OPPOSITION No B 2 724 097

Biarritz Holdings, 9-11, rue Louvigny, 1946 Luxembourg, Luxembourg (opponent), represented by Marchais Associes, 4, avenue Hoche, 75008 Paris, France (professional representative)

a g a i n s t

Sport Design SRL, Via Piazzon, 102, 36051 Creazzo (VI), Italy (applicant), represented by GLP S.R.L., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 724 097 is upheld for all the contested goods.

2.        European Union trade mark application No 15 228 315 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 228 315. The opposition is based on European Union trade mark registration No 4 207 767. 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:

Class 25:        Clothing, footwear, headgear, oilskins and raincoats, swimsuits, singlets, T-shirts, shirts and tank tops, long-sleeved and short-sleeved, suits, cover-ups, hooded parkas, jackets, coats, jumpers, shorts, beach shorts, hiking shorts, volleyball shorts, underpants, beach pants, trousers, sport trousers, jeans, dungarees, dresses, skirts, sarongs, leisurewear, sports clothing and gymnastic clothing, clothing for skiing, snowboarding, including ski suits, ski trousers, ski jackets, snowboarding trousers and snowboarding jackets; clothing for skateboarding, aprons, pyjamas, night clothing, evening gowns, bath robes, underwear, lingerie, stockings, breeches, socks, vests, belts, braces, mittens, gloves, sashes, scarves (bandanas), caps, headbands, hats, visors, bonnets, hoods and sun protection headgear, slippers, boots, footwear, beach shoes, strap sandals and canvas sandals, special sports shoes and gymnastic shows, athletic shoes, sports boots, snow boots, snowboarding boots, ski boots, boots for kitesurfing, boots for surfboarding.

The contested goods are the following:

Class 25:        Clothing of imitations of leather; Dresses; Suits; Footwear; Training shoes; Stockings; Shirts; Sports singlets; Coats; Belts [clothing]; Jackets [clothing]; Skirts; Overalls; Aprons [clothing]; Welts for footwear; Hosiery; Sweaters; Skorts; Tips for footwear; Sandals; Esparto shoes or sandals; Gymnastic shoes; Beach shoes; Half-boots; Lace boots; Boots; Tee-shirts; Footwear uppers; Combinations [clothing]; Valenki [felted boots]; Wooden shoes.

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

Dresses; suits; footwear; stockings; shirts; coats; belts [clothing]; jackets [clothing]; skirts; aprons [clothing]; beach shoes; boots; tee-shirts are identically contained in both lists of goods (including synonyms).

The contested clothing of imitations of leather; sports singlets; overalls; hosiery; sweaters; skorts; combinations [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested training shoes; sandals; esparto shoes or sandals; gymnastic shoes; half-boots; lace boots; valenki [felted boots]; wooden shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested welts for footwear, tips for footwear, footwear uppers are all important parts of footwear and it is not unlikely that they would be produced by the same manufacturers and distributed through the same distribution channels as the opponent’s footwear. Furthermore, they are complementary and may coincide in the relevant public. Therefore, they are considered similar, at least 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 or similar at least to a low degree are directed at the public at large. The degree of attention is considered to be average.

3. The signs

ROXY
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘ROXY’ is not meaningful in certain territories, for example, in those countries where English is not understood. In order to avoid the examination of different meanings or the lack of such, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark is a word mark ‘ROXY’.

The contested sign is a figurative mark consisting of the words ‘Roxy Rose’ in handwriting, with two stylised roses below.

The earlier mark, and the word element ‘ROXY’ in the contested sign, has no meaning for the relevant public and is, therefore, distinctive.

The foreign word ‘ROSE’ of the contested sign may be understood by a part of the Spanish-speaking public since it is very close to the equivalent word in the official language in the relevant territory; rosa (rose flower), rosal (rose bush/tree), (information extracted from Collins English-Spanish Dictionary on 19/04/2017 at https://www.collinsdictionary.com/dictionary/english-spanish/rose) and the perception is reinforced by the roses below the verbal elements.

The figurative elements of two roses will also be perceived as such by the public.

The contested sign has no elements that could be considered clearly more distinctive or dominant than other elements.

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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the verbal element ‘ROXY’, constituting the whole earlier mark and the first verbal element in the contested sign. This coinciding component is distinctive for the relevant goods. However, they differ in the second verbal element ‘ROSE’ and in the stylisation of the contested mark, including the figurative elements of two roses. These differing elements are also distinctive for the relevant goods.  

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ROXY’, present identically in both signs. This coinciding element is distinctive. The pronunciation differs in the sound of the last letters ‛ROSE’ of the contested mark, which has no counterpart in the earlier sign. This verbal element is also distinctive for the goods.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of the contested sign and part of the public also the meaning of the verbal element ‘ROSE’, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 relevant part 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 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 within the meaning of Article 8(1)(b) EUTMR (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 30).

In the present case, the goods are identical or similar, at least to a low degree. They target the public at large, with an average degree of attention.

The signs are visually similar to an average degree and aurally similar, at least to an average degree, to the extent that they coincide in the distinctive verbal element ‘ROXY’.

The entire earlier mark is included in the beginning of the verbal elements of the contested mark. As described above, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark.

Therefore, taking into account all the relevant circumstances of the case, the differences between the marks, which results from the last verbal element ‘ROSE’ and the figurative elements of the contested mark, are not sufficient to counterbalance the similarity between them. The relevant public may believe that the relevant goods come from the same undertaking or at least economically-linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, 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, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 207 767. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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 mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 ground of the opposition, namely Article 8(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

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Janja FELC

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.