OPPOSITION No B 2 206 095

Olymp Bezner KG, Höpfigheimer Str. 19, 74321 Bietigheim-Bissingen, Germany (opponent), represented by Kohler Schmid Möbus Patentanwälte Partnerschaftsgesellschaft mbB, Gropiusplatz 10, 70563 Stuttgart, Germany (professional representative)

a g a i n s t

SDI (Wigan) IP Limited, Unit A, Brook Park East, Shirebrook NG20 8RY, United Kingdom (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London, EC2N 2DG, United Kingdom (professional representative).

On 24/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 206 095 is partially upheld, namely for the following contested goods:

Class 18: Travelling bags; sports bags; bags; holdalls; luggage; wallets and purses; haversacks; rucksacks; umbrellas; parasols; canes; saddlery; riding saddles; reins and harnesses; straps for use in sport and leisure pursuits; goods included within Class 18 made of leather or imitation leather.

Class 25: Clothing, footwear, headgear; Aprons [clothing]; Ascots; Babies' pants [clothing]; Bandanas [neckerchiefs]; Bath robes; Bath sandals; Bath slippers; Bathing caps; Bathing trunks; Beach clothes; Beach shoes; Belts [clothing]; Berets; Bibs, not of paper; Boas [necklets]; Bodices [lingerie]; Boots; Boots for sports; Brassieres; Breeches for wear; Camisoles; Caps [headwear]; Chasubles; Clothing; Clothing for gymnastics; Clothing of imitations of leather; Clothing of leather; Coats; Collar protectors; Combinations [clothing]; Corselets; Corsets [underclothing]; Cuffs; Cyclists' clothing; Detachable collars; Dresses; Dressing gowns; Ear muffs [clothing]; Esparto shoes or sandals; Fishing vests; Football boots; Footmuffs, not electrically heated; Footwear; Fur stoles; Furs [clothing]; Gabardines [clothing]; Gaiter straps; Galoshes; Garters; Girdles; Gloves [clothing]; Gymnastic shoes; Half-boots; Hats; Headbands [clothing]; Headgear for wear; Hoods [clothing]; Hosiery; Inner soles; Jackets [clothing]; Jerseys [clothing]; Jumper dresses; Knitwear [clothing]; Lace boots; Layettes [clothing]; Leg warmers; Leggings [trousers]; Liveries; Maniples; Mantillas; Masquerade costumes; Miters [hats]; Mittens; Money belts [clothing]; Motorists' clothing; Muffs [clothing]; Neckties; Non-slipping devices for footwear; Outerclothing; Pants; Paper clothing; Paper hats [clothing]; Parkas; Pelerines; Pelisses; Petticoats; Pocket squares; Ponchos; Pullovers; Pyjamas; Ready-made clothing; Sandals; Saris; Sarongs; Sashes for wear; Scarfs; Shawls; Shirts; Shoes; Short-sleeve shirts; Shoulder wraps; Shower caps; Singlets; Ski boots; Ski gloves; Skirts; Skorts; Skull caps; Sleep masks; Slippers; Slips [undergarments]; Smocks; Sock suspenders; Socks; Spats; Sports shoes; Stocking suspenders; Stockings; Stockings (Sweat-absorbent -); Studs for football boots; Stuff jackets [clothing]; Suits; Suspenders; Sweaters; Swimsuits; Teddies [undergarments]; Tee-shirts; Tights; Togas; Top hats; Topcoats; Trousers; Turbans; Underpants; Underwear; Underwear (Anti-sweat -); Uniforms; Veils [clothing]; Vests; Waterproof clothing; Wet suits for water-skiing; Wimples; Wooden shoes; Sports clothing; footwear for sports; headgear for sports; replica sports shirts, shorts and socks.

2.        European Union trade mark application No 11 136 686 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 11 136 686, namely against all the goods in Classes 18 and 25. The opposition is based on, inter alia, German trade mark registration No 302 010 005 857. 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.

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 German trade mark registration No 302 010 005 857.

1. The goods

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

Class 18: Goods made of leather or imitations of leather (included in class 18), in particular bags, cases, trunks and other containers not adapted to the objects to be carried; umbrellas, parasols, walking sticks and canes; small goods of leather, included in class 18, in particular purses, pocket wallets, key wallets.

Class 25: Clothing, in particular shirts, blouses, skirts, gowns, costumes, trousers, jackets, sweat shirts, T-shirts, polo shirts, pullovers, suits, coats, anoraks, socks, stockings; headgear; underwear; nightwear; swimwear; dressing gowns; belts; mufflers, scarves, bandanas, shawls, dress handkerchiefs; neckties; gloves; shoes and boots; all the aforesaid goods for women, men or children.

