OPPOSITION No B 2 689 225

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

a g a i n s t

Altitude Mask, c/o Maples Corporate Services Limited, PO Box 309, Ugland House,  Grand Cayman  1-1104, Cayman Islands (applicant), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, United Kingdom (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 689 225 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 and services of European Union trade mark application No 14 777 312 . The opposition is based on European Union trade mark registration No 14 711 782 , international trade mark registration No 1 277 085 designating the European Union and international trade mark registration No 1 275 742 designating the European Union ‘ALTITUDE MASK’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

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 is 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 particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier international trade marks on which the opposition is based.

On 04/05/2016, the opponent was notified that within two months, commencing after the ending of the cooling-off period, it should submit the abovementioned material. This time limit expired on 09/09/2016.

The opponent did not submit any evidence to substantiate its rights in international trade mark registration No 1 277 085 designating the European Union and international trade mark registration No 1 275 742 designating the European Union.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks. The opposition will therefore be reviewed only on the basis of European Union trade mark registration No 14 711 782.

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 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 and services are the following:

Class 9: Scientific apparatus and instruments; protective masks; breathing masks; dust masks; filtration masks; dust protective masks; respiratory masks; filters for respiratory masks; filters for dust masks; filters for protective masks; anti-pollution masks for respiratory protection.

Class 28: Gymnastic and sporting articles; facemasks for sports; facemasks for use in exercise; sports equipment; exercise equipment.

Class 35: Online retail and wholesale services connected with the sale of protective masks, breathing masks, dust masks, filtration masks, dust protective masks, respiratory masks, filters for respiratory masks, filters for dust masks, filters for protective masks, anti-pollution masks for respiratory protection, gymnastic and sporting articles, facemasks for sports, facemasks for use in exercise, sports equipment and exercise equipment; organisation, operation and supervision of loyalty and incentive schemes.

Some of the contested goods and services are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark, since this scenario places the opponent in the best possible position.

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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge and expertise. The degree of attention may vary from average to high depending on the price, frequency of purchase of the goods and how specialised they are (e.g. protective masks, respiratory masks, breathing masks have certain technical characteristics that are important for safety).

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The elements ‘ELEVATION’, ‘TRAINING’ and ‘MASK’ of the earlier sign are English words and therefore have a clear meaning, at least for the English-speaking part of the public, namely some kind of covering worn on the face whilst under instruction perhaps in a high altitude environment or at least in an upward direction. Upon taking into account their meaning, all elements of the earlier mark will be descriptive or allusive of characteristics of at least part of the goods of Classes 9 and 28. ‘ALTITUDE’ and ‘MASK’ of the contested sign are English words with a clear meaning for at least the English-speaking part of the public and will be understood as a mask used for great heights. In view of their meaning, for this part of the public the word elements of the contested sign are considered as at least allusive of characteristics of all of the contested goods and services.

It should be noted that due to the closeness or identity of the equivalents of the remaining word elements of the signs in other European Union languages (e.g. ‘elevacion’ in Spanish, ‘élévation’ in French, ‘altitud’ in Spanish, ‘altitude; in French, ‘träning’ in Swedish), it is likely that this part of the non-English speaking public understands some or all of these elements and hence, these elements will be descriptive or allusive of characteristics of (part of) the goods and services, as well.

The common element of the signs ‘MASK’ will further be understood by another part of the public, due to the closeness of the word in different European Union languages to ‘mask’ (e.g. ‘Maske’ in German, ‘maska’ in Slovenian, Croatian, Slovak, Czech, ‘маска’ [maska] in Bulgarian, etc.). Accordingly, for this part of the public the common element of the marks will be considered descriptive of characteristics of part of the goods and services and therefore, as non-distinctive for them.

However, it cannot be excluded that part of the non-English speaking public despite the closeness of the equivalents in their languages of the word elements of the signs, does not link them with any meaning. For such consumers these elements would have a normal degree of distinctiveness.

