OPPOSITION DIVISION
OPPOSITION No B 2 534 603
Aldi GmbH & Co. KG, Burgstr. 37, 45476 Mülheim/Ruhr, Germany (opponent),
represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater
Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional
representative)
a g a i n s t
Aleš Titlbach, Okružní 411, 435 13 Meziboří, Czech Republic (holder), represented
by Zeman-Podkrušnohorská Patentová A Známková Kancelář, Hradní 301, 357
33 Loket, Czech Republic (professional representative).
On 24/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 534 603 is partially upheld, namely for the following
contested goods and services:
Class 25: Clothing, namely for sport and leisure, bathing suits and beach
clothes, knitwear (clothing), including sweaters and waistcoats, clothing
accessories, namely shawls, scarves, gloves, headbands, loose knitted cuffs
(wristbands), socks, stockings, knee socks, belts, headgears for wear,
underwear, shoes including boots for sport, beach shoes, home footwear and
for leisure; ski boots.
Class 28: Sporting goods, sport articles and equipment; sporting goods, sport
articles and equipment for athletics and gymnastics, skies including roller skies
and waterskies, snowshoes, ski bindings, sleighs, bob-sleighs, ski poles,
hockey sticks, golf clubs, ice skates, roller skates, balls for ball sports, balls for
cricket, tennis, table tennis, golf, rackets for tennis, squash, badminton, tables
and rackets for table tennis, diving accessories, climbers’ harness, billiard
tables, billiard cues, billiard balls, curling stones, darts, targets, bows for
archery, sport arbalests, hockey quoits, nets for ball sports, fishing accessories,
skateboards, snowboards, surfboards, parachutes, equipment for gyms and
fitness centers, namely, exercise machines, treadmills, tables and weights,
exercise equipment and body-building apparatus, dumb-bells, skating boots
with skates attached, cases and covers especially adapted for sporting articles.
Class 35: Retail and wholesale services with clothing, namely for sport and
leisure, bathing suits and beach clothes, knitwear (clothing), including sweaters
and waistcoats, clothing accessories, namely shawls, scarves, gloves,
headbands, loose knitted cuffs (wristbands), socks, stockings, knee socks,
belts, headgears for wear, underwear, shoes including boots for sport, beach
shoes, home footwear and for leisure, ski boots, reatail and wholesale services
with sporting goods, articles and equipment, articles and equipments for
athletics and gymnastics, skies including roller skies and waterskies,
snowshoes, ski bindings, sleighs, bob-sleighs, ski poles, hockey sticks, golf
clubs, ice skates, roller skates, balls for ball sports and play, balls for cricket,
tennis, table tennis, golfs, racket for tennis, squash, badminton, tables and
Decision on Opposition No B 2 534 603 page: 2 of 12
rackets for table tennis, diving accessories, climbers’ harness, billiard tables,
billiard cues, billiard balls, playing and throwing balls, curling stones, darts,
targets, bows for archery, sport arbalests, hockey quoits, nets for ball sports,
fishing accessories, skateboards, snowboards, surfboards, parachutes,
equipment for gyms and fitness centers, namely, exercise machines,
treadmills, tables and weights, exercise equipment and body-building
apparatus, dumb-bells, skating boots with skates attached, cases and covers
for sporting article, swimming pools, accessories for water games, namely,
swimming aids and inflatable pool toys, playing tables for gaming, board
games and parlor games, playing card toys, all belonging to this class, sport
helmets and protective clothing (body armour), chronometrical instruments,
compasses, instruments for measuring range and altitude, cartography
products, printed matter including guide books and printed forms, trophies,
publicity material and souvenirs, textile fabrics, banners, flags, ensigns and
gonflaons (flags), towels, bath sheets, metal and glass cups and sporting
trophies, valises, bags, backpacks, knapsacks, walking and mountaineering
sticks, umbrellas, parasols, tents and tent porches, sleeping bags, torches,
cooking stoves, boats, oars and paddles, waterproof bags and barrels, sporting
and road bikes, scooters, tricycles and spare parts for the aforesaid vehicles,
tools for the repair and maintenance of bicycles.
Class 40: Treatment of textiles and textile articles; sewing services; custom
manufacture of knitwear; tailoring and treatment of clothing, underwear and
clothing accessories; treatment of fabrics; custom manufacture of tents and
tent porches; treatment of tents and tent porches (waterproofing).
