OPPOSITION DIVISION
OPPOSITION No B 2 421 561
El Corte Ingles, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented
by J.M. Toro, S.L.P., Viriato, 56 – 1º izda, 28010 Madrid, Spain (professional
representative)
a g a i n s t
Ulrich Bittner, Marie-Luise-Kaschnitz-Weg 1, 63457 Hanau, Germany (applicant).
On 20/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 421 561 is rejected in its entirety.
2. The opponent bears the costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 all the goods and services of European
Union trade mark application No 12 946 091.The opposition is based on, inter alia,
European Union trade mark trade mark registration No 4 761 425. 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 European Union trade mark trade mark registration No 4 761 425.
Decision on Opposition No B 2 421 561 page: 2 of 7
a) The goods and services
The goods on which the opposition is based are the following:
Class 12: Vehicles; vehicles for locomotion by air, land or water.
Class 18: Leather and imitations of leather, and goods made of these materials and
not included in other classes; animal skins, hides; trunks and travelling bags;
umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
Class 28: Games and playthings; gymnastic and sporting articles not included in
other classes; decorations for Christmas trees.
The contested goods and services are the following:
Class 28: Gymnastic, fitness and sporting equipment and articles; Sports equipment;
Boxing gloves; Punch bags; Punching bags; Fitness exercise machines; Speedballs;
speed balls; Jump ropes; Jump ropes; Medicine balls; Dumb-bells.
Class 35: Advertising; Office functions; Marketing services; Sales promotion for
others; Business management; Business administration, namely professional
business consultancy and organisation consultancy; Psychological testing; Arranging
and conducting of casting events for advertising and sales promotion purposes;
Market research; Opinion polling; Media monitoring, market analysis and advertising
research, included in Class 35; Distribution of samples and demonstration of goods;
Retailing, online or catalogue mail order in the fields of: pharmacy articles, cosmetics
and household goods, goods for the health sector, goods of metal, DIY articles and
garden articles; Retailing, online or catalogue mail order in the fields of: hobby
requisites and craft supplies, electrical goods and electronic goods, sound carriers
and data carriers; Retailing, online or catalogue mail order in the fields of: vehicles
and vehicle fittings, fireworks, clocks and watches and jewellery; Retailing, online or
catalogue mail order in the fields of: musical instruments, printed matter, stationery,
office requisites; Retailing, online or catalogue mail order in the fields of: bag makers’
goods and saddlery, furnishings and decorative articles, tents, awnings, tarpaulins;
Retailing, online or catalogue mail order in the fields of: clothing, footwear and textile
goods, toys, sporting goods; Retailing, online or catalogue mail order in the fields of:
foodstuffs and beverages, agricultural products, horticultural products and forestry
products, tobacco products and other luxury foods and alcohol.
Class 38: Telecommunications; Broadcasting of television programmes, cable
television programmes, radio programmes and teleshopping programmes;
Transmission of television, radio, telecommunications and data signals via digital and
analog wireless and/or cable networks, in particular online in the form of interactive
electronic media services, and via computer; News agencies; Providing access to
databases; Leasing access time to global computer networks; Sound, image and
data transmission by cable, satellite, computer network, telephone and ISDN lines
and by other telecommunications media; Provision of discussion forums.
Class 41: Education; Providing of training; Entertainment; Sporting and recreational
activities; Cultural activities; arranging, Organisation and staging of competitions, In
particular in sport; Promotion and management of athletes and artists; Educational
examination and conducting of performance testing, in particular for sports grading in
martial arts and fitness disciplines; Performances (Presentation of live -); Television
Decision on Opposition No B 2 421 561 page: 3 of 7
production and distribution services; presentation and distribution of audio, video, still
and moving images and data; Publishing services, including electronic publishing;
entertainment services, particularly providing television programs via television, cable
and satellite systems, the Internet, electronic communications networks and wireless
communication networks; Providing of non-downloadable entertainment programmes
and content, in particular television programmes, sporting events, and related clips,
graphics and information via television, cable and satellite systems, and the internet,
electronic communications networks and wireless communications networks;
production and distribution of television programs rendered through the media of
television, cable and satellite systems, the Internet, electronic communications
networks and wireless communication networks; Television programming services;
interactive online entertainment in the nature of a website containing non-
downloadable photographic, video and prose presentations, related video clips,
electronic games and other multimedia materials featuring content from or relating to
television programs and sport events.
Class 45: Film, television and video licensing; Licensing of industrial property rights
and copyright; Issuing licences for franchising concepts.
Some of the contested goods and services are identical or similar to goods on which
the opposition is based. For reasons of procedural economy, the Opposition Division
will not undertake a full comparison of the goods and services listed above. The
examination of the opposition will proceed as if all the contested goods and services
were identical to those of the earlier mark which, for the opponent, is the best light in
which the opposition can be examined.
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 and services found to be identical or similar may be
directed at both the public at large and the professionals.
The degree of attention is considered to vary from average to high.
Decision on Opposition No B 2 421 561 page: 4 of 7
c) The signs
WS PRO B
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).