The figurative element of the contested sign, representing a stylised image of a head in profile with a mask, will be considered descriptive or allusive of characteristics of most of the contested goods and services and hence, as a weak elements. It is only with respect to the services of Class 35 organisation, operation and supervision of loyalty and incentive programs that this element will not create clear associations with. In view of the significant stylisation of this element, it is also possible that part of the public do not recognise in it a face with a mask and for this part of the public the element will be of normal degree of distinctiveness.

In view of the size, proportions and positioning of the elements of the earlier mark, it has no elements that could be considered clearly more dominant than other elements.

Due to their proportion and size, the word elements ‘ALTITUDE MASK’ of the contested sign are the dominant elements.

It should also be remembered that when a sign consists 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). This premise fully applies to the contested sign.

Visually, the signs coincide in the word ‘MASK’ written in black, which in the earlier mark is positioned on the third row below ‘ELEVATION’ and ‘TRAINING’ and in the contested sign – on the same line in second place after the term ‘ALTITUDE’. Additionally, the colours black, white and red are used in both signs however in different proportions – in the earlier sign it is only one letter of the three words that is represented in red, while in the contested mark the whole first word ‘ALTITUDE’ is in red. The signs further differ in their remaining word elements, in the font and size of the letters, in their overall structure (each of the word elements positioned on a separate line versus all word elements in the same line), in the figurative element of the contested sign which does not have its counterpart in the earlier mark.  

In view of the above, irrespective of the fact that the marks coincide in one of their word elements (non-distinctive for part of the public), the identified visual differences outweigh the similarities. Moreover, the common element is the last element of the marks, while 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.

Therefore, the signs are considered visually similar at the most to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of ‘MASK’, present identically in both signs. Phonetically the signs differ in the pronunciation of their remaining word elements. The overall phonetic impression from the signs is not very similar due to the difference in the rhythm, intonation and length of the signs – [E-LI-VEI-SHAN-TREI-NING-MASK] versus [AL-TI-TIUD-MASK] taking English as an example), where it is only the last two syllable that coincide.

Accordingly, the signs are similar at the most to a very low degree.

Conceptually, for the English-speaking part of the public, given the identical element ‘MASK’ and the similar connotations that ‘ELEVATION’ and ‘ALTITUDE’ create, the signs show similarities but their low distinctive character (at least) reduces the weighting and also to consider is the presence of the aforesaid differentiating elements. The same assertions and conclusion are applicable for those who only understand ‘MASK’. Therefore, conceptual similarity is at most of a low degree. For those for whom the word elements of the signs do not convey any notion, it is only the figurative element of the contested sign that may allude to some meaning. Since under this hypothesis it is only one of the signs that evokes a concept, the signs would not be conceptually similar. Lastly, the consumers who do not link the signs with any meaning, conceptual comparison would not be possible.

Since 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. Considering what has been stated above, for part of the public the sign has at least an average degree of distinctive character whilst for some it will be low.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

This 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).

The goods and services were assumed to be identical, the signs were found to be visually and aurally similar to, at most, a very low degree and at most conceptually similar to a low degree. The degree of distinctiveness of the earlier mark was assumed to be normal and the degree of attention of the public, which in the case at hand is the general public and professional public – varies from average to high.

Although the signs coincide in the element ‘MASK’, the differences in them outweigh their similarities. It is the general principle that the assessment of the similarity between two signs should focus on the overall impression they create.  

Even the part of the public that will perceive the signs as meaningless, in view of the number of additional elements of the signs which form the overall impression they create, would not be confused that the goods and services branded with the contested mark come from the same or an undertaking that is economically linked to the owner of the earlier trade mark.

In this respect, the argument of the opponent that conceptual similarity is sufficient for a likelihood of confusion may not be accepted. It is settled case-law that a conceptual similarity between signs with analogous semantic content may give rise to a likelihood of confusion where the earlier mark is particularly distinctive (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24). In the case at hand, at most, a low degree of conceptual similarity can be sustained and this clearly is not sufficient to overcome the very low degree of visual and aural similarity.

In view of the foregoing, and considering that the identity of the goods and services is the best case scenario for the opponent, the similarities between the signs are so low that there is no likelihood of confusion.

In view of the above, the opposition must be rejected.

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

Vanessa PAGE

Teodora TSENOVA-PETROVA

Vita VORONECKAITE

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.