2. International registration No 1 226 617 is rejected for all the above goods and
services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of international
registration designating the European Union No 1 226 617 for the figurative mark
, namely against all the goods and services in Classes 25, 28, 35
and 40. The opposition is based on international trade mark registration No 870 876
designating the European Union and European Union trade mark registration
No 2 071 728 for the word mark ‘ALDI’. The opponent invoked Article 8(1)(b)
EUTMR.
Decision on Opposition No B 2 534 603 page: 3 of 12
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.
a) The goods and services
The goods and services on which the opposition is based are the following:
International trade mark registration No 870 876
Class 3: Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery, essential oils,
cosmetics, hair lotions; dentifrices.
Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding
compositions; fuels (including motor spirit) and illuminants; candles, wax candles,
nightlights (candles) and wicks.
Class 7: Household vacuum cleaners.
Class 9: Electric and electronic apparatus for recording, transmitting, inputting,
outputting, storage and reproduction of data, images and sound; telecommunications
apparatus, transmitting and receiving apparatus; parts of the aforesaid goods;
batteries and accumulators; battery and accumulator charging equipment.
Class 16: Paper, cardboard and goods of these materials, included in class 16, in
particular wrapping and packing paper, conical paper bags, paper bags, filter paper,
advertising paper, letter and writing paper, table napkins of paper, paper towels,
household rolls, toilet paper, linen of paper, namely handkerchiefs, mouth and face
cloths, hand towels, table linen; printed matter; bookbinding material; photographs;
stationery; adhesives for stationery or household purposes; artists’ materials; paint
brushes; typewriters and office requisites (except furniture); instructional and
teaching material (except apparatus); plastic materials for packaging (included in
class 16); playing cards; printers’ type; printing blocks; carrier bags, carrier pouches,
sachets and banners for shop windows of plastic foil or paper, being also for
advertising purposes.
Class 24: Textiles and textile goods, included in class 24, in particular fabrics, bath
linen, bed linen, table linen; curtains.
Class 25: Clothing, footwear, headgear.
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked
fruits and vegetables; jams and jellies; eggs, milk and milk products, in particular
butter, cheese, cream, quark, yoghurt, kefir (milk beverage), desserts having
consistencies ranging from soft to frothy, made from milk and milk products with the
addition of substances to create a consistency, such as food starch, gelatine and
Decision on Opposition No B 2 534 603 page: 4 of 12
vegetable based thickeners and gelling agents, flavourings such as cocoa, coffee
extract, fruit ingredients, and natural and/or artificial flavourings; edible fats and
emulsifiers; edible oils and fats; meat, fish, fruit and vegetable preserves.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and
preparations made from cereals, bread, pastry and confectionery, ices; honey,
treacle; yeast, baking-powder, salt, mustard; vinegar; sauces; spices; ice.
Class 31: Agricultural, horticultural and forestry products as well as grains (as far as
contained in class 31); live animals; fresh fruits and vegetables; seeds, natural plants
and flowers; foodstuffs for animals, malt.
Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit
drinks and fruit juices; syrups and other preparations for making beverages.
Class 33: Alcoholic beverages (except beers).
Class 34: Tobacco; smokers’ articles; matches.
Class 36: Financial affairs, in particular financial consultancy and purchasing
consultancy for other companies
European Union trade mark registration No 2 071 728
Class 35: Advertising; business management; business administration; office
functions; retailing in all product areas; online retailing in all product areas; operating
supermarkets, retail outlets and discount retail outlets; advertising in the Internet, for
others; providing information on the Internet, namely information about consumer
products, consumer advice information and customer service information; arranging
of commercial transactions for third parties, also on the Internet; arranging of
contracts regarding the purchase and sale of goods, as well as the providing of
services for others, also via the Internet.
Class 38: Telecommunications.
Class 40: Treatment of materials; photographic laboratory services; making of
photographic copies, also on the basis of digital data, development of films,
duplicating of photographs; photograph processing services, in particular
enlargement and retouching of digital photographs.
Class 41: Education; providing of training; entertainment; sporting and cultural
activities; providing of entertainment in the form of recorded music, recorded images
and films.