When assessing the similarity of the signs, an analysis of whether the coinciding
components are descriptive, allusive or otherwise weak is carried out to assess the
extent to which these coinciding components have a lesser or greater capacity to
indicate commercial origin. It may be more difficult to establish that the public may be
confused about origin due to similarities that pertain solely to non-distinctive
elements.
The contested sign consists of the word mark ‘WS PRO B’.
Although consumers normally perceive a mark as a whole and do not proceed to
analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 25), the fact remains that, when perceiving a word sign, they will
break it down into elements which, for them, suggest a concrete meaning or which
resemble words known to them (13/06/2012, T-342/10, Mesilette, EU:T:2012:290,
§ 33).
It is settled case-law that an important part of the non-English-speaking part of the
public understands the word ‘PRO’ (11/09/2014, T-127/13, Pro outdoor,
EU:T:2014:767, § 58), which is included in both marks in the present case, as an
abbreviation for ‘professionals’. Therefore, the Opposition Division considers that all
the relevant consumers will understand the word ‘pro’, because they are familiar with
it.
The word ‘PRO’ is laudatory, since it refers to the positive, or best, qualities
associated with goods used by professionals or the level of service provided by a
professional. Therefore, this element is weak (08/02/2016, R 2302/2011-2, OutDoor
(fig.) / OUTDOOR PRO et al., § 75 and 80).
Decision on Opposition No B 2 421 561 page: 5 of 7
The remaining elements ‘WS’ and ‘B’ are meaningless for the relevant public
(13/06/2016, R 773/2015-4, GULLON DARVIDA / DAR VIDA (fig.) § 30 and 32).
Therefore, these elements are distinctive to a normal degree.
The earlier trade mark is a figurative mark consisting of the combination ‘B-PRO’ in
big capital white letters. The legend ‘by Boomerang’ is written below in black
standard letters de tamaño mucho más pequeño.
As explained above, ‘PRO’ will be understood by the relevant public and, given its
laudatory character, has weak distinctive character. Additionally, the combination ‘B-
PRO’ will be understood as be professional by at least by the English-speaking public
in the relevant territory.
The element ‘Boomerang’ will be understood in the relevant territory as a curved
piece of wood which comes back to you if you throw it in the correct way, however, in
connection with the element ‘by’ it will be understood as referring to the commercial
origin of the relevant goods and has a normal degree of distinctiveness for the
relevant the public.
The figurative ‘B-PRO’ element is the dominant element of the earlier mark.
Visually, the signs coincide in the elements ‘B PRO’ and ‘PRO B’ in different order
and position. ‘PRO’ has been found to have a weak distinctive character. The signs
differ in the elements ‘by Boomerqang’ and ‘WS’. Therefore, the signs are similar to a
low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the syllables /b/ and
/pro/, present identically in both signs. The pronunciation differs in the syllables /by-
boo-me-rang/ of the earlier sign and in the sound of the letters /w/ and /s/ of the
contested mark, which have no counterpart in the other sign.
Therefore, the signs are similar to a low degree.
Conceptually, although the signs as a whole do not have any meaning for the public
in the relevant territory, the element ‘PRO’, included in both signs, will be associated
with the meaning explained above. To that extent, and as this element is weak and
cannot indicate the commercial origin 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.
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 2 421 561 page: 6 of 7
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 weak element in the mark, as stated above in
section c) of this decision.
e) Global assessment, other arguments and conclusion
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).
In the present case, the conflicting signs are visually, aurally and conceptually similar
to a low degree. The contested goods and services are either identical or similar to
the opponent’s goods.
The signs only coincide in the letter ‘B’ and in the element ‘pro’. However, this
element is fairly weak for the reasons explained above. Therefore, in the present
case, the most distinctive parts of the signs are the sequences of no dominant letters
‘by Boomerang’ and the initial letters ‘WS’. Furthermore, the common element is
placed in a different position in the signs and this fact leads to different visual
structures, different rythms and intonation.
All these differences offset the similarities between the marks and make the signs
sufficiently distinguishable in the relevant public’s perception.
Given the above, and in particular the differences between the most distinctive verbal
elements of the signs, taking into consideration the weakness of their coinciding
component and bearing in mind the high degree of attention of part of the relevant
public, it follows that there is no likelihood of confusion. Therefore, the opposition
must be rejected.
Considering all the above, even assuming that the goods and services are identical
or similar, there is no likelihood of confusion on the part of the public. Therefore, the
opposition must be rejected.
The opponent has also based its opposition on the following earlier trade mark
– Spanish trade mark registration No 2 568 172 for the figurative mark
Since this marksis identical to the one that has been compared and covers the same
or a narrower scope of goods, the outcome cannot be different with respect to goods
and services for which the opposition has already been rejected. Therefore, no
likelihood of confusion exists with respect to those goods and services.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Decision on Opposition No B 2 421 561 page: 7 of 7
Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein. In the present case, the applicant did not appoint a
professional representative within the meaning of Article 120 EUTMR and therefore
did not incur representation costs.
The Opposition Division
Pedro JURADO
MONTEJANO
Agueda MAS PASTOR Julia TESCH
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.