OPPOSITION No B 2 726 597

Gilmar S.p.A., Via Malpasso, 723/725, 47842 S. Giovanni in Marignano (Province of Rimini), Italy (opponent), represented by Perani & Partners SPA, Piazza San Babila, 5, 20122 Milano, Italy (professional representative)

a g a i n s t

I-Smalls Ltd, 195, Grove Lane, Cheadle Hulme, Stockport, Cheshire East SK8 7NG, United Kingdom (applicant).

On 23/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 726 597 is upheld for all the contested goods.

2.        European Union trade mark application No 15 298 169 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 298 169 for the word mark ‘Ice-Fit’. The opposition is based on European Union trade mark registration No 10 941 615 for the figurative 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 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.

PRELIMINARY REMARK

The applicant argues that the parties have different fields of activity; therefore, the goods are not similar. According to the applicant, its trade mark ‘Ice-fit’ will be used only for men’s and women’s ski-socks, whereas the opponent’s ‘ICE’ is used for a full line of clothing. The Opposition Division notes that the comparison of the goods and services must be based on the wording in the lists of goods and services. Any actual or intended use not stipulated in the list of goods and services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, this argument of the applicant has to be set aside.

1. The goods

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

Class 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 25:        Clothing; headgear; hats.

Clothing; headgear are identically contained in both lists of goods.

The contested hats are included in the broad category of the opponent’s headgear. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is considered to be average.

3. The signs

	Ice-Fit
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 verbal elements of the signs in dispute 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 public.

The earlier mark is a figurative mark composed of the word ‘ICE’, depicted in a fairly standard typeface, which will carry the semantic content of, inter alia, frozen water. That concept is fanciful and distinctive in the context of the relevant goods, which are essentially clothing, footwear, headgear.

The contested sign is a word mark comprising the words ‘ICE’ and ‘FIT’ separated by a hyphen.

With regard to the concepts conveyed by the contested sign, the words ‘ICE’ and ‘FIT’ do not form a conceptual unit for the relevant public, but will rather be perceived as a combination of independent words. Consequently, the word ‘ICE’ will be perceived in the same manner as in the earlier mark. It has a normal degree of distinctiveness in relation to the goods at issue, which are, in essence, clothing; headgear; hats.

Moreover, the word ‘FIT’ exists as such in English and will therefore be understood as indicating, inter alia, that something ‘is right or the right size and shape to go onto a person’s body’ (information extracted from Collins English Dictionary on 09/08/2017 at www.collinsdictionary.com). Consequently, the word ‘FIT’ is descriptive of the quality or size of the goods at issue; therefore, this element lacks distinctiveness.

Visually, the signs coincide in the element ‘ICE’, which constitutes the entirety of the earlier mark and is the first verbal element of the contested sign. This component not only enjoys an average degree of distinctiveness in both signs, but is also readily perceptible as an individual element in the contested sign. This is mainly because of the hyphen that separates it from the second word, ‘FIT’, which has no counterpart in the earlier sign but is descriptive and therefore non-distinctive.

Furthermore, the word ‘ICE’ appears at the beginning of the contested sign. As the public reads from left to right, the initial part of a sign is generally the part on which average consumers focus their attention.

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

Aurally, the pronunciations of the signs coincide in the one-syllable sound of the word ‘ICE’, which is the sole component of the earlier mark and will be pronounced as the first element when referring to the contested sign, and which, furthermore, enjoys a normal degree of distinctiveness in both signs in relation to the relevant goods. The pronunciation differs in the sound of the element ‛FIT’ of the contested sign, which is non-distinctive and do not have counterpart in the earlier mark.

Therefore, the signs are aurally similar to a high degree.

Conceptually, the signs will be associated by the relevant public with the concept conveyed by the word ‘ICE’, which is distinctive in both signs in relation to the goods at issue, whereas the additional word ‘FIT’ in the contested sign is non-distinctive, as stated above.

Therefore, the signs are conceptually similar to a high 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.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include the element ‘ICE’. In support of its argument, the applicant refers to a few European Union trade mark registrations.

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

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness in Italy but did not file any evidence in order to prove such a claim.

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 question in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 goods at issue are identical. They target the public at large; whose degree of attention is average.

The earlier mark’s sole verbal element and the distinctive verbal element of the contested sign coincide in the element ‘ICE’. However, the signs differ in the additional, non-distinctive, element of the contested sign, ‘FIT’, and in the graphical depiction of the earlier mark, which uses a rather standard typeface. Therefore, as explained in section c), the signs are considered to be visually similar to at least an average degree and aurally and conceptually similar to a high degree.

The concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that identical and similar goods come from the same undertaking or at least economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion, including a likelihood of association, because the differences between the signs are confined to a non-distinctive element. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union, in this case the English-speaking part of the public, 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 10 941 615. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to examine the opponent’s argument that it owns earlier trade marks that constitute a ‘family of marks’.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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.

The Opposition Division

Steve HAUSER

Alexandra APOSTOLAKIS

Boyana NAYDENOVA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.