OPPOSITION No B 2 589 888

Casa Prem, S.L., Calle Gamonal, 45, Pol Ind. Vallecas – Nave A/B, 28031 Madrid, Spain (opponent), represented by Wolke, Patentes y Marcas, S.L., Calle Alejandro Ferrant, 9, 28045 Madrid, Spain (professional representative)

a g a i n s t

Grohmann Schuhimport GmbH, Werner-von-Siemens-Platz 1, 5020 Salzburg, Austria (applicant), represented by Korn Rechtsanwälte OG, Argentinierstr. 20/1/3, 1040 Wien, Austria (professional representative).

On 16/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 589 888 is partially upheld, namely for the following contested goods:

Class 25:        Clothing, footwear, hats.

2.        European Union trade mark application No 13 816 285 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 all the goods of European Union trade mark application No 13 816 285. The opposition is based on European Union trade mark registration No 9 638 362 and on Spanish trade mark registrations No 2 652 844, No 2 666 076 and No 2 666 077. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF SPANISH TRADE MARKS No 2 652 844, No 2 666 076 and No 2 666 077,

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered – Rule 19(2)(a)(ii) EUTMIR.

In the present case, the notice of opposition was not accompanied by any evidence as regards earlier Spanish trade marks No 2 652 844, No 2 666 076 and No 2 666 077 on which, inter alia, the opposition is based.

On 23/10/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 28/02/2016.

The opponent did not submit any evidence concerning the substantiation of these earlier trade marks.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on Spanish trade mark registrations No 2 652 844, No 2 666 076 and No 2 666 077.

The examination of the opposition will proceed on the basis of earlier European Union trade mark registration No 9 638 362.

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 the following:

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 11:        Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 35:        Advertising, commercial or industrial management assistance; export, import or commercial agencies and retailing of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire-extinguishing apparatus, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

The contested goods are the following:

Class 25:        Clothing, footwear, insoles, hats.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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, footwear, hats are used to cover parts of the human body and protect them against the elements. They are also articles of fashion. The opponent’s life-saving apparatus and instruments in Class 9 should be interpreted broadly as referring not only to items used for rescue, resuscitation and first aid but also to items that offer protection from serious bodily harm, such as any type of protective and safety equipment (e.g. clothing and footwear for protection against accidents, irradiation and fire; headgear for protection against accidents and injury).

When comparing the abovementioned goods, a link can be found between them. More specifically, they can have the same nature, insofar as the opponent’s goods include protective clothing, footwear and headgear, and, furthermore, they can have the same relevant public and methods of use. Considering all the above, the goods in question are similar to a low degree.

The contested insoles are a piece of material inside a shoe that is used to give extra warmth, comfort, etc. However, in contrast to the goods described above, these contested goods have even more remote connection with the opponent’s life-saving apparatus and instruments in Class 9, as they have different natures, purposes and methods of use. Furthermore, they have different producers and distribution channels and the goods are not in competition. The opponent’s remaining goods and services in Classes 9, 11 and 35 also have nothing in common with the contested insoles, since they have different natures (electric and electronic devices and business and retail services versus inner parts of shoes) and purposes (to measure distance or weight; to transmit a signal; to set the temperature, humidity or light in a certain environment; or to provide business help and advice versus to make a shoe warmer or more comfortable) and their methods of use are clearly also different. Furthermore, they are not made by the same producers, do not target the same end users and do not have the same distribution channels. None of the goods and services is in competition with each another and they are not interchangeable.

Consequently, the contested insoles are dissimilar to all of the opponent’s goods and services.

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 similar to a low degree are directed at the public at large and, in addition, the opponent’s life-saving apparatus and instruments may also target professionals with a certain knowledge or expertise in the field of injury prevention, such as rescuers, lifeguards, firefighters or police officers.

The degree of attention of the relevant public may vary from average to high, since the opponent’s life-saving apparatus and instruments are related to saving one’s life in dangerous, harmful or unpleasant situations.

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 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 elements ‘KOOL’ and ‘COOL’ of the signs are meaningless in certain territories, for example in those countries where English is not well understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking parts of the public, a significant part of which will not understand the words.

Both signs under comparison are figurative marks.

The earlier mark consists of the word ‘KOOLTECH’ in a black italic upper case standard typeface on a grey rectangle. Although the letters ‘OO’ are not in a standard font, a substantial part of the relevant public will recognise them as a double ‘O’ and, therefore, the Opposition Division will focus its examination on this part of public.