Class 42: Scientific and technological services and research and design relating
thereto; industrial analysis and research services; design and development of
computer hardware and software; legal services; provision of storage space on the
Internet; services of a database, namely collecting, saving, updating, forwarding and
making available all kinds of data for third parties; operating and providing portals on
the Internet; holding in readiness for electronic retrieval by third parties as well as
electronic transmission of sound, images as well as other data and information of all
kinds, in each case in particular via the Internet.
Decision on Opposition No B 2 534 603 page: 5 of 12
The contested goods and services are the following:
Class 25: Clothing, namely for sport and leisure, bathing suits and beach clothes,
knitwear (clothing), including sweaters and waistcoats, clothing accessories, namely
shawls, scarves, gloves, headbands, loose knitted cuffs (wristbands), socks,
stockings, knee socks, belts, headgears for wear, underwear, shoes including boots
for sport, beach shoes, home footwear and for leisure; ski boots.
Class 28: Sporting goods, sport articles and equipment; sporting goods, sport articles
and equipment for athletics and gymnastics, skies including roller skies and
waterskies, snowshoes, ski bindings, sleighs, bob-sleighs, ski poles, hockey sticks,
golf clubs, ice skates, roller skates, balls for ball sports and play, balls for cricket,
tennis, table tennis, golf, rackets for tennis, squash, badminton, tables and rackets
for table tennis, diving accessories, climbers’ harness, billiard tables, billiard cues,
billiard balls, playing and throwing balls, curling stones, darts, targets, bows for
archery, sport arbalests, hockey quoits, nets for ball sports, fishing accessories,
skateboards, snowboards, surfboards, parachutes, equipment for gyms and fitness
centers, namely, exercise machines, treadmills, tables and weights, exercise
equipment and body-building apparatus, dumb-bells, skating boots with skates
attached, cases and covers especially adapted for sporting articles, swimming pools,
accessories for water games, namely, swimming aids and inflatable pool toys,
playing tables for gaming, board games and parlor games, playing cards, toys, all
belonging to this class.
Class 35: Retail and wholesale services with clothing, namely for sport and leisure,
bathing suits and beach clothes, knitwear (clothing), including sweaters and
waistcoats, clothing accessories, namely shawls, scarves, gloves, headbands, loose
knitted cuffs (wristbands), socks, stockings, knee socks, belts, headgears for wear,
underwear, shoes including boots for sport, beach shoes, home footwear and for
leisure, ski boots, reatail and wholesale services with sporting goods, articles and
equipment, articles and equipments for athletics and gymnastics, skies including
roller skies and waterskies, snowshoes, ski bindings, sleighs, bob-sleighs, ski poles,
hockey sticks, golf clubs, ice skates, roller skates, balls for ball sports and play, balls
for cricket, tennis, table tennis, golfs, racket for tennis, squash, badminton, tables
and rackets for table tennis, diving accessories, climbers’ harness, billiard tables,
billiard cues, billiard balls, playing and throwing balls, curling stones, darts, targets,
bows for archery, sport arbalests, hockey quoits, nets for ball sports, fishing
accessories, skateboards, snowboards, surfboards, parachutes, equipment for gyms
and fitness centers, namely, exercise machines, treadmills, tables and weights,
exercise equipment and body-building apparatus, dumb-bells, skating boots with
skates attached, cases and covers for sporting article, swimming pools, accessories
for water games, namely, swimming aids and inflatable pool toys, playing tables for
gaming, board games and parlor games, playing card toys, all belonging to this
class, sport helmets and protective clothing (body armour), chronometrical
instruments, compasses, instruments for measuring range and altitude, cartography
products, printed matter including guide books and printed forms, trophies, publicity
material and souvenirs, textile fabrics, banners, flags, ensigns and gonflaons (flags),
towels, bath sheets, metal and glass cups and sporting trophies, valises, bags,
backpacks, knapsacks, walking and mountaineering sticks, umbrellas, parasols,
tents and tent porches, sleeping bags, torches, cooking stoves, boats, oars and
paddles, waterproof bags and barrels, sporting and road bikes, scooters, tricycles
and spare parts for the aforesaid vehicles, tools for the repair and maintenance of
bicycles.