The contested goods are the following:

Class 18: Travelling bags; sports bags; bags; holdalls; luggage; wallets and purses; haversacks; rucksacks; umbrellas; parasols; canes; saddlery; riding saddles; reins and harnesses; straps for use in sport and leisure pursuits; goods included within Class 18 made of leather or imitation leather.

Class 25: Clothing, footwear, headgear; Aprons [clothing]; Ascots; Babies' pants [clothing]; Bandanas [neckerchiefs]; Bath robes; Bath sandals; Bath slippers; Bathing caps; Bathing trunks; Beach clothes; Beach shoes; Belts [clothing]; Berets; Bibs, not of paper; Boas [necklets]; Bodices [lingerie]; Boot uppers; Boots; Boots for sports; Brassieres; Breeches for wear; Camisoles; Cap peaks; Caps [headwear]; Chasubles; Clothing; Clothing for gymnastics; Clothing of imitations of leather; Clothing of leather; Coats; Collar protectors; Combinations [clothing]; Corselets; Corsets [underclothing]; Cuffs; Cyclists' clothing; Detachable collars; Dress shields; Dresses; Dressing gowns; Ear muffs [clothing]; Esparto shoes or sandals; Fishing vests; Fittings of metal for footwear; Football boots; Footmuffs, not electrically heated; Footwear; Footwear uppers; Fur stoles; Furs [clothing]; Gabardines [clothing]; Gaiter straps; Galoshes; Garters; Girdles; Gloves [clothing]; Gymnastic shoes; Half-boots; Hat frames [skeletons]; Hats; Headbands [clothing]; Headgear for wear; Heelpieces for footwear; Heelpieces for stockings; Heels; Hoods [clothing]; Hosiery; Inner soles; Jackets [clothing]; Jerseys [clothing]; Jumper dresses; Knitwear [clothing]; Lace boots; Layettes [clothing]; Leg warmers; Leggings [trousers]; Liveries; Maniples; Mantillas; Masquerade costumes; Miters [hats]; Mittens; Money belts [clothing]; Motorists' clothing; Muffs [clothing]; Neckties; Non-slipping devices for footwear; Outerclothing; Pants; Paper clothing; Paper hats [clothing]; Parkas; Pelerines; Pelisses; Petticoats; Pocket squares; Pockets for clothing; Ponchos; Pullovers; Pyjamas; Ready-made clothing; Ready-made linings [parts of clothing]; Sandals; Saris; Sarongs; Sashes for wear; Scarfs; Shawls; Shirt fronts; Shirt yokes; Shirts; Shoes; Short-sleeve shirts; Shoulder wraps; Shower caps; Singlets; Ski boots; Ski gloves; Skirts; Skorts; Skull caps; Sleep masks; Slippers; Slips [undergarments]; Smocks; Sock suspenders; Socks; Soles for footwear; Spats; Sports shoes; Stocking suspenders; Stockings; Stockings (Sweat-absorbent -); Studs for football boots; Stuff jackets [clothing]; Suits; Suspenders; Sweaters; Swimsuits; Teddies [undergarments]; Tee-shirts; Tights; Tips for footwear; Togas; Top hats; Topcoats; Trousers; Turbans; Underpants; Underwear; Underwear (Anti-sweat -); Uniforms; Veils [clothing]; Vests; Waterproof clothing; Welts for footwear; Wet suits for water-skiing; Wimples; Wooden shoes; Sports clothing; footwear for sports; headgear for sports; replica sports shirts, shorts and socks.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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.

Contested goods in Class 18

Umbrellas; parasols; canes; goods included within Class 18 made of leather or imitation leather are, despite slightly different wordings in the case of the last term, identically contained in both lists of goods.

The contested travelling bags; sports bags; bags; holdalls; luggage; wallets and purses; haversacks; rucksacks; saddlery; riding saddles; reins and harnesses; straps for use in sport and leisure pursuits, as they may all be made, inter alia, of leather or of imitation leather, are included in the broad categories of, or overlap with, the opponent’s goods made of leather or imitations of leather (included in class 18), in particular bags, cases, trunks and other containers not adapted to the objects to be carried or small goods of leather, included in class 18, in particular purses, pocket wallets, key wallets. Therefore, they are identical.

