OPPOSITION No B 2 730 508
Marc O'Polo License AG, Hofgartenstraße 1, 83071 Stephanskirchen, Germany (opponent), represented by Brandstock Legal Rechtsanwaltsgesellschaft MBH, Rückertstr. 1, 80336 München, Germany (professional representative)
a g a i n s t
Oceanic Holding AB, Manufakturgatan 4, 41707 Göteborg, Sweden (applicant)
On 05/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 730 508 is upheld for all the contested goods, namely:
Class 25: Clothing; footwear; hats.
2. European Union trade mark application No 15 195 704 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 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 195 704, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 13 244 991. 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 goods
The goods on which the opposition is based are, inter alia, the following:
Class 25: Clothing; Footwear; Headgear; Men's, women's and children's outer clothing; Pants (Am.); Denim pants; Jackets; Parkas; Jackets [clothing]; Rainproof jackets; Shirts; Polo shirts; Tee-shirts; Waistcoats; Sweaters (jumpers); Pullovers; Slipovers; Gowns; Skirts; Suits; Ties; Bow ties; Bath robes; Dressing gowns; Bed wear and night wear; Aprons for cooking; Underwear; Undershirts; Teddies (undergarments); Lingerie; Underwear; Corsets; Hosiery; Socks; Stockings; Tights; Waist belts; Garters; Bandanas (scarves); Scarves; Headgear; Caps [headwear]; Ear muffs; Collar protectors; Gloves; Shields; Headbands [clothing]; Articles of swimwear; Swimming costumes; Bathing trunks; Clothing for babies and children; Shoes; Slippers; Sandals; Boots; Leisure and city shoes for gentlemen and ladies; Infants' footwear; Clothing, footwear and headgear for sports, in particular for jogging, fitness training, gymnastics, yoga, golf, tennis, squash, badminton, water sports, sailing, surfing, canoeing, diving, rowing, alpine skiing, cross-country skiing, snowboarding, football, basketball, handball, volleyball, baseball, inline skating, skateboarding, roller-skating, hockey, ice hockey, ice-skating, American football, cycling, equestrian sports; Knitwear [clothing]; Hiking, trekking, climbing and outdoor clothing; Hiking, trekking, climbing and outdoor footwear.
The contested goods are the following:
Class 25: Clothing; footwear; hats.
The goods under comparison are identical because clothing; footwear appear in both lists and hats are included in the opponent’s broader category of headgear.
- 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.
- The signs
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CAMPUS
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OCEAN CAMPUS
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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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Therefore, and for reasons of procedural economy, 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 the word mark ‘CAMPUS’ and the contested sign is a word mark composed of two words ‘OCEAN CAMPUS’.
The coinciding element ‘CAMPUS’ will be perceived by the relevant public as referring to the land on which a college or university and related institutional buildings are situated and has, therefore, no meaning in relation to the relevant goods.
As to the contested sign’s first word element ‘OCEAN’ it will be perceived by the relevant public as referring to a body of saline water that composes much of a planet's hydrosphere and has, therefore, no meaning in relation to the relevant goods.
Visually, the signs coincide in the word ‘CAMPUS’ which makes up the entire earlier mark. They differ in the element ‘OCEAN’. However, considering that the word ‘CAMPUS’ is the only element of the earlier mark, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‘CAM-PUS’ present identically in both signs and to that extent the signs are aurally similar. The pronunciation differs in the syllables ‘O-CE-AN’ of the contested sign, which has no counterpart in the earlier mark.
Therefore, it is considered that the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the perception of the marks by the relevant public and, therefore, it is concluded that they are similar to the extent that they both contain the element ‘CAMPUS’.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 and as explained under c) the earlier trade mark has no direct meaning for any of the goods in question. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
In the present case the goods are identical and the degree of attention paid by the relevant public is average.
The signs are, on all levels, similar to an average degree.
Under these circumstances, the differences between the signs, resulting from the verbal element ‘OCEAN’ – although it appears at the beginning of the contested sign, which is the part of a sign to which more attention is generally paid – is not sufficient to counteract the fact that the earlier mark is entirely incorporated in the contested sign.
Taking the above into account, the Opposition Division considers that the similarity between the signs might lead at least part of the relevant public to think that the contested goods and the opponent’s goods come from the same undertaking or from economically-linked undertakings and that the contested sign is a sub-brand of goods connected to the earlier mark.
Considering all the above, including the average degree of inherent distinctiveness of the earlier mark, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public in the European Union.
Therefore, the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 13 244 991. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical
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
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Ioana MOISESCU |
Cynthia DEN DEKKER |
Jessica LEWIS
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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.