OPPOSITION No B 2 713 793

Hummel Holding A/S, Balticagade 20, 8000 Aarhus C, Denmark (opponent), represented by Patrade A/S, Fredens Torv 3A, 8000 Aarhus C, Denmark (professional representative)

a g a i n s t

Kwon KG, Unterfeldring 3, 85256 Vierkirchen, Germany (applicant), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB, Widenmayerstr. 23, 80538 München, Germany (professional representative).

On 24/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 713 793 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 of European Union trade mark application No 15 211 717 . The opposition is based on Danish trade mark registration No VA 198 703 157  . 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.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Footwear.

The contested goods are the following:

Class 25: Footwear.

Contested goods in Class 25

The goods of the earlier sign cover all goods included in the list of the goods of Class 25 under the 4th edition of the Nice Classification, i.e. footwear is included in it. Accordingly, the goods footwear are identically contained in the list of goods of both signs.  

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.

The applicant claims that the average consumer (of sports shoes) shows a higher degree of attention and refers to a previous decision of the Office in support. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

The applicant has not adduced any additional evidence in support of its argument either.

The Opposition Division does not agree with the applicant that the relevant consumer shows higher attention than the average. As correctly noted by the opponent, the relevant public is the public at general that shows an average degree of attention. Nothing in the nature of the goods, their manner of purchase or effect on the consumers leads or requires that consumers are more attentive and observant when choosing such goods. On the contrary, these are mass-consumption goods, frequently purchased and used by the relevant consumer. As a rule these goods are not expensive or rare and their purchase does not require specific knowledge or expertise. The same reasoning applies to footwear in general, as well as to sports shoes in particular (21/05/2015, T-145/14, Two parallel stripes on a shoe, EU:T:2015:303, § 33).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Denmark.

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 contested sign is a position mark, consisting of a figurative element placed on the outer side of the shoe in the area between the shoe laces and the sole. The earlier right is classified by the Danish registration body as a figurative sign, however based on the mark’s representation, it apparently represents a figurative device positioned on the outer side of a shoe between the shoe laces and the sole. Accordingly, irrespective of their different classification, both marks represent a sign positioned in a constant manner and size on a shoe, as in both marks the sign is indistinguishable from the appearance of the product designated. (22/06/2017, R 1757/2016-2, Shape of a moulding on the bridge portion of a boot (3D), § 28 and the case-law cited)

The earlier mark represents two parallel identical chevron-shaped or angle-shaped lines next to each other at a space equalling one chevron, with the angles centrally positioned between the shoe laces and the sole and pointing straight towards the toe of the shoe. The lines are dark in colour and contrast with the lighter background colour of the shoe.

The contested mark represents two almost parallel curved lines next to each other, with the curved part pointing towards the sole. The lines are dark in colour and contrast with the lighter background of the shoe. The sides of the lines pointing towards the back part of the shoe are longer and gradually get thinner at the end.  

It is settled case-law that it is common on the market for sports and leisure shoes, to place a specific figurative element consisting of easily visible lines, stripes or geometric shapes as a trade mark in particular on the side of the shoe between the sole and the shoelace. (5/06/2006,R 51/2006-4, Ring on a shoe, § 14) It is also clear from the case-law that lines, stripes, chevrons, curves and similar are as a rule banal decorative elements applied on many types of footwear (8/06/2016, R 1828/2015-2, Device of pointing arrows, § 23). Accordingly, it is the particular configuration of the symbols and/or its separate elements and their position on the respective goods that would mainly be seen as an indication of origin. (Two parallel stripes on a shoe, § 36 – § 37)

Visually, the signs coincide in the fact that they represent a specific symbol positioned on the outer part of a shoe between the shoe laces and the sole and comprise two parallel, or almost parallel lines in dark colour against the light background of the shoe, both starting from the shoe laces. The signs differ in their remaining aspects. In particular, the earlier sign represents two chevron or angle-shaped lines, while the applicant’s sign consists of two curved lines. The two sides of the earlier sign’s angles bridge the shoe laces part and the sole, they are equal in length and width, the angles point directly to the front part of the shoe and are positioned at an equal distance from the laces and the sole. The two sides of the curves of the contested sign have a different length, the one starting from the shoe laces part is shorter, and the other one, which points to the back part of the shoe is longer. The curves point at and one of them is almost touching the upper part of the sole (not centrally positioned as with the chevrons). Further, in contrast to the fact that the lines of the earlier sign are equal in width, those of the contested mark gradually get thinner starting from the shoe laces to the back, as the upper line extends almost until the end of the visible part of the outer side of the shoe, while the lower one is shorter. Finally, the chevrons of the opponent’s sign occupy the middle part of the outer side of the shoe only, while the curves of the contested one visually occupy the middle and back part of the shoe.

It is considered that the differences create a significantly different visual impression. An angular form as opposed to a curve, equal width and length of the separate sides against different in length and thinning sides, one sign occupying the middle part of the outer side of the shoe, versus a sign taking the middle and back part of the outer side of the shoe – all these differences in configuration and position are not outweighed by the fact that the signs are to be placed at the outer side of the shoe, which is a common practice in this industry and comprise two parallel or almost parallel lines (but in different shapes) and use the same dark and light contrast. Accordingly, the signs are considered at most similar to a very low degree.

Aurally, since the signs are purely figurative and abstract, it is not possible to compare them aurally.

Conceptually, since neither of the device elements in the signs nor the device elements taken together with their position on the shoe conveys any concept, a conceptual comparison is not possible, and therefore the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

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).

It should be noted that in the last observations submitted by the opponent it refers to a previous German order for imposition of a preliminary injunction. The decision relates to a trademark infringement claim and is submitted to support the enhanced distinctiveness claim of the opponent. For the sake of completeness, it must be mentioned that the case relates to infringement by placing the infringing sign on clothing and the sign in question is (almost) identical to the registered mark of the opponent. Accordingly, this decision is not relevant for the comparison of the earlier mark and the contested mark.  

The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. The more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18). Nevertheless, when evaluating likelihood of confusion, the broader protection stemming from the acquired enhanced distinctiveness should be considered in conjunction with all other relevant factors.

In the present case, it has been established that the goods at issue are identical and that the relevant public is the public in general with average degree of attention. It has been assumed that the earlier mark has acquired enhanced distinctiveness. Since the signs are purely figurative, the comparison of the signs has reached a conclusion that aural comparison is not possible and given that the signs’ elements do not evoke any concept – conceptual comparison is not possible, either. Thus, only a visual comparison is possible and the outcome of it is that the signs are visually similar at most to a very low degree. The fact that there is a coincidence in the position of the marks (positioned at the outer side of a shoe between the shoe laces and the sole) and that they are composed of two lines in a dark colour against a lighter background is not sufficient to overcome the differences in the overall visual impression. In particular, consumers would not neglect the difference in the angular form as compared to a curved one, the differences in the proportions of the different sides of the angled/curved lines, the short and centred lines in the earlier signs as opposed to the extended lines, occupying the whole middle and back part of the shoe in the contested one.

Bearing in mind that the visual differences are clearly perceived by consumers and that the visual coincidences between the signs are mainly common practice in the shoe industry to indicate commercial origin (placing a symbol between the shoe laces and the sole in the outer side of a shoe; lines contrasting with the background), and considering the remaining factors, a conclusion is reached that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.

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

Lucinda CARNEY

Teodora TSENOVA-PETROVA

Richard BIANCHI

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.