OPPOSITION No B 2 708 413

Escola de Natação e Ginastica Bioswin Ltda, Av Paulista, 2073, Andar 17 Horsa i Conj 1703, São Paulo, Brazil (opponent), represented by Cabinet Lavoix, 2, place d’Estienne d’Orves ,75009 Paris, France (professional representative)

a g a i n s t

Transalp, Place de la Gare, 38470 L’Albenc, France (applicant), represented by Cabinet Hecke, 10, Rue d’Arménie – Europole, BP 1537, 38025 Grenoble Cedex 1, France (professional representative).

On 06/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 413 is upheld for all the contested goods, namely:

Class 28: Tables for table tennis; football goals; handball goals; basketball goals; play equipment and sports equipment, namely posts; play equipment and sports equipment, namely panels; play equipment and sports equipment, namely floors; play equipment and sports equipment, namely roofs; play equipment and sports equipment, namely stairs; play equipment and sports equipment, namely ladders; play equipment and sports equipment, namely climbing frames; play equipment and sports equipment, namely barriers; play equipment and sports equipment, namely nets; play equipment and sports equipment, namely artificial climbing walls for play areas; play equipment and sports equipment, namely parks for children and sports grounds; installations and equipment for community sports areas; sporting equipment for public spaces; intergenerational sporting equipment for public spaces; free-access street furniture for sports; elements for fitting out community sports areas.

2.        European Union trade mark application No 15 063 241 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 15 063 241, namely against some of the goods in Class 28. The opposition is based on, inter alia, European Union trade mark registration No 12 713 996. 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 registration No 12 713 996.

1. The goods

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

Class 28:         Appliances for gymnastics; knee guards (sports articles); shin guards (sports articles); machines for physical exercises; elbow guards (sports articles); sporting articles.

Class 41:         Physical education; physical education (consulting); fitness classes; consultancy in the field of fitness classes; fitness center services; organization of sports competitions; organizing and presenting conferences; organization of competitions (education or entertainment); consultancy relating to the organization of competitions (education or entertainment); advisory, consultancy and information on sports and cultural activities; personal trainer services; personal trainer consulting; advisory, consultancy and information on physical education.

The contested goods are the following:

Class 28:         Tables for table tennis; football goals; handball goals; basketball goals; play equipment and sports equipment, namely posts; play equipment and sports equipment, namely panels; play equipment and sports equipment, namely floors; play equipment and sports equipment, namely roofs; play equipment and sports equipment, namely stairs; play equipment and sports equipment, namely ladders; play equipment and sports equipment, namely climbing frames; play equipment and sports equipment, namely barriers; play equipment and sports equipment, namely nets; play equipment and sports equipment, namely artificial climbing walls for play areas; play equipment and sports equipment, namely parks for children and sports grounds; installations and equipment for community sports areas; sporting equipment for public spaces; intergenerational sporting equipment for public spaces; free-access street furniture for sports; elements for fitting out community sports areas.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 28

The contested tables for table tennis; football goals; handball goals; basketball goals; play equipment and sports equipment, namely posts; play equipment and sports equipment, namely panels; play equipment and sports equipment, namely floors; play equipment and sports equipment, namely roofs; play equipment and sports equipment, namely stairs; play equipment and sports equipment, namely ladders; play equipment and sports equipment, namely climbing frames; play equipment and sports equipment, namely barriers; play equipment and sports equipment, namely nets; play equipment and sports equipment, namely artificial climbing walls for play areas; play equipment and sports equipment, namely parks for children and sports grounds; installations and equipment for community sports areas; sporting equipment for public spaces; intergenerational sporting equipment for public spaces; free-access street furniture for sports; elements for fitting out community sports areas are included in the broad category of, or overlap with, the opponent’s sporting articles. Therefore, they are identical.

Since the conflicting goods do not relate to clothing, the applicant’s arguments in this regard must be set aside.

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 both the general public and sports professionals. The degree of attention may vary from average to high because some equipment may be highly specialised or expensive.

3. The signs

SMART 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). 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.

The elements that the signs have in common, namely ‘SMART FIT’, are not meaningful in certain territories, for example in those countries where English is not understood, such as Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish–speaking part of the public. Since these elements are meaningless for this part of the public, their distinctiveness is normal. Therefore, the applicant’s arguments regarding the weak distinctive character of the earlier mark are not relevant.

The earlier mark is a word mark, ‘SMART FIT’.

The contested sign is a figurative mark composed of the verbal elements ‘SMART’ in grey upper case letters and ‘FIT’ in black upper case letters and the white bold lower case letter ‘T’ depicted against a black circle. This last element is significantly smaller than the rest of the letters in the mark.

The elements ‘SMART FIT’, present in both signs, and the letter ‘T’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in the letters ‘SMART FIT’, which form the entire earlier mark and constitute the first eight letters out of a total of nine in the contested sign, which, as stated previously, is distinctive. However, they differ in the final letter, ‘T’, of the contested sign, as well as in that sign’s stylisation and figurative elements, described above. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs by the relevant public coincides in the sound of the letters that form the earlier mark, ‛SMART FIT’, which are present identically in the contested sign; the pronunciation differs only in the sound of the final letter, ‛T’, of the contested sign, which has no counterpart in the earlier sign. Therefore, the signs are aurally highly similar.

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.

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.

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, 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.

5. Global assessment, other arguments and conclusion

The goods are identical and the signs are visually similar to an average degree and aurally similar to a high degree. The degree of distinctiveness of the earlier mark is normal.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods and services covered are from the same or economically linked undertakings.

Taking all the above into account, the Opposition Division considers that the differing elements are not sufficient to counteract the visual and aural similarity between the signs. Consequently, even where the degree of attention is higher than average, the relevant public, when encountering the signs in relation to identical goods, is likely to think that they come from the same undertaking or from economically linked undertakings.

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 words ‘SMART FIT’. In support of its argument, the applicant refers to some 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 applicant did not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the words ‘SMART FIT’. In addition, in the examples cited by the applicant, ‘SMART FIT’ appears together with other words or as a part of a word also containing other letters. Under these circumstances, the applicant’s claim must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 12 713 996. It follows that the contested trade mark must be rejected for all the contested goods.

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

Dorothee SCHLIEPHAKE

Patricia LOPEZ FERNANDEZ DE CORRES

Marianna KONDAS

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.