OPPOSITION No B 2 596 891

Regatta Ltd, Risol House, Mercury Way, Dumplington, Urmston, Manchester M41 7RR, United Kingdom (opponent), represented by Wilson Gunn, 5th Floor, Blackfriars House, The Parsonage, Manchester M3 2JA, United Kingdom (professional representative)

a g a i n s t

Payless ShoeSource Worldwide Inc., Jayhawk Towers, 700 S.W. Jackson Street, Suite 202, Topeka, Kansas 66603, United States of America (holder), represented by Bugnion S.P.A., Via A. Gramsci 42, I-50132 Firenze, Italy (professional representative).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 596 891 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of international trade mark application No 1 232 732 designating the European Union, namely all the goods in Class 25. The opposition is based on European Union trade mark registration No 11 862 042. The opponent invoked Article 8(1)(b), Article 8(4) and Article 8(5) EUTMR, although the grounds of Article 8(4) and 8(5) EUTMR were later withdrawn by the opponent.

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; articles of clothing, footwear and headgear for use in sporting and outdoor pursuits; gloves [clothing]; mittens; scarves; gaiters, namely, neck gaiters, leg gaiters and ankle gaiters; socks; leggings [leg warmers]; leggings [trousers]; tights; underclothing; sweat-absorbent underclothing [underwear]; underwear; thermal underwear; vests; sleepwear; jackets [clothing]; jacket hoods; jerseys [clothing]; sports jerseys; jumpers; pullovers; body warmers; gilets; fleeces; knitwear; shirts; short-sleeve shirts; sweaters; t-shirts; polo-shirts; tank-tops; leisurewear; tracksuits; skirts; trousers; pants; shorts; skorts; dresses; swimwear; outerwear, namely, shells, rain jackets, rain pants; waterproof clothing; waterproof jackets; overtrousers; coats; overcoats; raincoats; anoraks; parkas; ponchos; windcheaters; ski wear namely, ski suits, ski vests, ski jackets, ski bibs, bib overalls, bib pants, ski pants, ski hats, ski gloves; snowboard wear namely, snowboard jackets, snowboard trousers, snow suits; clothing for cyclists namely, cycle jerseys, cycle t-shirts, cycle jackets, cycle shorts, cycle bibs, cycle trousers, cycle leggings [trousers], waterproof clothing for cyclists, windproof clothing for cyclists, cycle gloves, cycle mitts; belts [clothing]; money belts (not of precious metal); leisure footwear; shoes; sandals; flip flops; athletic shoes; sneakers; trail shoes; boots; snow boots; ski and snowboard boots and shoes and parts thereof; cycle shoes; lace boots; galoshes; hiking shoes and boots; climbing shoes and boots; wellingtons; inner soles; hats; caps [headwear]; headbands [clothing]; earbands; bandanas; ear muffs [clothing]; balaclavas; mufflers; beanies; knitted caps.

The contested goods are the following:

Class 25: Footwear.

All the contested goods, namely footwear in Class 25, are identically included in the list of the opponent’s goods.

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 considered to be average.

3. The signs

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 sign consists of a figurative element that is a highly stylised grey upper case letter ‘R’ that is rotated anti-clockwise. Although a letter ‘R’ may be perceived as referring to the ‘regular’ width of footwear, the unusual stylisation of this letter means that it can be reasonably assumed that this letter will not trigger any specific semantic associations and, therefore, its degree of distinctiveness is average. The opponent’s argument that the earlier mark could evoke the concept of a landscape is considered too far-fetched; the earlier mark would require further stylisation or additional elements to be interpreted in this way.

The contested sign consists of an upper case letter ‘R’, a wavy line and a dot, all of which are white on a square black background. The combination of the figurative elements in the contested sign may be perceived as a highly stylised depiction of a landscape. To this extent, these elements may evoke the idea of ‘outdoors’; however, consumers would have to make several mental steps to make that association. Based on all the above, none of the elements in the contested sign is more dominant than other elements or relates to the goods in question; therefore, all the elements are distinctive to an average degree.

Visually, the signs do not coincide. It is clear from the above descriptions that the only point in common is the upper case letter ‘R’. However, this coinciding element is depicted in different ways, that is, in grey and rotated anti-clockwise in the earlier sign and in white and aligned vertically in the contested sign. Furthermore, the signs differ with regard to all the additional elements of the contested sign. As a consequence, the signs are considered visually dissimilar.

Aurally, since the signs coincide in their only pronounceable element, the letter ‘R’, they are considered aurally identical.

Conceptually, reference is made to the assertions above. The signs’ coincidence in their sole letter, ‘R’, is counteracted by the fact that consumers might associate the contested sign’s figurative element with the concept of a landscape; this concept is completely missing in the earlier mark. Overall, the signs are conceptually similar to an average degree.

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 as a whole has no clear 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 identical and the signs are aurally identical, conceptually similar to an average degree and visually dissimilar. It must be noted that in cases of conflicting signs containing the same single letter, the visual comparison is normally of decisive importance. In the present case, the coinciding letter is represented in a significantly different manner in the signs, and the contested sign contains additional figurative elements. As a result, the impact of the coincidence in the single letter is fully counteracted by the differing elements.

Based on all the foregoing and also on the fact that consumers usually perceive signs as a whole without engaging in a detailed analysis or dissecting signs into their elements, it must be concluded that the potential aural and conceptual link in a single letter depicted with very different visual stylisations is not sufficient for the public to believe that the goods come from the same undertaking or from economically linked undertakings.

Considering all the above, even considering that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marianna KONDÁS

Ferenc GAZDA

Solveiga BIEZA

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.