OPPOSITION No B 2 762 410

The British Dietetic Association, 5th Floor, Charles House, 148/9 Great Charles Street, Queensway, Birmingham, United Kingdom (opponent), represented by Freeths LLP, Colmore Plaza, 20 Colmore Circus, Birmingham B4 6AT, United Kingdom (professional representative)

a g a i n s t

Deviorica Investments Ltd, 16 Krinon, 3110 Limassol, Cyprus (applicant).

On 18/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 762 410 is partially upheld, namely for the following contested goods:

Class 25:        Hats; clothing; shoes; rain hats; sports headgear [other than helmets]; sports caps; sun visors [headwear]; thermal headgear; sun hats; caps with visors; beach hats; baseball caps; combative sports uniforms; raincoats; rainwear; rainproof clothing; waterproof outerclothing; waterproof trousers; fishermen’s jackets; wetsuits for surface watersports; water socks; rain ponchos; wet suits for surfing; wet suits for water-skiing and sub-aqua; wet suits for windsurfing; waterproof suits for motorcyclists; athletics vests; sportswear; sports clothing [other than golf gloves]; sports caps and hats; athletic tights; maillots; casual footwear; rainshoes; athletic shoes; aqua shoes; training shoes; sports shoes; sneakers; footwear for men; footwear for women.

Class 28:        Sporting articles and equipment; swimming equipment; batting gloves [accessories for games]; sporting articles not included in other classes; sports games; sport balls; sports equipment.

2.        European Union trade mark application No 15 423 171 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 28:        Toys, games, playthings and novelties; toy sporting apparatus.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 423 171. The opposition is based on, inter alia, European Union trade mark registration No 12 095 411 . The opponent invoked Article 8(1)(b), 8(5) and 8(4) 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.

1. The goods and services

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

Class 25:        Clothing, footwear, headgear.

Class 41:        Education and instruction; training, entertainment and cultural activities; arranging and conducting of conferences, seminars, symposiums and workshops; publication of books and texts; writing articles relating to health, diet and nutrition; production of videos, rental of sound and visual recordings, publication of periodicals, conference proceedings, surveys, reports and self-study courses; lending library services for books and for sound and visual recordings, organisation of exhibitions, health club services; organisation of awards schemes.

Class 44:        Nutritional advisory and consultation services; advisory and consultation services relating to an athlete’s and/or sports person’s diet, nutrition, fitness and health; regulate relations between dieticians and their employers through a trade union.

The contested goods are the following:

Class 25:        Hats; clothing; shoes; rain hats; sports headgear [other than helmets]; sports caps; sun visors [headwear]; thermal headgear; sun hats; caps with visors; beach hats; baseball caps; combative sports uniforms; raincoats; rainwear; rainproof clothing; waterproof outerclothing; waterproof trousers; fishermen’s jackets; wetsuits for surface watersports; water socks; rain ponchos; wet suits for surfing; wet suits for water-skiing and sub-aqua; wet suits for windsurfing; waterproof suits for motorcyclists; athletics vests; sportswear; sports clothing [other than golf gloves]; sports caps and hats; athletic tights; maillots; casual footwear; rainshoes; athletic shoes; aqua shoes; training shoes; sports shoes; sneakers; footwear for men; footwear for women.

Class 28:        Sporting articles and equipment; swimming equipment; batting gloves [accessories for games]; sporting articles not included in other classes; sports games; sport balls; sports equipment; toys, games, playthings and novelties; toy sporting apparatus.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 25

Clothing is identically contained in both lists of goods.

The contested hats; rain hats; sports headgear [other than helmets]; sports caps; sun visors [headwear]; thermal headgear; sun hats; caps with visors; beach hats; baseball caps; sports caps and hats are included in the broader category of the opponent’s headgear. Therefore, they are identical.

The contested shoes; casual footwear; rainshoes; athletic shoes; aqua shoes; training shoes; sports shoes; sneakers; footwear for men; footwear for women are included in the broader category of the opponent’s footwear. Therefore, they are identical.

