OPPOSITION No B 2 762 428

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, Birmingham B4 6AT, United Kingdom (professional representative)

a g a i n s t

Deviorica Investments LTD, 16 Krinon, CY-3110 Limassol, Cyprus (applicant).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 762 428 is partially upheld, namely for the following contested goods:

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

2.        European Union trade mark application No 15 423 064 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 423 064. The opposition is based on, inter alia, European Union trade mark registration No 12 095 411. The opponent invoked Article 8(1)(b), 8(4) and 8(5) 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 Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 095 411.

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

Class 28:         Toy sporting apparatus; sports games.

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

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 broad 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; infants' footwear; footwear for women; leather shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

Contested goods in Class 28

The contested toy sporting apparatus; sports games do not have anything in common with the opponent’s goods in Class 25 and the opponent’s services in Classes 41 and 44 as far as all the relevant factors are considered. The opponent’s clothing in Class 25 are primarily intended to cover the human body (including sport clothing) whilst toy sporting apparatus and sport games are primarily for entertainment by sport activities. Therefore, they are very different in nature to the contested goods. Moreover they have very different purposes and methods of use. Considering the opponent’s services, they are not only of different natures (they are intangible whereas the goods are tangible), but as they have different functions, and even if there is a certain complementarity between some of them (e.g. the contested toy sporting apparatus; sports games vs. the opponent’s entertainment activities), they differ in all remaining relevant factors as they do not coincide in producers/suppliers, distribution channels and the public targeted. Moreover, they are not in competition to each other. For all these reasons, they 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 are directed at the public at large.

The degree of attention is considered average.

3. The signs

	BDA SPORT
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 element ‘BDA’ that the signs have in common has no meaning for the relevant public and is, therefore, distinctive for the goods/and services in question covered by both the signs.

The contested sign is a word mark consisting of the words ‘BDA SPORT’.

The element ‘SPORT’ of the contested sign will be understood in a substantial part of the European Union as it is a very basic word in number of languages, for instance, in English, German or Polish. As it is descriptive for the relevant goods in Class 25 (e.g. clothing, headgear and footwear) and it indicates, for instance, that they are designed for sport activities, it is non-distinctive for these goods.

The earlier figurative mark consists of the lettering BDA in bold upper case letters with a depiction of a leaf inscribed in the letter ‘D’, which although may be associated with a nature or something natural, in principle does not convey any clear semantic content in relation to the relevant goods in Class 25, and as such is distinctive.

The earlier mark has no elements that could be considered clearly more dominant   or distinctive than other elements.

Regarding the figurative elements, it has to be recalled 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). Accordingly, the leaf device will have secondary role in the consumer’s perception of the earlier mark.

Moreover, 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. The coinciding letters ‘BDA’ constituting the earlier mark will be immediately noticed by the relevant public as the first verbal element of the contested sign. This is even truer as the second word element of the contested sign, ‘SPORT’, is non-distinctive.

Visually, the signs coincide in the letters ‘BDA’ being the only verbal element of the earlier sign, and the initial and only distinctive element of the contested sign. However, they differ in the non-distinctive word ‘SPORT’ of the contested sign and the leaf device of the earlier mark which are not present in the opposite mark.

Therefore, the signs are visually similar to an average 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 the same letters ‛B/D/A’, present identically in both signs. The pronunciation differs in the sound of the non-distinctive word ‛SPO/RT’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to a degree above average.

Conceptually, neither of the signs has a meaning as a whole. Although, the non-distinctive word ‘SPORT’ in the contested sign will evoke a concept according to its meaning, and the leaf device in the earlier mark will evoke a concept thereof, attention of the relevant public will still be attracted by the additional distinctive element ‘BDA’ in each of the signs.

Therefore, the signs 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.

In its observations of 19/01/2017 the opponent did not claim that the earlier trade mark enjoys enhanced distinctiveness. However, in the notice of opposition (31/08/2016) reputation under 8(5) EUTMR has been claimed. Therefore, the documents submitted as ‘Attachments F1’ and ‘F2’ to the mentioned observations are assumed to be filed as evidence in support of such a claim.