Decision on Opposition No B 2 534 603 page: 6 of 12
Class 40: Treatment of textiles and textile articles; sewing services; custom
manufacture of knitwear; tailoring and treatment of clothing, underwear and clothing
accessories; treatment of fabrics; custom manufacture of tents and tent porches;
treatment of tents and tent porches (waterproofing).
An interpretation of the wording of the list of goods and services is required to
determine the scope of protection of these goods and services.
The terms ‘in particular’, ‘such as’ and ‘including’, used in the holder’s and
opponent’s lists of goods and services, indicate that the specific goods and services
are only examples of items included in the category and that protection is not
restricted to them. In other words, it introduces a non-exhaustive list of examples
(09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in both lists of goods and services to show the
relationship of individual goods and services to a broader category, is exclusive and
restricts the scope of protection only to the goods and services specifically listed.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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
The contested clothing, namely for sport and leisure, bathing suits and beach
clothes, knitwear (clothing), including sweaters and waistcoats, clothing accessories,
namely shawls, scarves, gloves, headbands, loose knitted cuffs (wristbands), socks,
stockings, knee socks, belts, underwear are included in the opponent’s broad
category clothing. The goods are identical.
The contested headgears for wear are included in the opponent’s headgears. The
goods are identical.
The contested shoes including boots for sport, beach shoes, home footwear and for
leisure; ski boots are included in the opponent’s footwear. The goods are identical.
Contested goods in Class 28
The contested sporting goods, sport articles and equipment; sporting goods, sport
articles and equipment for athletics and gymnastics, skies including roller skies and
waterskies, snowshoes, ski bindings, sleighs, bob-sleighs, ski poles, hockey sticks,
golf clubs, ice skates, roller skates, skating boots with skates attached are similar to
a low degree to the opponent’s clothing, footwear, headgear as they can coincide in
producer, end user and distribution channels.
The contested balls for ball sports, balls for cricket, tennis, table tennis, golf, rackets
for tennis, squash, badminton, tables and rackets for table tennis, climbers’ harness,
diving accessories, billiard tables, billiard cues, billiard balls, curling stones, darts,
targets, bows for archery, sport arbalests, hockey quoits, nets for ball sports, fishing
Decision on Opposition No B 2 534 603 page: 7 of 12
accessories, skateboards, snowboards, surfboards, parachutes, equipment for gyms
and fitness centers, namely, exercise machines, treadmills, tables and weights,
exercise equipment and body-building apparatus, dumb-bells, cases and covers
especially adapted for sporting articles, are similar to a low degree to the opponent’s
clothing, footwear and headgear.
The general category of clothing, footwear and headgear includes sports clothing,
footwear and headgear, which are garments or items of apparel designed specifically
to be used when performing an activity or sport. Although the nature of these goods
is 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, there are undertakings that manufacture both
sporting and gymnastic articles as well as sports clothing/sports footwear. Therefore,
the distribution channels can be the same.
On the other hand, the contested accessories for water games, namely, swimming
aids and inflatable pool toys, playing and throwing balls, balls for play, swimming
pools, board games and parlor games, playing cards, toys, all belonging to this class,
playing tables for gaming; inflatable pool toys are dissimilar to any of the opponent´s
goods and services. The goods and services are all of a different nature, do not
share the same purpose of use and, therefore, they have no relevant public in
common. They are also not in competition or complementary to each other and do
not coincide in pertinent distribution channels and origin. Therefore, these goods and
services are dissimilar.
