OPPOSITION No B 2 681 537

Trainingmask.LLC, 2141 plett rd #232, Cadillac Michigan 49601, United States of America (opponent), represented by Kuhnen & Wacker Patent- und Rechtsanwaltsbüro, Prinz-Ludwig-Str. 40A, 85354 Freising, Germany (professional representative)

a g a i n s t

Dominique Wenger, Sternhofweg 54, 5020 Salzburg, Austria (applicant), represented by Zumtobel Kronberger Rechtsanwälte OG, Rainbergstr. 3c, 5020 Salzburg, Austria (professional representative).

On 28/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 681 537 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 15 057 318. The opposition is based on, inter alia, European Union trade mark registration No 14 711 774. 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 14 711 774.

1. The goods

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

Class 9:         Gas masks that restrict the amount of oxygen flow to the user for non-medicating training purposes; breathing masks; protective masks; oxygen masks; respiratory masks filters [non-medical]; anti-pollution masks for respiratory protection; valves for gas, oxygen and protective masks.

Class 18:        Leather unworked or semi-worked; animal skins, hides; trunks; baggage; umbrellas and parasols; walking sticks; umbrella sticks; satchels; leatherboard; card cases; briefcases; music cases; casual bags; rucksacks; hand bags; shopping bags; wheeled shopping bags; bags for climbers; bags for campers; beach bags; gym bags; bags (envelopes, pouches) of leather, for packaging; garment bags for travel; traveling sets.

Class 25:        Clothing; footwear; headgear; clothing and footwear for sports, combat sports and martial arts; martial arts suits; shorts; kimonos; tee-shirts; bermuda shorts; sweat shirts; swimsuits; headgear; caps; headbands; wristbands; armbands.

Class 28:         Body-training apparatus; exercise equipment, namely, resistance training exercise masks which restrict airflow; martial arts training equipment; physical fitness equipment, namely, resistance training exercise masks which restrict airflow; training apparatus for boxing, martial arts, and similar sports; face masks for sports.

The contested goods are the following:

Class 25:        Clothing; headgear; sportswear; clothing for martial arts; combative sports uniforms; sports jackets; singlets.

Class 28:        Martial arts training equipment; sports equipment; sports training apparatus; gymnastic and sporting articles; sporting articles and equipment; fitness exercise machines; sporting articles not included in other classes.

An interpretation of the wording of the opponent's list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 25

The contested clothing; headgear; sportswear; clothing for martial arts; combative sports uniforms are identically contained in both lists of goods (including synonyms).

The contested sports jackets are included in the broad category of the opponent’s clothing for sports. Therefore, they are identical.

The contested singlets are included in the broad category of the opponent’s clothing. Therefore, they are identical.

Contested goods in Class 28

The contested martial arts training equipment is identically contained in both lists of goods.

The remaining sports equipment; sports training apparatus; gymnastic and sporting articles; sporting articles and equipment; fitness exercise machines; sporting articles not included in other classes include, as broader categories, or overlap with, the opponent’s body-training apparatus. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

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 the public at large.

The degree of attention is deemed to be average.

3. 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).

Both figurative marks have the English words ‘TRAINING MASK’ in common. Apart from the English speaking territories of the European Union, those words will be understood in an important number of Member States. On the one hand, the word ‘training’ has entered into the dictionary of many languages of the European Union, for example, in Germany (see Duden) or in France (see Larousse) or is a commonly borrowed term from the English language (for example in Spain). On the other hand, the word ‘mask’ is very close to its equivalent in other European languages and will for this reason be understood, for example, in Germany (‘Maske’) or in France (‘masque’). For consumers who understand the meaning of the English words ‘TRAINING MASK’, those word elements will only be of low distinctive character in relation to goods in Class 25 and Class 28 to the extent that all these goods relate to sports, exercise and training.

However, notwithstanding the wide-spread use of the English word ‘training’ in the market in relation to the relevant goods in Class 25, especially for sport clothing, or in Class 28 as all of them are related to sport, exercising and training, for some parts of the public in countries where English is not an official language, the combination of the words ‘TRAINING’ and ‘MASK’ will be meaningless, and therefore perceived as a distinctive element of the conflicting marks.

In addition to the common word elements, the earlier figurative mark contains the figurative element depicting a mountain chain which may be perceived as allusive in relation to the goods protected by the earlier mark in Class 25 and 28 (e.g. for ‘altitude training’). Despite of such allusive nature of the mountain device the earlier mark has no elements that could be considered clearly more distinctive as regards both, the English and non-English speaking consumers, given that it is crowning the word element and thus functions as an embellishment rather than as an independent element of the composite trade mark.

The contested sign contains the further word element ‘PHANTOM’ which is meaningful for at least the English-speaking consumers (noun 1. ‘A ghost’; or as modifier ‘Not real; illusory’.; Oxford English Dictionaries, online at https://en.oxforddictionaries.com/definition/phantom), while it may have no meaning for other consumers within the European Union. In both cases it has no specific connotations in relation to the goods covered by the contested sign, and is therefore of normal distinctiveness. It is written in bold and curved stylized capital letters, significantly bigger in size than the words ‘TRAINING MASK’ that are below in common rounded capital letters. Above the word ‘PHANTOM’ is a device which can be perceived in various ways, as a device of the bird in flight, the silhouette of a ghost raising its arms or a ‘Zorro’ type mask.

Due to its prominent positioning, the element ‘PHANTOM’ can be considered the most dominant (eye-catching) element in the contested sign, and if not perceived as such, it is at least co-dominant element when coupled with the device in the contested sign.