The contested sign is composed of the verbal elements ‘COOL’ and ‘TECH’, on two lines in slightly stylised blue italic upper case letters on an irregular six-sided blue-bordered shape; this is placed diagonally above a square shape, which is depicted in various shades of blue to appear three-dimensional.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

With respect to the present case, it can reasonably be assumed that the verbal element ‘TECH’, which the conflicting signs have in common, will be readily discerned by the relevant public as referring to ‘technology’, since ‘tech’ is a commonly used prefix or abbreviation for the English word ‘technical’ or ‘technology’. These words have similar equivalents for the relevant public (‘tecnico’ or ‘tecnologia’ in Italian and ‘técnico’ or ‘tecnología’ in Spanish). In the contested sign, the word ‘TECH’ is clearly separated from the word ‘COOL’. Bearing in mind that the goods in question, as described in detail above in section a) of this decision, are related to fashion items and life-saving equipment, the distinctiveness of the word ‘TECH’ is low, as it indicates that the goods were manufactured using technology or by technological means to enhance the quality of their performance (e.g. in relation to sports footwear or clothing, which may be designed to be technologically advanced to enhance the wearer’s performance). Therefore, the public will not pay as much attention to this weak element as to the other, more distinctive, elements of the signs.

The remaining verbal elements of the signs, ‘KOOL’ of the earlier mark and ‘COOL’ of the contested sign, have no meaning for the majority of the public in the relevant territories, as already stated above, and are, therefore, distinctive to an average degree for the relevant goods.

Finally, as regards the figurative elements of the signs, the stylisation of the letters in both signs is not particularly distinctive; the figurative elements of the earlier mark (the rectangular background and filled double letter ‘O’) have a purely decorative nature and the figurative elements of the contested sign (the blue shapes and three-dimensional square element) are somewhat more distinctive. In this regard, account must be taken of the fact that 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).

In summary, the verbal elements ‘KOOL’ and ‘COOL’, together with the figurative element of the three-dimensional square of the contested sign, are the most distinctive elements of the signs.

Neither of the signs has any elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of the letters ‘*OOL TECH’ and differ in their first letters, ‘K’ in the earlier mark versus ‘C’ in the contested sign. Furthermore, they differ in their figurative elements and overall stylisations, which, as stated above, have a weaker impact on the consumer’s perception than the verbal components of the signs.

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

Aurally, the pronunciation of the signs in the relevant territories is identical, since the letter ‘C’ of the contested sign and the letter ‘K’ of the earlier mark will be pronounced identically.

Therefore, the signs are aurally identical.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territories, the verbal element ‘TECH’, which is distinctive to a low degree and is included in both signs, will be associated with the meaning explained above. To that extent, since the coincidence between the signs lies in a weak element, the signs are conceptually similar to a low 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 meaning for any of the relevant goods from the perspective of the public in the relevant territories defined above. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Account must be also 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). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The present assessment of likelihood of confusion considers the perception of the Italian- and Spanish-speaking parts of the public in the relevant territory. The relevant public consists of the public at large as well as professionals.

As concluded above, the contested goods are partly similar to a low degree and partly dissimilar to the opponent’s goods and services, the degree of attention varies from average to high and the earlier mark has a normal degree of inherent distinctiveness.

The signs in conflict are visually similar to an average degree, aurally identical and conceptually similar to a low degree, as explained in detail above in section c) of this decision. The differences between the signs, as outlined above, are not sufficient to counteract their similarities.

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 covered are from the same or economically-linked undertakings. Furthermore, it is a common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image.

In the present case, although the public from the relevant territories might detect certain visual differences between the two conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a modern variation of the earlier mark configured in a different way, depending on the type of goods that it designates. It is, therefore, conceivable that the relevant public, even with a high degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.

Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the Italian- and Spanish-speaking parts of the public in the European Union and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 638 362. 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 sign must be rejected for some of the contested goods, even if they are to be similar to a low degree to the opponent’s goods, since, bearing in mind the interdependence principle mentioned above, the moderate degree of similarity between those goods is clearly offset by the average degree of visual similarity and the aural identity between the signs.

The remaining contested goods are dissimilar; therefore, 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.

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

Carmen SÁNCHEZ PALOMARES

Martin MITURA

Vita VORONECKAITĖ

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.