OPPOSITION No B 2 712 936

Kabushiki Kaisha Asics trading as Asics Corporation, 1-1 Minatojima-Nakamachi 7-chome, Chuo-ku, Kobe City – Hyogo Pref.  650-8555, Japan (opponent), represented by Carlos Polo & Asociados, Profesor Waksman, 10, 28036 Madrid, Spain (professional representative)

a g a i n s t

Jin Cheng Cai, No.93, East Area of shanqian Village, Yonghe Town, Jinjiang City, Fujian Province, People’s Republic of China (applicant), represented by Global IP Law Ltd., Wisteria House, Clarendon Road, South Woodford, London  E18, United Kingdom (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 712 936 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 145 717, namely against all the goods and services in Classes 18, 25 and 35. The opposition is based, inter alia, European Union trade mark registration No 3 242 187, which covers goods in Classes 18, 25 and 28.  The opponent invoked Article 8(1)(b) and 8(5) 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 registration No 3 242 187.

1. The signs

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 earlier figurative mark consists of a black line pattern, where two curved lines are moving up from bottom left to the right where they meet, while the other two diagonal straight lines are moving upwards from the bottom right to the left in a way that they appear to be approaching each other.

The contested mark is also composed of four straight diagonal black lines, two of them moving upwards from the bottom left to the right, crossing the other two lines which are moving upwards from the bottom right to the left.

In relation to the relevant goods and services, the signs at hand have no particular meaning and are, therefore, considered to be distinctive.  Neither the earlier mark nor the contested sign has an element that could be considered clearly more dominant than other elements.

Visually, the conflicting marks overall give a completely different impression. Both represent a line pattern showing some cross over but that is where the resemblance stops. The shapes of the lines in the respective marks and the specific patterns they form are very different. This has also been confirmed by the Fourth Board of Appeal in a very similar case R 2129/2016-4 of 27/06/2017. Therefore, the signs under comparison are visually dissimilar.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are visually dissimilar and they cannot be compared neither aurally nor conceptually, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

The opponent has also based its opposition on the following earlier rights:

1. European Union trade mark registration No 5 626 577 for the figurative mark , registered for the goods in Class 25;
2. European Union trade mark registrations No 5 628 061 for the figurative mark , registered for the goods in Class 25;

3. European Union trade mark registration No 5 628 003 for the figurative mark , registered for the goods in Class 25;
4. European Union trade mark registration No 5 628 086 for the figurative mark , registered for the goods in Class 25; 
5. European Union trade mark registration No 5 628 111 for the figurative mark , registered for the goods in Class 25;
6. European Union trade mark registration No 5 628 144 for the figurative mark , registered for the goods in Class 25;
7. European Union trade mark registration No 5 628 185 for the figurative mark , registered for the goods in Class 25;
8. European Union trade mark registration No 5 653 845 for the figurative mark , registered for the goods in Class 25;
9. International trade mark registration No 1 147 183 designating the European Union for the figurative mark , registered for the goods in Classes 18 and 25.

These earlier marks are cannot be deemed similar to the contested sign either. They are composed of four crossing lines, two of which connect in a way that ends in one longer single line (in case of the earlier marks 1), 3), 5), 6) and 9)) or are composed of much shorter lines which are not moving from the bottom (earlier marks 4 and 8).

The earlier marks 2) and 7) are represented almost identically as the one which has already been compared above. The only difference is that the earlier mark 7) is represented in a reverse position and that the position of the lines in the earlier mark 2) is slightly different.

Therefore dissimilarity of the signs is also found in relation to these earlier rights and the opposition must also be rejected insofar as it is based on these earlier rights.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION – ARTICLE 8(5) EUTMR

According to the opponent, all of the earlier marks on which the opposition is based have a reputation in the European Union for all the goods and services for which they are registered.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

Earlier EUTM registration No 3242187 and the contested sign have already been compared above under the grounds of Article 8(1)(b) EUTMR and found dissimilar overall. The same conclusion of dissimilar signs has been reached as regards the remaining nine earlier marks on which the opposition is based. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR

2. Conclusion

As is clear from the above, the similarity of the signs is a condition for Article 8(5) to be applied. Since the signs have been found to be dissimilar, one of the necessary conditions of Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected on this ground, too.

This finding would be valid even if the earlier marks were to be considered as enjoying a reputation, since, as already explained hereinabove, the dissimilarity of the signs cannot be overcome by the reputation or higher degree of distinctiveness of the earlier marks. Therefore, the evidence submitted by the opponent in this respect does not alter the outcome reached 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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.

The Opposition Division

Lars HELBERT

Janja FELC

Oana-Alina STURZA

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.