According to the opponent the earlier trade mark has a reputation as a result of its long standing and intensive use and enjoys a high degree of recognition among the relevant public in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, 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).

The opponent submitted the following evidence:

• Attachment F1: Extracts from the online networking service for professionals Linkedin listing  a number of individuals who are, as stated by the opponent, both nutritional advisors and fitness/personal trainers; (undated);
• Attachment F2: Extracts from the opponent’s website, which state that it is closely associated with sports and is a founder of the Sport and Exercise nutrition register, www.senr.org.uk, which is the only independent register for sports nutritionists in the United Kingdom; (undated).

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

First, and foremost, the Opposition Division notes that the documents filed either do not refer to the earlier trade mark in question (Attachment F1), or any mention of the trade mark in question is minimal (Attachment F2). Secondly, the extracts from Linkedin list a number of individuals (such as nutritional advisors and fitness/personal trainers) who are not associated with the trade mark. Therefore, they are irrelevant:

   

As regards the Attachment F2, although the trade mark as showed above appears in the printouts of the Sport and Exercise nutrition register, www.senr.org.uk, run by the Opponent, with the lettering ‘The Association of UK Dieticians’ it is much smaller and placed below the words ‘the Sport and Nutrition Register’ and its abbreviation ‘SENr’ which is in fact the subject of the website.

Therefore, this evidence cannot be regarded as meeting even the minimal level of evidentiary value for the purposes of assessment of reputation claimed, as it gives no information on relevant factors which prove whether the trade mark is reputed.

As a consequence, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

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 as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That assessment implies some interdependence between the relevant factors, and in particular a similarity between the signs and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the signs, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18, 19).

All of the contested goods in Class 25 are found to be identical and the remaining contested goods in Class 28 are found to be dissimilar to the opponent’s goods and services. The earlier trade mark enjoys a normal degree of distinctiveness. The general’s public degree of attention is average.

It should be pointed out 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).

Moreover, taking into account that the conflicting goods are in Class 25, the following should be emphasised. Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the visual difference between the signs caused by the graphical representation of the earlier mark and the additional verbal element ‘SPORT’ in the contested sign is not particularly relevant when assessing the likelihood of confusion between them.

Due to the circumstances described above, the signs must be considered visually similar to an average degree, and aurally similar to a degree above average. It is clear that in the consumer’s mind some links between the marks will certainly be established. The earlier trade mark ‘BDA’ is fully reproduced in the contested sign as its first element. The additional non-distinctive element of the contested sign ‘SPORT’ and figurative element of the earlier mark cannot alter the overall impression created by both signs. As mentioned in the section c) the figurative element has a little distinguishing power as it serves only for embellishment of the earlier mark.

Indeed, 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 according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

As 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, and this can be the result of existence of the marks in question on the same market, it is concluded that the contested trade mark must be rejected for the goods in Class 25 found to be identical to those of the earlier trade mark as there is a likelihood of confusion on the part of the relevant public (inter alia, English-, German-, Polish-speaking part).

The rest of the contested goods (Class 28) 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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

To determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. Since no relevant evidence in support of such factors needed to prove reputation claimed have been filled, it is concluded that the trade mark in question is not reputed in the European Union.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar this ground is considered.

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

The opponent also based its opposition on the word and figurative non-registered trade marks, respectively:

• ‘BDA’, and

• 

used in the course of trade in United Kingdom and Ireland  for the following goods and services:

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.

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 shall 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.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted 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 shall 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)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection of that right.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide the EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

On 15/09/2016, 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 20/01/2017.

The opponent did not submit any evidence of use in the course of trade of the earlier signs on which the opposition under Article 8(4) EUTMR is based.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

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 these grounds are 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

Andrea VALISA

Birgit FILTENBORG

María Clara IBÁÑEZ FIORILLO

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.