OPPOSITION No B 2 653 262

Body Attack Sports Nutrition GmbH & Co. KG, Schnackenburgallee 217-223, 22525 Hamburg, Germany (opponent), represented by Glawe, Delfs, Moll, Rothenbaumchaussee 58, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Dries Decoene, Kouterstraat 85/001, 8550 Zwevegem, Belgium (applicant), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).

On 02/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 653 262 is partially upheld, namely for the following contested goods:

Class 18:        Sport bags; carrier bags; weekend bags; backpacks; all aforementioned goods not for fitness purposes.

Class 25:        Clothing; footwear; headgear; active sports clothing; caps [headwear]; headbands [clothing]; bandanas [neckerchiefs]; sweatbands; socks; gloves [clothing]; wind resistant jackets; insulated clothing; thermally insulated clothing; breathable clothing; all aforementioned goods not for fitness purposes.

Class 28:        Gymnastic and sporting articles not included in other classes; shin guards [sports articles]; knee, elbow and ankle guards for sports purposes; sports gloves, included in class 28; balls; bags specially designed for sports equipment; all aforementioned goods not for fitness purposes.

2.        European Union trade mark application No 14 693 535 is rejected for all the above goods. It may proceed for the remaining goods.

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 14 693 535, namely against some of the goods in Classes 18 and 28 and all the goods in Class 25. The opposition is based on international trade mark registration No 1 110 977 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.

1. The goods and services

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

Class 25:        Clothing, footwear, headgear; all the aforementioned goods also for use in sports, in particular gloves for gymnastics.

Class 28:        Articles for gymnastics and sports.

After a limitation of the list of goods following a request filed by the applicant on 31/03/2016, the contested goods are the following:

Class 18:        Suitcases; sport bags; carrier bags; weekend bags; backpacks; all aforementioned goods not for fitness purposes.

Class 25:        Clothing; footwear; headgear; active sports clothing; caps [headwear]; headbands [clothing]; bandanas [neckerchiefs]; sweatbands; socks; gloves [clothing]; wind resistant jackets; insulated clothing; thermally insulated clothing; breathable clothing; all aforementioned goods not for fitness purposes.

Class 28:        Gymnastic and sporting articles not included in other classes; shin guards [sports articles]; knee, elbow and ankle guards for sports purposes; sports gloves, included in class 28; balls; bags specially designed for sports equipment; all aforementioned goods not for fitness purposes.

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.

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

The term ‘also for use in’, used in the opponent’s list of goods in Class 25, indicates that the goods may be used in sport and does not restrict them to those used in sport.

The term ‘in particular’, used in the opponent’s list of goods in Class 25, indicates that the specific goods are only an example of items included in the category and that protection is not restricted to them. (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

Contested goods in Class 18

The contested sport bags; carrier bags; weekend bags; backpacks; all aforementioned goods not for fitness purposes are similar to the opponent’s clothing in Class 25. The goods at issue may all be produced by the same manufacturers and distributed through the same channels and outlets to the same end users. Therefore, these goods are considered similar.

The contested suitcases are considered dissimilar to the opponent’s goods in Classes 25 and 28. Suitcases are for carrying things when travelling and do not satisfy the same needs as clothing, footwear, headgear or even articles of gymnastics and sports. They are not sold in the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary. Therefore, these goods are considered dissimilar.

Contested goods in Class 25

The contested clothing; footwear; headgear; all aforementioned goods not for fitness purposes are included in the opponent’s broader categories clothing, footwear, headgear. Therefore, they are identical.

The contested active sports clothing; headbands [clothing]; bandanas [neckerchiefs]; sweatbands; socks; gloves [clothing]; wind resistant jackets; insulated clothing; thermally insulated clothing; breathable clothing; all aforementioned goods not for fitness purposes are included in the opponent’s clothing. Therefore, they are identical.

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

Contested goods in Class 28

Despite the limitation of the list of goods in this class to goods not for fitness purposes, the contested gymnastic and sporting articles not included in other classes; shin guards [sports articles]; knee, elbow and ankle guards for sports purposes; sports gloves, included in class 28; balls; bags specially designed for sports equipment; all aforementioned goods not for fitness purposes are included in the opponent’s broad category articles for gymnastics and sports. Therefore, they are identical.