As both conflicting signs are figurative marks it should be noted that 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).

Visually, the signs coincide in the word elements ‘TRAINING MASK’. However, they differ in the additional central element of the contested sign ‘PHANTOM’, which is the most distinctive (at least for the vast majority of the public) and dominant (or at least co-dominant) element in the contested sign. Moreover, the signs can be differentiated by their devices, as the one in the earlier mark clearly represents mountains, while the other in the contested sign can be perceived, either as the bird in flight/or a ghost or a ‘Zorro’ type mask.  

Therefore, the signs are visually similar to a low degree due to the presence of differing, distinctive and (co-)dominant element ‘PHANTOM’, as well as ambiguous nature of the device in the contested sign.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the identical words ‘TRAIN/ING MASK’ in both signs (of low distinctive character for the English-, and distinctive for some part of the non-English-speaking consumers). However, the pronunciation differs in the sound of the letters constituting the distinctive word ‘PHAN/TOM’ of the contested mark, which is not present in the earlier mark.

Therefore, the signs are aurally similar to an average degree as regards part of the non-English-speaking consumers, and to a low degree as regards the English-speaking consumers.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks as regards the English-speaking part and non-English-speaking part of the public.

The English-speaking consumers will note that the signs overlap in the 'TRAINING MASK' elements, however as they are of low distinctive character in both signs, and the contested sign differs significantly due to the presence of (co-)dominant and the most distinctive central element 'PHANTOM', the signs will be seen as conceptually dissimilar. This dissimilarity is underlined by the different notions communicated by the figurative devices.

For at least some part of the non-English-speaking consumers both, the verbal element 'TRANING MASK' coinciding in the signs and the 'PHANTOM' of the contested sign are meaningless, and as such distinctive. Only the concept of mountains in the earlier mark will be noted and it creates a conceptual difference with the contested trade mark’s device which can be perceived in a various ways as mentioned above.

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 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. As indicated before, the word elements (at least for the vast majority of the relevant public) and the figurative element of the earlier trade mark are at least allusive of the goods for which the trade mark is registered. Given its allusive semantic content, the earlier trade mark enjoys a rather limited scope of protection.

5. Global assessment, other arguments and conclusion

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/services covered are from the same or economically linked undertakings.

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).

In the present case all the contested goods in Classes 25 and 28 are found to be identical to those of the opponent's goods in the respective classes. However, in the circumstances of the present case a general principle of interdependence of the relevant factors must be applied accordingly.

The signs are considered visually similar to a low degree due to the differing, distinctive and (co-)dominant element ‘PHANTOM’, as well as ambiguous nature of the device in the contested sign which will be perceived by the consumers differently as the concept of the mountains in the earlier mark. Moreover, the mentioned device independently how it would be perceived by the consumers, plays a quite big role in the contested sign, functioning as a reinforcement of the dominance and central position of the ‘PHANTOM’ over the ‘TRAINING MASK’ element, which is clearly secondary in the contested sign. As regards aural aspect, the signs are similar to an average degree or low degree depending on the consumer’s perception, and in this regard the reference is made to the section c) above. As described above in the section c) the similarity on a conceptual level cannot be established for any part of the analysed relevant publics.

Even when the comparison of the signs is focused on the non-English speaking part of the public in the European Union for whom the element 'TRAINING MASKS’ is distinctive, the existence of the at least co-dominant element 'PHANTOM' in the contested mark, differentiates the marks sufficiently to exclude any likelihood of confusion. Moreover, an ambiguous character of the device in the contested sign, which can be interpreted by the consumers in a various ways (as the bird in flight/the ghost/or the 'Zorro' mask device) cannot act in favour of finding a likelihood of confusion.

The lack of likelihood of confusion is even clearer for the English-speaking part of the public, which can differentiate the signs on the conceptual level due to the (co-) dominant and meaningful word 'PHANTOM', which is distinctive, and plays an independent role in the contested sign, contrary to the coinciding, however, lowly distinctive elements 'TRAINING MASK'. In principle, coincidence in a weak/non-distinctive element will usually not result in likelihood of confusion, and this is applicable in the present case.

The earlier mark has limited distinctiveness; see section d). The differences between the marks due to the addition of the distinctive element ‘PHANTOM’ will be perceived visually, phonetically and conceptually (cf. T-102/14, paragraphs 61 and 68).

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

• European Union trade mark registration No 14 711 782 (figurative mark)

 

for identical scope of protection than this of the earlier right compared above, that is for the goods in Classes 9, 18, 25 and 28,

• International trade mark registration designating the European Union No 1 277 085 (figurative mark)

,    and

• International trade mark registration designating the European Union No 1 277 159 (word mark) ‘TRAINING MASK VENT’,

both registered for narrower scope of protection than this of the earlier right compared above, that is for the goods in Class 28 only.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further word elements such as ‘VENT’ in the international trade mark registration No 1 277 159, ‘ELEVATION’ in the European Union trade mark No 14 711 782 or even additional expression ‘STIMULATETS HIGH ATITUDE TRAINING’ in the international trade mark registration No 1 277 085, which are not present in the contested trade mark (or are present only individually as regards the double word ‘TRAINING’ in the latter earlier right). All of the contested goods are found to be identical to those of the earlier mark already compared above, therefore as the identity of the goods could not outweigh the significance of the other factors (a degree of similarity between the marks), therefore the remaining earlier rights listed above as considered even less similar to the contested sign than the earlier right that has been already compared cannot change this finding. Consequently, the outcome cannot be different with respect to the goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 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

Gregor SCHNEIDER

Birgit FILTENBORG

Gaile SAKALAITE

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.