Contested goods in Class 25

The contested clothing (which appears twice) includes as a broader category the opponent’s clothing, in particular shirts, blouses, skirts, gowns, costumes, trousers, jackets, sweat shirts, T-shirts, polo shirts, pullovers, suits, coats, anoraks, socks, stockings; all the aforesaid goods for women, men or children. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested underwear includes as a broader category the opponent’s underwear; all the aforesaid goods for women, men or children. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dressing gowns includes as a broader category the opponent’s dressing gowns; all the aforesaid goods for women, men or children. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested neckties includes as a broader category the opponent’s neckties; all the aforesaid goods for women, men or children. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested gloves [clothing] includes as a broader category the opponent’s gloves; all the aforesaid goods for women, men or children. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested aprons [clothing]; ascots; babies' pants [clothing]; bandanas [neckerchiefs]; bath robes; bathing trunks; beach clothes; belts [clothing]; bibs, not of paper; boas [necklets]; bodices [lingerie]; brassieres; breeches for wear; camisoles; chasubles; clothing for gymnastics; clothing of imitations of leather; clothing of leather; coats; collar protectors; combinations [clothing]; corselets; corsets [underclothing]; cuffs; cyclists' clothing; detachable collars; dresses; ear muffs [clothing]; fishing vests; fur stoles; furs [clothing]; gabardines [clothing]; gaiter straps; garters; girdles; headbands [clothing]; hoods [clothing]; hosiery; jackets [clothing]; jerseys [clothing]; jumper dresses; knitwear [clothing]; layettes [clothing]; leg warmers; leggings [trousers]; liveries; maniples; masquerade costumes; mittens; money belts [clothing]; motorists' clothing; muffs [clothing]; outerclothing; pants; paper clothing; paper hats [clothing]; parkas; pelerines; pelisses; petticoats; pocket squares; ponchos; pullovers; pyjamas; ready-made clothing; saris; sarongs; sashes for wear; scarfs; shawls; shirts; short-sleeve shirts; shoulder wraps; singlets; ski gloves; skirts; skorts; sleep masks; slips [undergarments]; smocks; sock suspenders; socks; spats; stocking suspenders; stockings; stockings (sweat-absorbent -); stuff jackets [clothing]; suits; suspenders; sweaters; swimsuits; teddies [undergarments]; tee-shirts; tights; togas; topcoats; trousers; underpants; underwear (anti-sweat -); uniforms; veils [clothing]; vests; waterproof clothing; wet suits for water-skiing; sports clothing; replica sports shirts, shorts and socks are included in the broad category of, or overlap with, the opponent’s clothing, in particular shirts, blouses, skirts, gowns, costumes, trousers, jackets, sweat shirts, T-shirts, polo shirts, pullovers, suits, coats, anoraks, socks, stockings; all the aforesaid goods for women, men or children. Therefore, they are identical.

The contested headgear includes as a broader category the opponent’s headgear; all the aforesaid goods for women, men or children. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested bathing caps; berets; caps [headwear]; hats; headgear for wear; mantillas; miters [hats]; shower caps; skull caps; top hats; turbans; wimples; headgear for sports are included in or overlap with the opponent’s headgear; all the aforesaid goods for women, men or children. Therefore, they are identical.

The contested footwear (which appears twice); boots; shoes are included in or overlap with the opponent’s shoes and boots; all the aforesaid goods for women, men or children. Therefore, they are identical.

The contested beach shoes; boots for sports; esparto shoes or sandals; football boots; galoshes; gymnastic shoes; half-boots; lace boots; sandals; ski boots; sports shoes; wooden shoes; footwear for sports are included in the broad category of, or overlap with, the opponent’s shoes and boots; all the aforesaid goods for women, men or children. Therefore, they are identical.

The contested bath sandals; bath slippers; footmuffs, not electrically heated; slippers are highly similar to the opponent’s shoes and boots; all the aforesaid goods for women, men or children. They are all specific types of footwear with the same nature and method of use, can be bought in shoe shops and have the same distribution channels, relevant public and producers as the opponent’s goods.

The contested inner soles; non-slipping devices for footwear; studs for football boots are similar to the opponent’s shoes and boots; all the aforesaid goods for women, men or children. They are all footwear accessories that can be bought in shoe shops and have the same distribution channels, relevant public and producers as the opponent’s goods. Furthermore, they are complementary.

The contested boot uppers; cap peaks; dress shields; fittings of metal for footwear; footwear uppers; hat frames [skeletons]; heelpieces for footwear; heelpieces for stockings; heels; pockets for clothing; ready-made linings [parts of clothing]; shirt fronts; shirt yokes; soles for footwear; tips for footwear; welts for footwear are dissimilar to all of the opponent’s goods. They are all parts, components or fittings of the final product and, therefore, the end users targeted by the contested goods are different from those targeted by the opponent’s goods, namely those working in the footwear and clothing industry and professional consumers. While the opponent’s goods are final products aimed at the general public. Furthermore, they have different natures, methods of use, intended purposes and manufacturers, and are sold in different retail outlets.

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 to various degrees are directed at the public at large. The degree of attention is average.

