OPPOSITION No B 2 724 048

Lotto Sport Italia S.p.A, Via Montebelluna, 5/7, 31040 Trevignano (TV), Italia (opponent), represented by Feltrinelli & Brogi, Via Ca' di Cozzi, 41, 37124 Verona, Italia (professional representative)

a g a i n s t

Nantong Rising Sports & Leisure Goods Co. Ltd., No.83 Tongfu South Road Nantong City Development Zone, Jiangsu Province 226010, People’s Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier, 13100 Aix-en-Provence, France (professional representative).

On 20/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 724 048 is upheld for all the contested goods.

2.        European Union trade mark application No 15 213 044 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 15 213 044. The opposition is based on, inter alia, Italian trade mark registration No 1 376 863. 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.

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 opponent’s Italian trade mark registration No 1 376 863.

1. The goods

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

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

The contested goods are the following:

Class 28:        Boxing gloves; gloves for games; shin guards [sports articles]; elbow guards [sports articles]; knee guards [sports articles]; men's athletic supporters [sports articles]; targets; balls for games; playing balls; punching bags; body-building apparatus; stuffed toys; nets for sports; weight lifting belts [sports articles]; protective paddings [parts of sports suits].

The contested boxing gloves; gloves for games; shin guards [sports articles]; elbow guards [sports articles]; knee guards [sports articles]; men's athletic supporters [sports articles]; punching bags; body-building apparatus; nets for sports; weight lifting belts [sports articles]; protective paddings [parts of sports suits] are included in the broad category of the opponent’s gymnastic and sporting articles not included in other classes. Therefore, they are identical.

The contested targets overlap with the opponent’s sporting articles not included in other classes. Consequently, they are identical.

The contested balls for games; playing balls; stuffed toys are included in the broad category of the opponent’s games and playthings. 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 or services in question.

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is expected to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 mark is a figurative mark made of the word ‘lotto’ depicted in fanciful white lower case letters placed on a black rectangular background. This mark is completed by a smaller left section of the rectangular background, in this case of grey colour, within which it is placed a figurative element consisting of a rhomboidal irregularly shaped device which contains a grey diamond-shaped element.

The element ‘lotto’ of the earlier mark will be understood as ‘lot’ or ‘lottery’ (See the Italian-English Collins Dictionary – Online Edition). 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 stylized letters ‘LOT’ depicted in fanciful capital black letters which a substantial part of the relevant public will perceive as such. The mark also contains a figurative element consisting of an irregular black geometrical shape containing a white rhombus or diamond at centre of which a black smaller element of the same shape is placed.

The element ‘LOT’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive. The same conclusion is valid as regards the distinctiveness of the figurative elements of both marks.

The marks in dispute have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the overall features of the letters ‘L-O-T’ and also in some of the features of their figurative element, in particular in the lines of the rhombuses/diamonds which compose them.

However, they differ in some of the features of the aforementioned verbal element, in the additional two letters ‘-T-O’ of the earlier mark and in the other features of the figurative elements of the signs, which display visible difference such as the background and the general arrangement of the geometrical shapes which form them.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LOT’, present identically in both signs. The pronunciation differs in the sound of the additional last two letters ‛-TO’ of the earlier mark, which have no counterpart in the contested sign. Account should be taken on the fact that one of the two differentiating letter is simply a repetition of the third letter of the contested sign. Therefore, the signs are aurally similar to an average degree

Conceptually, although the public in the relevant territory will perceive the meanings of the earlier mark, 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 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 in Class 28 covered by the trade marks in dispute have been found identical. The level of attention is expected to be average and the marks have no elements that could be considered clearly more dominant than other elements. Neither the marks possess descriptive, allusive or otherwise weak elements for the relevant goods. Therefore, they both have an average distinctive character.

The comparison of the marks has allowed the Opposition Division to point out that the marks are visually and aurally similar to an average degree.

In fact, the word element of the contested sign, namely ‘LOT’, which at least a part of the consumers will recognize as such, is fully included in the earlier mark’s only word element ‘LOTTO’.  When comparing signs in terms of their word elements, the Office considers signs similar insofar as they share a significant number of letters in the same position and when they are not highly stylised or when they are stylised in the same or a similar manner. Similarity may be found despite the fact that the letters are graphically portrayed in different typefaces, in italics or bold, in upper or lower case or in colour (judgments of 18/06/2009, T-418/07, LiBRO, EU:T:2009:208; 15/11/2011, T-434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663; C-42/12 P, Alpine Pro Sportswear & Equipment, EU:C:2012:765, appeal dismissed).

As regards the figurative elements of the marks, account must be taken on the fact that the verbal element of a sign does not automatically have a stronger impact (judgment of 31/01/2013, T-54/12, Sport, EU:T:2013:50, § 40) and in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (judgment of 23/11/2010, T-35/08, Artesa Napa Valley, EU:T:2010:476, § 37).

In the present case, the figurative elements of the marks display several similar characteristics. It cannot, therefore, be excluded that the figurative element of the contested sign might be associated to the figurative element of the earlier mark. Some of the features of these elements, such as the geometrical shape of a rhombus or diamond, do coincide in an almost identical manner, being the latter, for instance, possibly perceived as a rotated version of the first.  This especially in the light 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).

Moreover, it cannot be obliterated that, as already mentioned before, the goods covered by the marks in dispute have been found all identical. Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark ‘LOT’ as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). This is because, as seen above, not only the contested mark’s word letters are all included, in the same order, in the earlier mark but also because the contested mark’s figurative element displays characteristics similar to the figurative element placed on the left of the earlier mark. This circumstance might make the consumers possibly believe that, for instance, the contested mark is a restyling of the former or simply another line or a parallel line of the same brand from the same proprietor for certain types of goods in Class 28.

Considering all the above, the Opposition Division deems that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 376 863. 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Italian trade mark registration No 1 376 863 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Orsola LAMBERTI

Andrea VALISA

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.