The contested combative sports uniforms; raincoats; rainwear; rainproof clothing; waterproof outerclothing; waterproof trousers; fishermen’s jackets; wetsuits for surface watersports; water socks; rain ponchos; wet suits for surfing; wet suits for water-skiing and sub-aqua; wet suits for windsurfing; waterproof suits for motorcyclists; athletics vests; sportswear; sports clothing [other than golf gloves]; athletic tights; maillots are included in the broader category of the opponent’s clothing. Therefore, they are identical.

Contested goods in Class 28

The contested sporting articles and equipment; swimming equipment; batting gloves [accessories for games]; sporting articles not included in other classes; sports games; sport balls; sports equipment have the same distribution channels as the opponent’s clothing. They also have the same relevant public and may have the same producers. Therefore, the goods are similar to a low degree.

As a rule clothing, footwear and headgear include sports clothing, footwear and headgear which are items of apparel designed specifically to be worn when doing sport. The purpose and nature of these goods are different from those of sporting and gymnastic articles which are articles and apparatus for all types of sports and gymnastics, such as weights, halters, tennis rackets, balls and fitness apparatus. However, undertakings that manufacture sporting and gymnastic articles also manufacture sports clothing, sports footwear and sports headgear. In this case the distribution channels are the same.

The contested toys, games, playthings and novelties; toy sporting apparatus are toys and other equipment for playing games, such as board games. These goods do not have anything relevant in common with the opponent’s goods and services. They will not be produced by the same companies, they have different purposes, they will not be distributed through the same channels and they are not in competition with one another or complementary. Therefore, these goods and services are dissimilar.

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 or similar are directed at the public at large. The degree of attention is considered average.

3. The signs

	BDA ACTION
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. In the present case, 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 a figurative mark, consisting of the verbal element ‘BDA’ in upper case letters. Within the letter ‘D’ there is a stylised leaf.

The contested sign is a word mark, ‘BDA ACTION’. Word marks are protected in all typefaces.

The earlier sign and the contested mark both contain the verbal element, ‘BDA’, which has no meaning for the relevant public and is, therefore, distinctive.

The element ‘ACTION’ will be understood by the relevant public as, inter alia, ‘the fact or process of doing something, typically to achieve an aim’ (information extracted from Oxford English Dictionary on 16/06/2017 at https://en.oxforddictionaries.com/definition/action).

The element ‘ACTION’ has no direct connection to any of the relevant goods, and although it does not describe or evoke their essential characteristics it could be seen as alluding to the function of the goods, for example as indicating that the clothing and sporting articles are made for doing something or for a specific action. Consequently, it has a limited degree of distinctiveness.

The figurative elements of the earlier trade mark are limited to the leaf within the letter ‘D’ and the bold typeface of the letters. The leaf will be seen as purely decorative and therefore is of limited distinctiveness.

Neither of the signs has any element that could be considered clearly dominant over the other elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive string of letters ‘BDA’ at their beginnings. However, they differ in the verbal element ‘ACTION’ of the contested sign (which is of limited distinctiveness) and in the figurative elements of the earlier mark, which will be seen as purely decorative.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the signs are visually similar to an average degree.

Aurally, the figurative elements of the contested sign will not be taken into account. The pronunciation of the signs coincides in the sound of the distinctive string of letters ‛BDA’, present identically in both signs. All the letters of the earlier mark are contained identically within the contested sign. The pronunciation differs in the sound of the letters of the verbal element ‛ACTION’ of the contested sign, which has no counterpart in the earlier mark; however, this element is of limited distinctiveness. Therefore, the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘ACTION’, included in the contested sign, will be associated with the meaning given above. As explained above, the verbal element of the earlier sign has no meaning in the relevant territory. However, the figurative element will invoke the concept of a leaf. Since the signs will be associated with different concepts, they are conceptually dissimilar.

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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness 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 the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

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).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Given the principle of imperfect recollection, the fact that the differences are minor compared with the similarity resulting from the coinciding distinctive element ‘BDA’, which is the only verbal element of the earlier mark, and the fact that this coinciding distinctive element is at the beginning of each sign, 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, namely with the addition of the word ‘ACTION’, according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

REPUTATION – ARTICLE 8(5) EUTMR

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.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 09/09/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 14/01/2017

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 09/09/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 14/01/2017.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded also insofar as this ground is concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tobias KLEE

Magnus ABRAMSSON

Swetlana BRAUN

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.