OPPOSITION No B 2 537 325
Antonio Riera Farre, Serra, 8, 08711 Odena (Barcelona), Spain (opponent), represented by Asociados Pymark S.L., Londres, 67, 2º, 3º, 08036 Barcelona, Spain (professional representative)
a g a i n s t
Elten GmbH, Ostwall 7-9, 47589 Uedem, Germany (applicant), represented by Rösler · Rasch · van der Heide & Partner Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bodenseestr. 18, 81241 München, Germany (professional representative).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 537 325 is upheld for all the contested goods, namely:
Class 25: Footwear, in particular occupational footwear; protective sports shoes.
2. European Union trade mark application No 13 593 363 is rejected for all the contested goods. It may proceed for the uncontested goods in Classes 9 and 26.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 593 363, namely against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 12 123 444. The opponent invoked Article 8(1)(a) and (b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 123 444.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 25: Sportswear; football boots, studs for football boots; sports footwear; shirts, blouses; blouse, wind jackets, parkas, jackets [clothing], trouser, gloves, socks, stockings, underwear, pyjamas, night gowns, vests, capes, shawls, coats, scarfs, pullovers, skirts, dresses, neckties, belts, suspenders, swim trunks; caps [headwear], waterproof clothing, anoraks, sporting and gymnastic wear, included in this class; housecoats; stoles, headscarves; suits, chemises, footwear and headgear; ready-made knitted clothing.
The contested goods are the following:
Class 25: Footwear, in particular occupational footwear; protective sports shoes.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The contested footwear, in particular occupational footwear (reference is made to the interpretation of the term ‘in particular’ given above) is also contained in the list of goods of the earlier trade mark, and is, therefore, identical.
The contested protective sports shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.
- 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 and sport professionals such as athletes. The degree of attention is considered average.
- The signs
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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 earlier mark is a figurative mark which contains a black bold italic letter ‘E’ portrayed on a dark grey rhomboid with a top left corner and bottom right corner being cut off.
The contested sign is a figurative sign consisting of a white bold italic letter ‘E’ placed on a black rhomboid with rounded corners and white outline; all the elements are inside of a light grey rectangle.
The letter ‘E’ that the signs have in common is considered to have a normal degree of distinctiveness in relation to the relevant goods in Class 25, as this letter is not descriptive, allusive or otherwise related to these goods.
In its observations of 12/02/2016, the applicant argues that the earlier trade mark has a low distinctive character given that there are many European Union trade marks that include the letter ‘E’ and, furthermore, this letter is used within a common system in the United Kingdom for the designation of the width of shoes. In support of its arguments, it refers to many EU trade mark registrations and to an article from Wikipedia concerning shoe size dated 08/02/2016. Firstly, when it comes to the applicant’s reference to other trade mark registrations including the letter ‘E’, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the letter ‘E’. As regards the applicant’s argument on the low inherent distinctiveness of the letter ‘E’, it must be pointed out that even though some professionals in the footwear industry may be aware of the meaning mentioned by the applicant (i.e. a system of shoe width in the United Kingdom), this association is rather unlikely to be made by the relevant public in the present case, consisting, inter alia, of the public at large. Under all of these circumstances, the applicant’s claims regarding the low distinctive character of the letter ‘E’ must be set aside.
In addition, the General Court has stated in a number of cases that a trade mark containing a single letter or a single numeral may indeed be inherently distinctive (judgments of 08/05/2012, T-101/11, G, EU:T:2012:223, § 50; 06/10/2011, T-176/10, seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T-378/12, X, EU:T:2013:574, § 37-51).
The figurative elements inside of which the letter ‘E’ appears in each sign consist of simple geometrical shapes. Given that these shapes perform only a decorative function within the signs, they are less distinctive than the coinciding letter ‘E’. Furthermore, it must be recalled that when signs consist of both verbal and figurative components (as both signs under comparison do), 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).
The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs are similar to the extent that they contain the letter ‘E’ which has a central position therein. Although the colour of the coinciding letter is different, black in the earlier mark versus white in the contested sign, its font is quite alike given that both letters are depicted in a bold italic upper case typeface.
The signs differ in all of their remaining elements, namely in the geometrical shapes. However, some similarities between those elements cannot be completely denied. More specifically, the shape of the rhomboid in which the letter ‘E’ is depicted in each sign and the use of black and grey contribute to the visual similarity between the signs, though the impact of these elements is limited for the reasons given above.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, both signs will be pronounced in the same way as the letter ‘E’.
Therefore, the signs are aurally identical.
Conceptually, the public in the relevant territory will perceive the letter ‘E’ present in both signs as the particular letter of the Latin alphabet.
As both signs will be associated with the same concept, they 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.
- 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.
According to the opponent, the earlier mark has been extensively used and enjoys 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 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 relevant goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the less distinctive element, as stated above in section c) of this decision.
- 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 (recital 8 of the EUTMR). 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).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Account must also be 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).
As concluded above, the contested goods are identical to the opponent’s goods; the relevant public consists of the public at large and sport professionals; the degree of attention is average; the earlier mark has a normal degree of inherent distinctiveness.
The signs in conflict are visually similar to an average degree and aurally and conceptually identical, as explained in detail above in section c) of this decision.
The differences between the signs are confined, firstly, to the colouring of the letter ‘E’ that the signs have in common. However, this difference will, contrary to the applicant’s opinion, highly likely go unnoticed by the consumers given that it is common on the market to use black and white variations of the signs displayed against a contrasting background. The signs further differ in some of their figurative elements but these have a limited impact on the consumer’s perception, as outlined above. Consequently, all these differences are, in the Opposition Division’s opinion, not sufficient to counteract the similarities between the signs.
Based on an overall assessment, and taking into account the principle of imperfect recollection mentioned above, the Opposition Division concludes that there is a likelihood of confusion on the part of the public, and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 123 444.
It follows from the above that the contested sign must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier right, namely European Union trade mark registration No 12 123 444, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a).
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 applicant 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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.
The Opposition Division
| Vít MAHELKA | Martin MITURA | Ric WASLEY |
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.