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 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 considered average.

3. The signs

ATTACK
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 right is a word mark consisting of the single word ‘ATTACK’, which will be understood by the English-speaking part of the relevant public, since it means ‘an aggressive and violent act against a person or place’. It will also be understood by other parts of the public, given its similarity to the equivalent words in other languages of the relevant territory, such as ‘attaque’ in French, ‘ataque’ in Portuguese and Spanish, ‘attak’ in Finnish or ‘atak’ in Polish. However, it will not be understood by the remaining part of the public. In any case, as it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign is a figurative mark consisting of the word ‘ATTACKL’ depicted in a fanciful typeface. Part of the public is likely to perceive the element ‘ATTACK’ in the sign and associate this element with the meaning given above. The sign is depicted in black upper case letters; the first letter, ‘A’, is larger than the remaining letters and contains a red triangle in its upper part and two yellow triangles at its base. The letters ‘TT’ share a horizontal line, which extends from the letter ‘A’ and continues above the letters ‘ACKL’. The remaining part of the relevant public could perceive the contested sign as consisting only of the letters ‘TTACKL’ or ‘ACKL’, with the preceding highly stylised letter ‘A’ or letters ‘ATT’ perceived as figurative elements. However the sign is perceived by this part of the relevant public, it has no meaning in relation to the relevant goods, and therefore it is also considered distinctive as a whole and has no elements that are more distinctive than others.

The Opposition Division finds it appropriate to continue the analysis focusing on the part of the relevant public that will perceive the contested sign as containing the word ‘ATTACK’ and a final letter ‘L’, and which associates the former with the meaning given above.

Before comparing the signs, it must be pointed out that, in principle, the verbal component of a sign usually has a stronger impact on the consumer than the figurative component, since generally the public does not tend to analyse signs and will more easily refer to the sign in question by its verbal element than by describing its figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). In addition, it must be borne in mind that 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 letters ‘ATTACK’, which form the entire earlier mark and constitute the first six letters out of a total of seven in the contested sign, which, as stated previously, is distinctive. However, they differ in the final letter, ‘L’, of the contested sign, as well as in that sign’s stylisation and figurative elements, described above.Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs by the relevant public coincides in the sound of the letters that form the earlier mark, ‛ATTACK’, which are present identically in the contested sign, whereas it differs in the sound of the final letter, ‛L’, in the contested sign, which has no counterpart in the earlier sign.Therefore, the signs are aurally highly similar.

Conceptually, regarding the earlier right reference is made to the previous assertions concerning its semantic content. In the case of the contested mark, as explained above the sign as a whole has no meaning for the public under consideration, which will, however, perceive the word ‘ATTACK’ and associate it with the meaning given above, regardless of the differing letter ‘L’ at the end of the sign.To that extent, the signs are conceptually highly 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.

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. In the present case, the earlier trade mark has no meaning for any of the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the goods are identical or similar and the signs are similar, especially from the aural and conceptual perspectives. The differences between the marks lie in the letter ‘L’ of the contested mark, appearing at the end of the mark, to which consumers usually pay less attention, and in the contested mark’s figurative elements, which will have a limited impact.

The applicant argues that the contested sign consists of the fanciful term ‘ACKL’ and as such has no similarity to the earlier right, not only because the earlier right has a meaning for part of the relevant public but also because of the additional figurative elements of the contested sign. However, at least a part of the relevant public will perceive the contested sign as the word ‘ATTACKL’, and associate it, as explained above, with the word ‘ATTACK’, which constitutes the entire earlier mark. Therefore, despite the other possible perceptions of the contested sign, the fact that a significant part of the relevant public will perceive it as explained above is sufficient for a finding of likelihood of confusion and to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 110 977 designating the European Union. It follows that the contested trade mark must be rejected for the contested goods found to be similar or identical.

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 shall 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

Benoît VLEMINCQ

Begoña URIARTE VALIENTE

Martina GALLE

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.