OPPOSITION No B 2 680 745

New Balance Athletics, Inc., 100 Guest Street, Boston Massachusetts 02135, United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Ángel 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Sicom Società a Responsabilità Limitata Semplificata, Via Veregra 78, 63014 Montegranaro, Italy (applicant), represented by Ing. Claudio Baldi S.r.l., Viale Cavallotti 13, 60035 Jesi (AN), Italy (professional representative).

On 21/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 680 745 is partially upheld, namely for the following contested goods:

Class 25:   Clothing; sweaters; cardigans; waistcoats; gowns; trousers; trousers shorts; jumpers; mackintoshes; leather clothing; stockings; stocking suspenders; sock suspenders; wind-jackets; ski trousers; pelisses; evening coats; topcoats; skirts; gowns; jackets [clothing]; undershirts; tee-shirts; clothing for gymnastics; collars; shirts; swimming costumes; running suits; fleece tracksuits; wedding dresses; bathrobes; underwear; brassieres; corsets; slips [undergarments]; boxer shorts; briefs; nighties; robes; pyjamas; gloves [clothing]; shawls and headscarves; sashes for wear; neckties; bowties; belts [clothing]; stocking suspenders; hats; berets; footwear;  boots; ankle boots; leather shoes; goloshes; rain boots; training shoes; sandals; mules.

2.        European Union trade mark application No 14 940 019 is rejected for all the above goods. 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 of European Union trade mark application No 14 940 019, namely against all the goods in Class 25. The opposition is based on, inter alia, international trade mark registration No 1 071 878 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 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 international trade mark registration No 1 071 878 designating the European Union.

1. The goods

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

Class 25: Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; collared shirts; golf pants, shirts and skirts; long-sleeved shirts; polo shirts; rugby shirts; short-sleeved or long-sleeved t-shirts.

The contested goods are the following:

Class 25: Clothing; sweaters; cardigans; waistcoats; gowns; trousers; trousers shorts; jumpers; mackintoshes; leather clothing; stockings; stocking suspenders; sock suspenders; wind-jackets; ski trousers; pelisses; evening coats; topcoats; skirts; gowns; jackets [clothing]; undershirts; tee-shirts; clothing for gymnastics; collars; shirts; swimming costumes; running suits; fleece tracksuits; wedding dresses; bathrobes; underwear; brassieres; corsets; slips [undergarments]; boxer shorts; briefs; nighties; robes; pyjamas; gloves [clothing]; shawls and headscarves; sashes for wear; neckties; bowties; belts [clothing]; stocking suspenders; hats; berets; footwear;  boots; ankle boots; leather shoes; goloshes; rain boots; training shoes; sandals; mules; footwear soles; heels; footwear uppers.

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

The term ‘namely’, used in the opponent’s list of goods 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 goods.

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.

The contested clothing; waistcoats; trousers; trousers shorts; mackintoshes; leather clothing; wind-jackets; ski trousers; topcoats; skirts; jackets [clothing]; undershirts; tee-shirts; clothing for gymnastics; shirts; swimming costumes; running suits; fleece tracksuits; hats; berets; footwear; boots; ankle boots; leather shoes; goloshes; rain boots; training shoes; sandals; mules are identical to the opponent’s athletic apparel, namely shirts, pants, jackets, footwear, hats, athletic uniform; shirts and skirts; long-sleeved t-shirts, either because they are identically contained in both lists or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested sweaters; cardigans; jumpers; pelisses; evening coats; collars; bathrobes;  gloves [clothing]; shawls and headscarves; sashes for wear; neckties; bowties; belts [clothing] are all items of clothing, like the opponent’s long-sleeved shirts. Therefore, these goods have the same nature. They also serve the same general purpose, namely to give some protection against the elements. Furthermore, they are seen not only as a means of protecting the body from the weather but also as fashion articles which may match an outfit and, for this reason, are sometimes chosen as complementary items to other items of clothing, footwear and headgear. Moreover, the distribution channels of the goods coincide and the sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Therefore, these goods are similar.

The contested gowns (listed twice); nighties; robes; pyjamas are essentially nightwear. The contested stockings; stocking suspenders (listed twice); sock suspenders; underwear; brassieres; corsets; slips [undergarments]; boxer shorts; briefs essentially consist of undergarment. These goods are similar to the opponent’s long-sleeved shirts, which are items of clothing. Indeed, these goods have the same nature and method of use. They can coincide in producers and end users. Moreover, they can be found in the same points of sale, since they have the same distribution channels.

The contested wedding dresses are similar to the opponent’s collared shirts, since the latter can be worn in a wedding outfit, these goods, being clothing items, have the same nature and method of use. Moreover, they are found in the same specialized points of sale. They can also have the same producer, that is ceremony apparel manufacturers.

The contested footwear soles; heels; footwear uppers are dissimilar from the opponent’s goods. Indeed, the latter essentially consist of clothing and athletic footwear. The public of reference in this case is the general public, unlike in the case of the contested goods, which target professionals in the field of shoemaking or repairing (e.g. shoemakers, cobblers). As a consequence, the distribution channels will not be the same. In fact, the opponent’s goods are sold in sportswear or clothing stores, as well as in department stores, while the contested goods can be found in specialised points of sale. These goods have different purposes and they do not have the same producers. They are not complementary to or in competition with each other. It is true that the contested goods may be parts of the opponent’s goods. Nonetheless, the mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts. Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and/or complementarity, be fulfilled.

