OPPOSITION DIVISION
OPPOSITION No B 1 967 002
Andreas Helbrecht, In den Weiden 3, 40721 Hilden, Germany (opponent),
represented by König Szynka Tilmann von Renesse Patentanwälte Partnerschaft
mbB, Mönchenwerther Straße 11, 40545 Düsseldorf, Germany (professional
representative)
a g a i n s t
Eyesports BV, Ringvaartpark 39, 2907 LH Capelle Aan Den IJssel, the Netherlands
(applicant).
On 13/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 1 967 002 is upheld for all the contested goods, namely:
Class 25: Clothing, footwear, headgear.
2. European Union trade mark application No 10 010 288 is rejected for all the
contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 650.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 10 010 288 ‘ ’ (figurative
mark), namely against all the goods in Class 25. The opposition is based on
European Union trade mark registration No 7 504 525 ‘SportEyes’ (word mark). 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
Decision on Opposition No B 1 967 002 page: 2 of 6
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.
a) The goods
The goods on which the opposition is based are the following:
Class 25: Footwear of leather, imitations of leather, rubber or plastic, in
particular rain shoes and boots; headgear of textile materials,
headgear of leather and imitations of leather, headgear of rubber or
plastic, in particular peaked caps; clothing of textile fabrics, leather
and imitations of leather, rubber or plastic; gloves.
The contested goods are the following:
Class 25: Clothing, footwear, headgear.
An interpretation of the wording of the list of goods covered by the earlier mark is
required to determine the scope of protection of these goods.
The term ‘in particular’, used in the opponent’s list of goods in Class 25, 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The contested clothing includes, as a broader category, the opponent’s clothing of
textile fabrics, leather and imitations of leather, rubber or plastic. The contested
footwear includes, as a broader category, the opponent’s footwear of leather,
imitations of leather, rubber or plastic, in particular rain shoes and boots. Finally, the
contested headgear includes, as a broader category, the opponent’s headgear of
textile materials, headgear of leather and imitations of leather, headgear of rubber or
plastic, in particular peaked caps. Since the Opposition Division cannot dissect ex
officio the broad categories of the contested clothing, footwear and respectively
headgear, they are considered identical to the opponent’s goods specified
hereinabove.
b) 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.
Decision on Opposition No B 1 967 002 page: 3 of 6
c) The signs
SportEyes
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.
In the present case, the verbal elements of the signs (as it will be explained herein
below) are meaningful in certain territories, for example in those countries where
English is understood. Consequently, 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, composed of a single verbal element, ‘SportEyes’.
The contested sign is figurative, depicting the verbal element ‘eyesports’, in thick
lowercase script, with ‘eye’ being coloured in grey and ‘sports’ in orange. The letter ‘o’
is slightly bigger than the remaining letters and includes a figurative element
portraying a stylised leaping human silhouette, in white. The Opposition Division
considers that the particular stylisation of this letter will not be of such a nature as to
impede consumers from recognising and perceiving it as such (namely as the letter
‘o’).
Neither ‘SportEyes’ of the earlier mark nor ‘eyesports’ of the contested sign exist as
such in the English language. However, it follows from case-law that although the
average consumer normally perceives a mark as a whole and does not proceed to
analyse its various details, the fact remains that, when perceiving a word sign, he will
break it down into elements which, for him, suggest a specific meaning or which
resemble words known to him (judgment of 13/02/2007, T-256/04, Respicur,
EU:T:2007:46, § 57).
Bearing in mind the foregoing (and also the fact that the contested sign’s verbal
element is broken down visually through the use of different colours of the script),
both verbal elements will be perceived by the English-speaking public as a
combination of the existing English words ‘sport(s)’ (referring, inter alia, to an activity
involving physical exertion and skill in which an individual or team competes against
another or others for entertainment) and ‘eye(s)’ (meaning, among other senses,
each of a pair of globular organs of sight in the head of humans and vertebrate
animals). As a whole, the earlier mark will be associated with the concept of eyes for
sports (eyes that are good at/fit for sport) whereas the contested sign with the
Decision on Opposition No B 1 967 002 page: 4 of 6
concept of sports for eyes (the kind of sports where eye skills matter). In addition, it is
noted that the figurative element of the human silhouette, by virtue of its depiction
which evokes movement, may be seen, by at least part of consumers, as reinforcing
the meaning of the word ‘sports’.
In terms of distinctiveness, it is the word ‘eye(s)’ that will be attributed most trade
mark significance in both signs, since ‘sport(s)’ is clearly descriptive of the purpose of
the relevant goods and therefore unable to function as a badge of origin.
Additionally, it is noted that, the stylisation of the letters in the contested sign is of a
purely decorative nature.
As for the figurative element of the human silhouette, even if not perceived as
reinforcing the concept of ‘sports’ (in which case it will be weakly distinctive), it will
still not focus consumers’ attention to the same extent as the word ‘eye(s)’. Indeed,
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).
Finally, the contested sign has no element that could be considered more dominant
(visually eye-catching) than other elements. The same applies to the earlier mark,
which is a word mark and by definition does not have any such element.
Visually, both signs consist of a single verbal element, of an identical length (nine
letters) and which is formed of the same words, ‘eye(s)’ and ‘sport(s)’, albeit arranged
in inverted order and with a different noun number. The only other differences
between the signs reside in the stylisation of the verbal element of the contested sign
and in the presence of the figurative element of the human silhouette. Bearing in
mind the impact of these elements (as explained above), it is considered that overall
there is an average degree of visual similarity.
Aurally, the signs are formed of words that are almost identically pronounced (i.e.
‘sport’ and ‘eyes’ in the earlier mark and ‘eye’ and ‘sports’ in the contested sign),
albeit in an inverted order. Therefore, and bearing in mind that the figurative element
of the human silhouette in the contested sign will not be referred to aurally by the
relevant public, it must be concluded that, overall, there is a high degree of aural
similarity.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks as a whole. As the signs will be associated with a
different concept, the signs are conceptually not similar.
d) 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.
Decision on Opposition No B 1 967 002 page: 5 of 6
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, despite the presence of a non-distinctive element in the mark, as stated
above in section c) of this decision.
e) Global assessment, other arguments and conclusion
The contested goods are identical to the goods covered by the earlier mark.
As set out in section c) above, overall, the signs are visually and aurally similar.
Admittedly, the English-speaking public will perceive a different semantic content in
the marks under comparison. Nevertheless, this is not sufficient to neutralise the
visual and aural similarities arising from the presence of the same words, ‘eye(s)’ and
‘sport(s)’, to the extent where a likelihood of confusion on the part of the public may
safely be excluded.
Account is 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).
Considering all the above and bearing in mind also the principle of interdependence
(according to which 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)), there is a likelihood of
confusion on the part of the English-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 7 504 525. It follows that the contested trade mark
must be rejected for all the contested goods.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 1 967 002 page: 6 of 6
The Opposition Division
Claudia ATTINÀ Oana-Alina STURZA Keeva DOHERTY
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.