OPPOSITION No B 2 470 881

Hope Do Nordeste Ltda., Rua Jaraguá, 371 – Bairro Bom Retiro,São Paulo 01129-000, Brasil (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Daniel Meyers, 5 rue Mullerthal, 7640 Christnach, Luxembourg (applicant), represented by Office Freylinger S.A., 234 route d'Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative).

On 22/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 470 881 is partially upheld, namely for the following contested goods and services:

Class 25:        Clothing; Footwear; Headgear; Sports shoes; Town footwear; Sportswear for men, women and children; Sports caps; Berets; Headgear; Tee-shirts; Sweaters; Jumpers; Overalls; Socks; Waistcoats; Skirts; Shorts; Gowns; Leisurewear; Belts [clothing]; Polo shirts; Jackets [clothing]; Wind-cheaters; Raincoats; Rainsuits; Clothing of leather, Visors [headwear]; Scarves; Ties; Shawls; Sashes for wear; Gloves; Mufflers (clothing); Bonnets; Sweat suits; Underwear; Tennis sweatbands.

Class 35:        Retailing of clothing, in particular for playing tennis.

2.        European Union trade mark application No 13 296 331 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some the goods and services of European Union trade mark application No 13 296 331, namely against all the goods and services in Classes 25 and 35. The opposition is based on European Union trade mark registration No 5 493 796. 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 the following:

Class 25:        Clothing.

The contested goods and services are the following:

Class 25:        Clothing; Footwear; Headgear; Sports shoes; Town footwear; Sportswear for men, women and children; Sports caps; Berets; Headgear; Tee-shirts; Sweaters; Jumpers; Overalls; Socks; Waistcoats; Skirts; Shorts; Gowns; Leisurewear; Belts [clothing]; Polo shirts; Jackets [clothing]; Wind-cheaters; Raincoats; Rainsuits; Clothing of leather, Visors [headwear]; Scarves; Ties; Shawls; Sashes for wear; Gloves; Mufflers (clothing); Bonnets; Sweat suits; Underwear; Tennis sweatbands.

Class 35:        Advertising; Business management; Business administration; Office functions; Clerical services; News clipping services; Opinion polling; Sponsorship search; Personnel recruitment; Public relations services; Document reproduction; Administrative project management, In particular of projects for charitable purposes; Administrative management of a charitable foundation; Business lobbying, in particular in the field of humanitarian and philanthropic aid; Advertising promotion of humanitarian activities; Direct mail advertising; Marketing; Collection and systematic ordering of data in a central file; Computerised file management; Compilation of statistics; Assistance in management of business activities; Organisation of events for commercial purposes and advertising events for promoting and raising awareness of activities undertaken by associations and foundations for humanitarian or philanthropic purposes; Commercial mediation, In particular for the bringing together of sponsors with foundations, associations or societies aimed at the intellectual and sporting development of young people and athletes; Business auditing; Administration in the context of developing and setting up training programmes for young people and for athletes; Presentation of goods on all communications media for retail; Retailing of clothing, bags, and sporting articles and sporting equipment, in particular for playing tennis.

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

The term ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

The contested clothing is identically contained in both lists of goods and services.

The contested Sportswear for men, women and children; Tee-shirts; Sweaters; Jumpers; Overalls; Socks; Waistcoats; Skirts; Shorts; Gowns; Leisurewear; Belts [clothing]; Polo shirts; Jackets [clothing]; Wind-cheaters; Raincoats; Rainsuits; Clothing of leather; Scarves; Ties; Shawls; Sashes for wear; Gloves; Mufflers (clothing); Sweat suits; Underwear; Tennis sweatbands are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested footwear; sports shoes; town footwear and Headgear[mentioned twice], Sports caps; Berets, Visors [headwear], Bonnets and the opponent’s clothing serve the same purpose since they are used to cover and protect parts of the human body against the elements. Consumers, when seeking to purchase clothes, will expect to find footwear and headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items. Therefore, these goods are similar to each other.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested services retailing of clothing, in particular for playing tennis are similar to a low degree to the opponent’s clothing.

The contested services Retailing of bags, and sporting articles and sporting equipment, in particular for playing tennis are retail services concerning other goods than the opponent’s clothing Therefore, the above mentioned rule that the sale of particular goods are similar to a low degree to those particular goods are similar to a low to degree does not apply in regards to these retail services. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

