shades; chair covers of plastic, and also of textile material; covers for cushions.
Class 25: Clothing; footwear; headgear for wear.
Class 28: Games, toys; gymnastic and sports articles (to the extent included in this class); inflatable swimming pools for leisure purposes; swimming boards; surf boards; swimming boards for leisure purposes; flippers for swimming; toys for swimming pools; inflatable toys in the form of boats; stationary exercise bicycles; sports articles and sports equipment for mountaineering, hiking and trekking, to the extent included in this class; fishing tackle; trekking sticks (sports equipment); floating inflatable playthings.
The contested goods are the following:
Class 18: Goods of leather, imitations of leather, textile materials or plastic, namely bags and other containers not specifically designed for the objects being carried; Small leather goods, in particular purses, pocket wallets, key wallets; Hand bags, briefcases, shopping bags, school satchels, back packs; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols, and walking sticks; Saddlery; Travelling sets (leatherwear).
Class 25: Clothing, including sportswear; Footwear, including sports footwear; Parts for footwear, in particular soles, heels, studs, spikes; Headgear, including sports headgear; Gloves, including sports gloves; Accessories, namely headscarves, neckerchiefs, shawls, scarves, socks, stockings, ties, belts; Clothing of leather, imitations of leather, or of fur; Linings (parts for clothing), ready-made pockets for clothing; Corsetry.
Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.
- 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 assumed to be identical are directed at the public at large. The degree of attention is average due to the common nature of the goods.
- The signs
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Earlier trade marks |
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).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The earlier marks are figurative marks. They contain a word element ACTIVE in stylised lower case typeface and an elaborated upward pointing triangle of a thick dark line and circular centre, placed in front of them.
The General Court has in its judgment of 6 October 2004, T-117/03, T-119/03 and T-171/03, ‘NL’, stated that “‘active’ refers rather to the use of the goods, namely clothes for active people or which allow them to be active”.
In T-307/09 ‘NATURALLY ACTIVE’ of 9 December 2010, which regarded numerous goods in Classes 3, 5, 16, 18 and services in Classes 35 (retail services) and 44, the Board rejected the mark in respect of all goods and services as it was not considered to be distinctive. The Board also found that if the mark should be registered the IR holder should have demonstrated that the word sign at issue had acquired distinctiveness not only in the United Kingdom and in Ireland, but also in all the other Member States. The General Court dismissed the appeal and found that the Board of Appeal had not erred in including in the relevant public understanding ‘NATURALLY ACTIVE’ consumers in other countries other than those where English is the native language, and in particular consumers in countries where knowledge of basic English is a matter of common knowledge.
Therefore, the word ‘ACTIVE’ is a basic English word understood widely throughout the relevant territory as such or because of its close equivalent in the relevant languages. The word is perceived as referring to someone/something who moves around a lot, taking action, being energetic.
Bearing in mind that the relevant goods can all be related to an active lifestyle, manufactured specifically for active people to be used at sports, travelling etc., allowing the consumers to be active, this element is considered to be non-distinctive in relation to the relevant goods, in accordance with the above mentioned decisions of the General Court and the Board of Appeal.
The earlier marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
The contested sign is a figurative mark. It contains the words ACTIVE and WALKER placed on and above two lines that form an arrow like figurative device. The word element ACTIVE is perceived as explained previously and is non-distinctive. The word WALKER is perceived by the English-speaking public as a person who walks around. Bearing in mind that the relevant goods are clothing, headgear and footwear items, and various types of bags, leather and umbrellas, it is considered that this element is weak if not non-distinctive for these goods for that public. The element is distinctive for the remaining, non-English speaking public. The mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, aurally and conceptually, the signs coincide in that they both contain the element ACTIVE. However, this coinciding element has been found non-distinctive and its typeface and stylisation is very different in both signs. The marks also contain visual differences in respect of the additional elements, such as the triangle in the beginning of the earlier marks and the element WALKER and the device and stylisation elements in the contested mark.
Since the marks’ only coincidence lies in a non-distinctive element, whilst the marks also contain sufficient additional elements which are completely different in both signs such as the rather prominent figurative elements and the additional word ‘WALKER’ of the contested sign (although the latter is weak for a part of the public), the signs are visually, aurally and conceptually similar to a low 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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, as stated above, the marks consist of a verbal element which is non-distinctive and a figurative component. The marks passed the threshold of registrability but their distinctiveness lies only in the overall graphic combination of the non-distinctive word and the graphic components. Consequently, the degree of distinctiveness of the marks as a whole is low.
- Global assessment, other arguments and conclusion
The contested goods have been assumed identical. The similarities and dissimilarities of the marks have been described in detail in section c).
The conceptual similarity resulting from the fact that two marks use elements with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24). In the present case, the enhanced distinctiveness has not been claimed by the opponent in relation to its marks.
A company is certainly free to choose a mark with lower distinctive character, including trade marks with descriptive words, and use it in the market. However, in so doing, it also has to accept that competitors are equally entitled to use trade marks with similar or identical descriptive components. The Court of Justice has consistently held that there may be a public interest in not monopolising certain signs, in particular to protect competitors or consumers with regard to signs lacking any distinctive character, or being exclusively descriptive of the goods and services (04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230; and 06/05/2003, C-104/01, Libertel, EU:C:2003:244, in conjunction with decision of 23/05/2012, R 1790/2011-5 – ‘4refuel (Fig. Mark)/Refuel’).
The signs are similar to the extent that they share the sequence of letters ACTIVE which was found to be non-distinctive for the relevant goods. It is now an established practice that, when the marks share an element with no distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components or the overall impression conveyed by the marks as is the case here.
The signs differ in the remaining word element ‘WALKER’ of the contested mark. Although this element is weak for a part of the public, it still presents a relevant difference between the signs as it is not weaker than the coinciding element. Moreover, for a large part of the public this element is distinctive and thus contributes strongly to differentiating the marks. The signs also differ in the device and stylisation elements found in the contested complex trade mark and in those of the earlier marks which are, in particular from the visual perspective, quite striking
Consequently, even assuming that the goods are identical, the differences described above are sufficient to exclude any likelihood of confusion between the marks, bearing in mind that the common elements lack distinctiveness for the relevant public and are not the dominant elements of the signs.
Furthermore, it is established that generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the additional distinctive verbal element, and different figurative elements are particularly relevant when assessing the likelihood of confusion between them.
Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
For the sake of completeness, the Opposition Division notes that the opponent filed a declaration pursuant to Article 28(8) EUTMR concerning the earlier international mark that could potentially affect the scope of protection of that earlier mark in Class 25. However, given the outcome of this decision which was based on the assumption that all goods are identical, it is not necessary to suspend the proceedings until the declaration is processed because the amended list of goods could not impact the outcome of this decision.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
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Michaela SIMANDLOVA |
Erkki MÜNTER |
Francesca CANGERI SERRANO |
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.