Contested services in Class 35
When comparing the opponent’s retailing in all product areas; online retailing in all
product areas to the contested retail and wholesale services with clothing, namely for
sport and leisure, bathing suits and beach clothes, knitwear (clothing), including
sweaters and waistcoats, clothing accessories, namely shawls, scarves, gloves,
headbands, loose knitted cuffs (wristbands), socks, stockings, knee socks, belts,
headgears for wear, underwear, shoes including boots for sport, beach shoes, home
footwear and for leisure, ski boots, reatail and wholesale services with sporting
goods, articles and equipment, articles and equipments for athletics and gymnastics,
skies including roller skies and waterskies, snowshoes, ski bindings, sleighs, bob-
sleighs, ski poles, hockey sticks, golf clubs, ice skates, roller skates, balls for ball
sports and play, balls for cricket, tennis, table tennis, golfs, racket for tennis, squash,
badminton, tables and rackets for table tennis, diving accessories, climbers’ harness,
billiard tables, billiard cues, billiard balls, playing and throwing balls, curling stones,
darts, targets, bows for archery, sport arbalests, hockey quoits, nets for ball sports,
fishing accessories, skateboards, snowboards, surfboards, parachutes, equipment
for gyms and fitness centers, namely, exercise machines, treadmills, tables and
weights, exercise equipment and body-building apparatus, dumb-bells, skating boots
with skates attached, cases and covers for sporting article, swimming pools,
accessories for water games, namely, swimming aids and inflatable pool toys,
playing tables for gaming, board games and parlor games, playing card toys, all
belonging to this class, sport helmets and protective clothing (body armour),
chronometrical instruments, compasses, instruments for measuring range and
altitude, cartography products, printed matter including guide books and printed
forms, trophies, publicity material and souvenirs, textile fabrics, banners, flags,
ensigns and gonflaons (flags), towels, bath sheets, metal and glass cups and
sporting trophies, valises, bags, backpacks, knapsacks, walking and mountaineering
sticks, umbrellas, parasols, tents and tent porches, sleeping bags, torches, cooking
stoves, boats, oars and paddles, waterproof bags and barrels, sporting and road
Decision on Opposition No B 2 534 603 page: 8 of 12
bikes, scooters, tricycles and spare parts for the aforesaid vehicles, tools for the
repair and maintenance of bicycles, the nature can be considered the same, the
purpose is also the same in the broadest sense of the word but in the absence of an
express limitation by the opponent clarifying the vague terms (retailing in all product
areas; online retailing in all product areas), it cannot be assumed that they are
provided by the same companies, that their methods of use coincide, that they share
the same distribution channels or that they are in competition or complementary. As a
conclusion, because the services have the same nature, they are considered similar
to a low degree,
Contested services in Class 40
The contested treatment of textiles and textile articles; treatment of fabrics are
included in the opponent’s broad category of treatment of materials. The goods are
identical.
The contested sewing services; custom manufacture of knitwear; tailoring and
treatment of clothing, underwear and clothing accessories; custom manufacture of
tents and tent porches; treatment of tents and tent porches (waterproofing) are
included or overlap with the opponent’s treatment of textiles and textile articles.
Treatment of materials which are present during the production of a product may
involve many forms, such as cutting or sewing or tailoring. The services are identical.
b) 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 and services found to be identical or similar to a low
degree are directed at the public at large as well as at business customers with
specific professional knowledge or expertise.
The degree of attention is average in relation to the goods in Classes 25 and 28 and
may vary from average to high in relation to the services provided in Classes 35
depending on the price and specific intended use of the goods subject to
retail/wholesale. The same applies in relation to the services in Class 40 which are
intended for both professionals and the general public because some of the services
are can be costly and can involve aspects that must be clarified beforehand.
c) The signs
ALDI
Earlier trade marks Contested sign
Decision on Opposition No B 2 534 603 page: 9 of 12
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 word ‘ALDI’ of the earlier marks has no meaning for the relevant public and is,
therefore, distinctive.
Although the component ‘ALTI’ of the contested mark will not be perceived as having
a meaning by the relevant public, the component ‘SPORT’ will be associated by the
relevant public with ‘activity involving physical exertion and skill in which an individual
or team competes against another or others for entertainment’ (information extracted
from Oxford Dictionary). Taking into account the relevant goods and services, the
component ‘SPORT’ will be perceived as having a concrete meaning and will
indicate, for instance, that the goods in Classes 25 and 28 are designed for sport
activities or that services in Class 35 relate to sport. Moreover, in relation to services
in Class 40, the term may be seen as alluding to the characteristics of the services in
question (e.g. that they are related to sport). Therefore, the contested sign is likely to
be broken down into the meaningless and distinctive component ‘ALTI’ and the non-
distinctive or (for a part of the goods) weak component ‘SPORT’. This is because the
relevant consumers, when perceiving a verbal sign, will break it down into elements
that suggest a concrete meaning, or that resemble words that they already know
(13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion,
EU:T:2008:33, § 58).
It also has to be mentioned that consumers generally tend to focus on the beginning
of a sign when they encounter a trade mark.
