OPPOSITION DIVISION
OPPOSITION No B 2 463 795
Wolverine World Wide, Inc., 9341 Courtland Drive, N.E., Rockford, Michigan 49351,
United States of America (opponent), represented by FJF Legal, C/ Velázquez, 78 –
5º Izq., 28001 Madrid, Spain (professional representative)
a g a i n s t
Rajesh Motilal Kalwani, ul. Skalista 19, 62-080 Sierosław, Poland (applicant).
On 11/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 463 795 is upheld for all the contested goods, namely:
Class 25: Headgear; footwear; clothing.
2. European Union trade mark application No 13 101 845 is rejected for all the
contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
The opponent filed an opposition against some of the goods of European Union trade
mark application No 13 101 845 , namely against all the goods in Class 25.
The opposition is based on European Union trade mark registration No 211 664
. 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
Decision on Opposition No B 2 463 795 page: 2 of 6
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
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear; insoles for footwear; boots, shoes and
slippers; headwear; hats, hats made of pigskin, caps, gloves, belts
and coats; outerwear including coats, jackets, dresses, blouses, skirts,
trousers, shirts, sweaters; suits, overcoats, scarves and hoods; ready
made clothing; sportswear; articles of clothing made of leather; T–
shirts, tank tops, tennis shirts, turtlenecks, sweat shirts, hooded sweat
shirts, sweat tops and pants, tops, shorts, pants, sweat pants,
leggings, sweat suits, coveralls, overalls, jogging suits, swimsuits,
sunsuits, cabanas being swim trunks with matching jackets, tights, leg
warmers, socks, stockings, undergarments; tops windsuits, sweater
jackets, raincoats, parkas, hooded jackets, nylon jackets; long and
short sleeve tops, legging sets, tank suits and leisure jackets;
garments; seat (sweat) socks; athletic shoes; overshoes/galoshes;
hosiery; pantihose; any of the aforesaid goods for men, women,
youths, children, babies and infants; infants’ and toddlers’ crawlers
and creepers; parts, fittings and accessories for the aforesaid goods.
The contested goods are the following:
Class 25: Headgear; footwear; clothing.
Headgear; footwear; clothing are identically contained in both lists of goods.
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 found to be identical are directed at the public at
large.
The degree of attention is considered average.
Decision on Opposition No B 2 463 795 page: 3 of 6
c) 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).
The unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
Therefore, the Opposition Division finds it appropriate to focus the comparison of the
signs on the English-speaking part of the public, such as the public in the United
Kingdom, Ireland and Malta, for which the coinciding element ‘bounce’ is meaningful.
The earlier mark is a figurative mark composed of the word ‘BOUNCE’ in black upper
case letters. Although the typeface is fairly standard, the letter ‘O’ is above the
baseline of the other letters.
The contested sign consists of the word ‘Bounce’ in standard blue title case letters
and, above it, a figurative element consisting of five coloured circles (four in blue and
one in red) on different levels and in different sizes. It is reasonable to assume that,
at least for a significant part of the public, this element will bring to mind the concept
of a ‘bouncing ball’ in connection with the word ‘bounce’.
The word ‘bounce’, included in both signs, will be understood by the relevant public
as ‘the action of rebounding from an impact’ (information extracted from Oxford
English Dictionary on 02/10/2017 at
https://www.collinsdictionary.com/dictionary/english/bounce). As it is not descriptive,
allusive or otherwise weak for some of the relevant goods, namely headgear and
clothing, it is distinctive for those goods. As regards the remaining goods, namely
footwear, although the meaning of this element might allude in some way to features
of the goods (e.g. cushioning in running shoes), the Opposition Division finds that this
does not render the sign non-distinctive for those goods. If the allusion to the goods
is sufficiently imaginative or remote, the mere fact that there is an allusion to
Decision on Opposition No B 2 463 795 page: 4 of 6
characteristics of the goods may not materially affect distinctiveness. Therefore, the
element ‘bounce’ is deemed to have a normal degree of distinctiveness for footwear.
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). In the present case, consumers will focus their attention on the
verbal elements forming the signs, rather than on their stylisation or the figurative
element in the contested sign.
Neither of the signs has any element that could be considered clearly more dominant
than other elements.
Visually, when comparing signs in terms of their word elements, the Office considers
signs similar insofar as they have in common a significant number of letters in the
same position and when they are not highly stylised or when they are stylised in the
same or a similar manner. Similarity may be found despite the fact that the letters are
graphically portrayed in different typefaces, in italics or bold, in upper or lower case or
in colour (18/06/2009, T-418/07, LiBRO, EU:T:2009:208; 15/11/2011, T-434/10,
Alpine Pro Sportswear & Equipment, EU:T:2011:663; 29/11/2012, C-42/12 P, Alpine
Pro Sportswear & Equipment, EU:C:2012:765, appeal dismissed).
In this case, the signs coincide in the word ‘bounce’, the only verbal element in each
sign.
However, they differ in their typefaces and colours, as well as in the figurative
element of the contested sign, which, as explained above, will have less impact on
the relevant public than the coinciding verbal element.
Given the above, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the word ‛bounce’,
present identically in each sign as its only verbal element. As a result, the signs are
aurally identical.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. Both signs will be perceived as meaning ‘the action
of rebounding from an impact’. In addition, a significant part of the relevant public will
perceive the figurative element in the contested sign as depicting a bouncing ball,
reinforcing the concept that the signs have in common. Therefore, the signs are
conceptually identical.
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 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.
Decision on Opposition No B 2 463 795 page: 5 of 6
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.
e) Global assessment, other arguments and conclusion
The goods are identical. They target the public at large, and the degree of attention is
average. The distinctiveness of the earlier mark must be seen as normal.
The conflicting signs are visually highly similar and aurally and conceptually identical
on account of the coinciding word ‘BOUNCE’, which constitutes the entire earlier
mark and the only verbal element of the contested sign.
The differences between the signs are limited to the stylisation and colours, as well
as the additional figurative element of the contested sign, which is, however, less
distinctive than the verbal element and only reinforces the concept associated with
the word ‘bounce’. In any event, consumers generally refer to signs by their verbal
elements and the signs’ verbal elements are the same in the present case.
The differences between the signs, described above, are not sufficient to rule out a
likelihood of confusion. Furthermore, 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).
Indeed, in the present case, consumers may legitimately believe that the contested
sign is a new stylised version or a brand variation of the earlier mark, coming from
the same undertaking or from economically-linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public. As stated above in section c) of this decision, a
likelihood of confusion for only part of the relevant public of the European Union is
sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 211 664. It follows that the contested sign must be
rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the holder is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
Decision on Opposition No B 2 463 795 page: 6 of 6
The Opposition Division
María Clara
IBÁÑEZ FIORILLO
Birgit
FILTENBORG
Michele M.
BENEDETTI – ALOISI
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.