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 or similar are directed at the public at large. The degree of attention is average.

3. The signs

PF
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘POSTURE FOUNDATION’ of the contested sign is not meaningful in some territories, for example, for the Greek-, Hungarian-, Slovakian-, Croatian- and Lithuanian-speaking parts of the public. The Opposition Division will proceed with the evaluation of the decision on this basis, that is in relation to the mentioned part of public.

The earlier mark is a word mark consisting of the letters ‘PF’, which have no meaning for the relevant public and are, therefore, distinctive.

The contested sign is a figurative mark that includes multiple elements. Firstly, in central position, it contains the slightly stylised black upper case letters ‘P’ and ‘F’ separated by a hyphen, depicted on a black circular background. The two letters, for the same reasons as for the earlier mark, have a normal degree of distinctiveness; while the hyphen and the merely decorative circle will not have any distinctive character. On the two sides of the mentioned background, there is the depiction of five lines of descending dimension, the latter having no connection with the relevant goods and, hence, distinctive. Nonetheless, 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). As a consequence, the distinctive figurative element mentioned above (i.e. the five lines on the sides of the circular device) and the stylisation of the contested sign has less impact than the verbal elements of the marks.

Finally, the mark includes the verbal elements ‘POSTURE FOUNDATION’ depicted in black bold upper case letters. As mentioned above, the expression will not be understood by the relevant public; consequently, it will have a normal degree of distinctive character. The public will, most likely, perceive it as the full writing of the letters ‘P’ and ‘F’, thus the element does not play an independent role in the overall impression given by the mark.

The marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘P’ and ‘F’, which constitute the earlier mark and the central part of the contested sign. They differ in non-distinctive (i.e. the hyphen, the black circle) or less relevant elements (i.e. the stylisation of the verbal elements and the depiction of the five lines on the sides of the circular device in the contested sign). They also differ in the elements ‘POSTURE FOUNDATION’, which will be, however, perceived as connected to the central letters ‘P’ and ‘F’, therefore playing an ancillary role compared to the letters ‘P’ and ‘F’.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛P’ and ‘F’, present identically in both signs. The pronunciation of the signs differs in the sound of the letters of the non-independent element ‘POSTURE FOUNDATION’.

Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Indeed, the earlier mark will be perceived as a combination of the two letters ‘P’ and ‘F’, which will not trigger any specific semantic associations. The same reasoning applies to the contested sign, which will be perceived as the combination of the very same letters. This element, as well as the component ‘POSTURE FOUNDATION’ and the figurative elements of the contested sign will not convey any relevant semantic concept.

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.

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 mark has been extensively used and enjoys 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 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.

5. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar and partly dissimilar. They target the public at large. The degree of attention is considered to be average. The earlier mark enjoys a normal degree of distinctive character in connection with the relevant goods.

The signs are visually similar to an average degree and aurally similar to a high degree, due to the fact that they have in common the letters ‘P’ and ‘F’, which constitute the entirety of the earlier mark and the central portion of the contested sign. The conceptual aspect does not influence the present comparison. The signs differ in the additional verbal elements, ‘POSTURE FOUNDATION’, of the contested sign. However, these will be perceived merely as the words written out in full abbreviated by the letters ‘P’ and ‘F’. Other than that, the signs differ only in the remaining figurative elements (i.e. the circular background and the lines on its sides) and in the stylisation of the verbal elements of the contested sign, which have none or a lesser impact on the overall impressions of the signs. Consequently, they are not sufficient to divert the attention of relevant consumers from the central elements of the contested sign, ‘P’ and ‘F’.

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).

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public mentioned above. 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 found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods 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 goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks: European Union trade mark registration No 818 153, ‘PF FLYERS’, international trade mark registration Nos 948 395 ‘PF’ and 1 072 458 ‘PF FLYERS’, both designating the European Union.

The European Union trade mark registration No 818 153, ‘PF FLYERS’ is registered for footwear in Class 25. Although, this earlier mark has a broader scope of protection than international trade mark registration No 1 071 878 designating the European Union, ‘PF’, the goods concerned are dissimilar to the remaining contested goods in Class 25, namely footwear soles; heels; footwear uppers.

As explained in section of a) of this decision, the remaining contested goods consist of footwear components that are very specific and that target professionals; while the opponent’s goods – footwear – are directed to the public at large. As a consequence, the distribution channels will not be the same. Indeed, the contested goods are sold through specialised points of sale, targeting professionals in the field. These goods and the opponent’s goods, which are basically wearing apparel for feet, have different purposes and they do not have the same producers. They are not complementary to or in competition with each other. Therefore, the remaining contested goods are dissimilar to the opponent’s footwear in Class 25. Hence, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods. Moreover, the earlier right considered, ‘PF FLYERS’, is even less similar to the contested mark, due to the fact that it contains the additional element ‘FLYER’. 

Concerning international trade mark designating the European Union registration No 1 072 458 ‘PF FLYERS’ and 948 395 ‘PF’, they cover respectively the same and a narrower scope of goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Consequently, no likelihood of confusion exists with respect to those goods. Furthermore, international trade mark registration 1 072 458 designating the European Union, ‘PF FLYERS’, is even less similar to the contested mark, due to the additional element ‘FLYERS’.

Therefore, the outcome cannot be different also considering the other earlier rights invoked.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use and reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness. Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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 will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Andrea VALISA

Orsola LAMBERTI

María Clara IBÁÑEZ FIORILLO

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.