Visually, the signs coincide in the letters ‘AL-I’ and differ in the letters ‘D’ in the
earlier marks and ‘T’ in the contested mark as well as in the additional word ‘SPORT’
of the contested mark which is non-distinctive or weak for the relevant goods and
services, as explained above. The marks also differ in the slight stylisation of the
contested mark.
Taking into account that the signs only differ in the third letter D/T and a non-
distinctive or (for a part of the relevant services) weak element ‘SPORT’, the signs
are considered to be visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛AL-I’,
present in both signs. The pronunciation differs in the sound of the additional word
‛SPORT’ of the contested mark and also in the third letter ‘D’ versus ‘T’ of the words
‘ALDI’ and ‘ALTI’. In most of the territories, the letters ‘D’ and ‘T’ are pronounced in a
very similar way, given that the consonants ‘d’ and ‘t’ are both plosive dental sounds,
the former being voiced while the latter is unvoiced.
Therefore, the signs are aurally highly similar.
Conceptually, although the public in the relevant territory will perceive the element
of contested sign ‘SPORT’ with the meaning explained above, the earlier sign has no
meaning in that territory. Since the earlier signs will not be associated with any
meaning, the signs are not conceptually similar.
Decision on Opposition No B 2 534 603 page: 10 of 12
Nevertheless, the distinctiveness of the expression ‘sport’ is very limited in relation to
the majority of the goods and services at issue, as explained above and,
consequently, the conceptual impact of this element is minor, since the attention of
the relevant public will be attracted by the additional fanciful verbal element, ‘ALTI’, of
the contested sign, which has no meaning.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier marks
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 marks have been extensively used and enjoy
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’).
Consequently, the assessment of the distinctiveness of the earlier marks will rest on
its distinctiveness per se. In the present case, the earlier trade marks as a whole
have no meaning for any of the goods and services in question from the perspective
of the public in the relevant territory. Therefore, the distinctiveness of the earlier
marks must be seen as normal.
e) Global assessment, other arguments and conclusion
The goods and services were found to be partially identical, partially similar to a low
degree and partially dissimilar; the degree of attention will vary between average and
high depending on the specifications of the goods and services involved.
The marks are visually and aurally highly similar. The contested mark has a concept
whilst the earlier marks have none, and, therefore, the signs are conceptually not
similar. However, as it was mentioned above the word ‘sport’ of the contested sign is
not distinctive or (in relation to the services in Class 40) weak for the goods and
services at hand and, consequently, the conceptual impact of this element is minor.
The relevant public will therefore, pay more attention to the other element of the
contested sign, ‘ALTI’. Therefore the relevant differences are in the third letters, ‘D’
and ‘T’, which will be paid less attention than the three identical letters, ‘AL-I’, at the
beginnings of the signs, also taking into account that these letters are pronounced in
a very similar way in most of the relevant territory.
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). Even consumers who pay a high degree of attention need to rely on their
imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605,
§ 54).
Consequently, the relevant consumers may legitimately believe that the contested
figurative mark is a new version or a brand variation of the earlier word marks, ‘ALDI’,
originating from the same undertaking as the earlier marks or from an economically
Decision on Opposition No B 2 534 603 page: 11 of 12
linked undertaking. In other words, consumers may confuse the origins of the
conflicting goods and services.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s international trade mark No 870 876 registration and
European Union trade mark registration No 2 071 728.
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be identical or similar to a low degree to those of the
earlier trade marks.
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.
Since the opposition is partially successful on the basis of the inherent
distinctiveness of the earlier marks, there is no need to assess the enhanced degree
of distinctiveness of the opposing marks due to their extensive use as claimed by the
opponent and in relation to identical and similar goods and services. The result would
be the same even if the earlier marks enjoyed an enhanced degree of
distinctiveness.
Likewise, there is no need to assess the claimed enhanced degree of distinctiveness
of the opposing marks in relation to dissimilar goods and services, as the similarity of
goods and services is a sine qua non for there to be likelihood of confusion. The
result would be the same even if the earlier marks enjoyed an enhanced degree of
distinctiveness.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
Decision on Opposition No B 2 534 603 page: 12 of 12
The Opposition Division
Ana MUÑIZ RODRÍGUEZ Janja FELC Jessica LEWIS
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.