3. The signs

	OLYMPUS
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 consisting of the verbal element ‘OLYMP’ in a slightly stylised typeface, mostly noticeable on the letter ‘O’.

The contested sign is a word mark, ‘OLYMPUS’.

The word ‘OLYMP’ is the German word of the mountain which in Greek mythology is the home of the gods (Duden Online-Wörterbuch, duden.de). The word ‘OLYMPUS’ has the same meaning in English (Oxford English Dictionary online, oed.com) and will be understood by the German public as explained below.

Neither of the words has any meaning in relation to the goods in questions, therefore, they are of normal distinctiveness. Neither sign has any element that could be considered more dominant than other elements.

Visually, the signs coincide in the letters ‘OLYMP’, which forms the entirety of the earlier mark’s verbal element and are the first five letters of the contested sign. They differ in the slightly stylised typeface used by the earlier mark and the contested sign’s additional two letters, ‘US’.

When signs consist of both verbal and figurative components, as does the earlier mark, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, consumers will focus on the verbal element ‘OLYMP’ and not the particular stylisation of its letters.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘OLYMP’ present identically in both signs. The pronunciation differs in the sound of the letters ‘US’ present only in the contested sign. The fact that the number of syllables is different is not, contrary to the applicant’s argument, sufficient to conclude that there is no phonetic similarity (17/04/2008, C-108/07 P, Ferro, EU:C:2008:234, § 48).

Therefore, the signs are aurally similar to an above average degree.

Conceptually, the earlier mark being a German word will be understood by the entire relevant public as having the meaning described above. The contested sign, although being an English word, is likely to be understood by a sizeable section of the relevant public. Firstly, this is because the words themselves are not too dissimilar and secondly because of the wide use of English and the public’s awareness and understanding of it. Therefore, for this part of the relevant public the signs are conceptually identical. However, for the part of the relevant public which does not perceive any meaning in the contested sign, 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.

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 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 earlier mark has an average degree of distinctiveness. The relevant public is the public at large and the level of attention is average.

The contested goods have been found partly identical, partly similar to various degrees and partly dissimilar, whilst the signs have been found visually and aurally similar to an above average degree and, at least for a part of the relevant public, conceptually identical. The earlier mark’s verbal element is included in its entirety at the beginning of the contested mark. The differences between the signs are confined to the slight stylisation of the earlier mark’s letters and the additional letters ‘US’ at the end of the contested mark.

Consequently, even if the average consumer is capable of detecting certain differences between the two conflicting signs, namely that one is the German word for a concept whilst the other is the English word for the same concept, the likelihood that they might associate the signs with each other is very real.

From the wording in Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. It is highly conceivable that the relevant consumer that understands both signs will perceive the contested mark as a sub-brand or 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). Therefore, it is conceivable that the targeted public may regard the goods designated by the conflicting signs as belonging to two ranges of goods coming, nonetheless, from the same undertaking.

In its observations, the applicant argues that there is no likelihood of confusion as the public has been exposed to widespread use of, and have become accustomed to trade marks that include the letters ‘OLYMP’ and cover goods in Classes 18 and 25. In support of its argument, the applicant refers to several EUTM and UK registrations which include this sequence of letters. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the letters ‘OLYMP’.

Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 302 010 005 857. It should be noted that a likelihood of confusion for only part of the relevant public (in this case that part of the public which understands the same concept in both signs) is sufficient to reject the contested application.

It follows that the contested trade mark must be rejected for the contested goods found identical or similar.

The rest of the contested goods 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 ground and article and directed at these goods cannot be successful.

The opponent has also based the opposition on the following earlier marks:

• German trade mark registration No 302 011 051 847 for the word mark ‘Olymp’;

• United Kingdom trade mark registration No 984 046 for the word mark ‘OLYMP’;

• Irish trade mark registration No 134 214 for the word mark ‘OLYMP’;

• Finnish trade mark registration No 255 524 for the word mark ‘OLYMP’;

• Greek trade mark registration No 94 615 for the word mark ‘Olymp’;

• international registration No 384 242 designating Benelux, France, Italy, Hungary, Austria and Slovenia for the word mark ‘OLYMP’;

• international registration No 539 438 designating Poland for the word mark ‘Olymp’;

• international registration No 618 166 designating Bulgaria, the Czech Republic, Denmark, Estonia, Cyprus, Latvia, Lithuania, Romania, Slovakia and Sweden for the word mark ‘Olymp’.

Since these marks, which are all highly similar to the one which has been compared, cover a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods. Furthermore, it is unnecessary to examine the evidence of use filed by the opponent for some of these marks, since they are irrelevant for the outcome of this decision, for the reasons given above.

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 will 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

Martin MITURA

Ric WASLEY

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.