OPPOSITION No B 2 764 143

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, 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

Far Running S.L., Sant Pere Martir, 14 Bajos, 08012 Barcelona, Spain (applicant), represented by Isern Patentes y Marcas S.L., Avenida Diagonal 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

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

DECISION:

1.        Opposition No B 2 764 143 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 15 348 238. The opposition is based on European Union trade mark No 13 760 095. 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 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 on which the opposition is based are the following:

Class 18: Briefcases; Sling bags for carrying infants; Sling bags for carrying infants; Beach bags; Baggage; Briefcases; Net bags for shopping; Shopping bags; Baggage; Collars for animals; Hand bags; Handbag frames; Bags (Game -) [hunting accessories]; card cases(notecases); Sling bags for carrying infants; Garment bags for travel; Vanity cases, not fitted; Credit card cases [wallets]; Baggage; Rucksacks; Umbrella sticks; Key bags; Satchels; Satchels; Casual bags; Wheeled shopping bags; Haversacks; All the aforesaid goods being made of leather or imitations of leather; Chamois leather; Not for cleaning purposes; Kid; Cases, of leather or leatherboard; Cases, of leather or leatherboard; Leather (Imitation —); Leather, unworked or semi-worked; Straps (Leather -); Imitation leather; Straps for soldiers' equipment; Trimmings of leather for furniture; Furniture coverings of leather; Travelling sets (leather ware); Boxes of leather or leatherboard; Bags (envelopes, pouches) of leather, for packaging, empty tool bags of leather; Animal skins, hides; Trunks and travelling bags; Umbrellas; Parasols; Walking sticks; Whips; Harness; Saddlery.

Class 24: Textiles and textile goods, included in class 24; Bed covers; Table covers.

Class 25: Clothing; Footwear; Headgear.

Class 27: Mats; Mats; Mats; Linoleums and other materials for covering floors; Wall hangings (non-textile).

Class 28: Toys; Toys; Gymnastic and sporting articles (included in class 28); Decorations for Christmas trees.

The contested goods and services are the following:

Class 25: Clothing for practising sports, namely trousers, T-shirts, socks, tights, sweatshirts, vests, gloves, caps, hats and jackets, for running; Jogging suits.

Class 35: Retailing and wholesaling in shops and via the internet of clothing for practising sports, namely trousers, T-shirts, socks, tights, sweatshirts, vests, gloves, caps, hats and jackets for running, clothing for jogging, sports bags, mugs.

Before comparing the goods and services, an interpretation of the wording of the list of goods and services of the contested mark is required to determine its scope of protection. In particular, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 goods are different types of clothing or headgear, which are contained in the broader terms clothing or headgear of the earlier mark. Hence, these goods are identical.

Contested goods in Class 35

It is established case law that retail services concerning the sale of particular goods are similar to some extent to these particular goods (05/05/2015, T-715/13, ECLI:EU:T:2015:256, ‘Castello’, § 33). Although the nature, purpose and method of use of the goods and services are not the same, they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. The same principles are applicable to the wholesale services.  

Considering that the goods to be sold under retailing and wholesaling in shops and via the internet of clothing for practising sports, namely trousers, T-shirts, socks, tights, sweatshirts, vests, gloves, caps, hats and jackets for running, clothing for jogging are identical to those of the opponent (see previous comparison of Class 25), the listed contested services are similar to a low degree to the goods clothing or headgear of the earlier mark.

As regards retailing and wholesaling in shops and via the internet of sports bags, it must be pointed that sports bags overlap with rucksacks of the goods of Class 18 of the earlier sign, since rucksacks are among the most common types of sports bags. In view of this, the goods rucksacks are considered to be identical to sports bags. Accordingly, upon taking into account the above described principle, retailing and wholesaling in shops and via the internet of sports bags are considered similar to a low degree to the goods rucksacks of the earlier mark.