The remaining contested services Advertising, Marketing, Advertising promotion of humanitarian activities; Direct mail advertising; Presentation of goods on all communications media for retail ;  Business management; Business administration; Office functions; Clerical services; News clipping services; Opinion polling; Sponsorship search; Personnel recruitment; Public relations services, Document reproduction; Administrative project management, In particular of projects for charitable purposes; Administrative management of a charitable foundation; Business lobbying, in particular in the field of humanitarian and philanthropic aid; Collection and systematic ordering of data in a central file; Computerised file management; Compilation of statistics; Assistance in management of business activities; Organisation of events for commercial purposes and advertising events for promoting and raising awareness of activities undertaken by associations and foundations for humanitarian or philanthropic purposes; Commercial mediation, In particular for the bringing together of sponsors with foundations, associations or societies aimed at the intellectual and sporting development of young people and athletes; Business auditing; Administration in the context of developing and setting up training programmes for young people and for athletes cover different activities in advertising, business management and presentation of goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs, the contested services and all the opponent’s clothing are provided/produced by very different types of companies and they target different consumers (on the one hand the general public looking for clothing articles, and on the other business owners and operators). Moreover, they are neither in competition with nor complementary to each other. Therefore, they are dissimilar.

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 and similar are directed at the public at large. The services found to be similar to a low degree are directed at business owners.

The degree of attention is an average regarding the goods. Regarding the services, the degree of attention is varying from average to high depending on the price, complexity and the expected impact on the user’s business.

3. The signs

HOPE
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a word mark consisting of the verbal element ‘HOPE’. The English word describes ‘a feeling of desire for something and confidence in the possibility of its fulfilment’ (Collins dictionary). It can also be a female first name. There are no elements which are more distinctive or more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark. It contains word and device elements. The figurative element consists of overlapping shapes of a circle and rectangle filled with abstract lines in white, black and grey. The verbal elements ‘HOPE’,  ‘and’, ‘SPIRIT’ are easily legible and depicted in dark-grey. The English word ‘and’ is a conjunction used to join elements of similar syntactic structure (Collins dictionary). The English word ‘SPIRIT’ stands for, inter alia, ‘the force or principle of life that animates the body of living things’, ‘temperament or disposition’(Collins dictionary). There are no elements which are more distinctive or more dominant (visually eye-catching) than other elements despite the different font sizes of the different parts of the verbal elements ‘HOPE’, ‘and’, ‘SPIRIT’ (Collins dictionary).

Visually, the signs coincide in the letters ‘HOPE’ being the only element of the earlier mark and the first verbal element of the contested sign.  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. Therefore, the coincidence in the first element of the earlier sign and the only element of the contested one is of material importance when assessing the likelihood of confusion for the relevant public. The marks differ insofar that the figurative element and the remaining parts ‘and SPIRIT’ of the verbal element of the contested sign have no counterparts in the earlier mark. 

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). Furthermore, 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.

Considering all the above, the signs are visually similar at least to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘HOPE’, pronounced according to the rules of the relevant part of the public. The pronunciation differs insofar as the remaining  verbal elements ‘and’ and  ‘SPIRIT’ of the contested sign have no counterparts in the earlier mark. Therefore, the signs are aurally similar at least to an average degree.

Conceptually, the English-speaking public in the relevant territory will perceive the signs as explained above in respect of the distinctive element ‘HOPE’ which is the element the signs coinciding in. Furthermore, it will perceive the distinctive element ‘SPIRIT’, which has no counterpart in the earlier sign, as explained above. The signs also differ in the conjunction ‘and’ of the contested sign, which has no counterpart in the earlier sign. However, a conjunction usually does not have an isolated meaning, as it is only used to conjoin the meaning of other words. The figurative abstract background will not be endowed with a particular meaning. The signs are conceptually similar at least 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 meaning for any of the goods or services 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 contested goods are identical and similar, the services are partly similar to a low degree and partly dissimilar to the opponent’s goods. The relevant goods and services target the public at large and business owners. The degree of attention of the relevant consumer is likely to be average.

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).

The signs have been found to be similar to the extent that the contested sign entails the earlier mark in its entirety, namely the distinctive verbal element ‘HOPE’. This element is clearly perceivable in the contested sign. The visual, aural and conceptual similarities originate from the shared element ‘HOPE’. Furthermore, consumers generally tend to focus on the first element of a sign when confronted with a trade mark, in the present case ‘HOPE’, as already mentioned. Moreover, the two signs, in view of the coinciding element ‘HOPE’, could be perceived as two different product lines coming from the same undertaking or economically linked undertakings. This is equally true in relation to the services found to be similar to a low degree, for which the lesser degree of similarity between the services will be offset by the clear associations generated by virtue of the coinciding distinctive elements ‘HOPE’.

In addition, account should also be taken of the fact that the average consumer only

rarely has the chance to make a direct comparison between the different marks and

must place his trust in the imperfect picture of them that he has kept in his mind(22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 trade mark must be rejected for the goods found to be identical or similar and the services found to be similar to a low degree, to the goods of the earlier mark.

The rest of the contested services are dissimilar. 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 services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irina SOTIROVA

André Gerd Günther BOSSE

Plamen IVANOV

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.