The services retailing and wholesaling in shops and via the internet of mugs are dissimilar to the goods of the earlier mark, since mugs are not among the goods, included in its scope of protection.

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 found to be identical, similar to a low degree and dissimilar, are mainly directed at the public at large. The degree of attention is considered to be average.

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).

The word element ‘FAIR’ of the earlier sign in white colour is centrally positioned in a black rectangular form. In view of its position, the size of the letters and the contrast of the white colour against black background, it is ‘FAIR’ that is the dominant element of the sign. It should be noted that the white rectangular frame with a stylised globe device in the middle of the upper side of the rectangle, also in white, even though not the most eye-catching elements of the sign, would be noticed and remembered by the consumers due to their position, size and the contrast between white and black.  

‘FAIR’ in the earlier sign has a meaning in part of the relevant territory. In particular, in addition to its meaning in English, inter alia of ‘just, appropriate in the situation; treating people equally; white, blonde’, in German the word has the meaning of ’just’. It could further be understood in other parts of the European Union due to the common use of the English phrase ‘fair play’ in relation to sports and also more generally in relation to competitions, as well as the phrase ‘fair trade’. It is not excluded that the word is not associated with any meaning by part of the public. Irrespective of the meaning which may be attributed to ‘fair’ by the relevant public, as well as for those who see it as meaningless, the word is not descriptive or allusive of the characteristics of the goods and services in question and would therefore has a normal degree of distinctiveness.

In this regard, it should also be remembered 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). This premise applies to both of the marks at issue.

The contested sign comprises of the word ‘FAR’ written in red colour. The red line underlying ‘FAR’ would be perceived as a decorative element and would not attract the consumer’s attention. Accordingly, it is the element ‘FAR’ that is the most eye-catching element of the sign.

The word ‘FAR’ has a meaning in English language of ‘not close; at great distance’. It also has a meaning in other European Union languages, for example in French ‘far Breton’ is a specific type of cake, in Swedish and Danish it means ‘father’, in Romanian – ‘lighthouse’. None of the possible meanings of the word is linked in any way to the goods and services in question. Additionally, for part of the public the word does not have any meaning. Therefore, ‘FAR’ has a normal degree of distinctiveness.

Visually, the signs coincide in the first and second letters of their word elements ‘FA’ and the last letter ‘R’, which is the fourth letter in the earlier mark and the third letter in the contested sign. The letter ‘I’ is the third letter of the word element of the earlier sign, which does not have its counterpart in the contested mark. In this respect, the argument of the opponent that the contested mark is entirely contained in the earlier one may not be accepted by the Opposition Division. Even if it is assumed that the opponent refers to the word elements of the marks, such statement again would not be correct. The fact that the letters of a word element are present in another word element in a different sequence or different places, does not mean that the former is contained in the latter. It is a separate element (component) that is taken into account and the separate letters of a word do not represent separate elements.

The signs differ in their colours, where in the earlier mark the white and black contrast would not remain unnoticed, while the contested sign is represented in red, which is also a colour that attracts the attention. Further, the earlier sign contains a white-contoured rectangle with a globe on the upper side, and a stylised representation of a map of the Earth in the background, which do not have their counterparts in the contested sign.

Even though the signs coincide in the first, second and last letter of their word elements, they differ in the length of these elements. In this sense, the length of the signs may influence the effect of the differences between them. The brevity of the marks at issue enables consumers to better grasp the variations in their spelling. (13/02/2007, T-353/04, CURON, ECLI:EU:T:2007:47, § 70) and small differences may frequently lead to quite different visual impression. In the present case, the difference in the number of letters forming the marks is clearly perceived visually, since the contested mark is a short sign (i.e. three letters), and the other one is formed by four letters. In view of this, taken together with the above identified differences in the figurative elements, it is considered that the marks are visually similar to a low degree.

Aurally, the contested mark will be pronounced [far]. Depending on the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced [feər] by the English-speaking public, [fer] by the French-speaking public and [fa – ir] by another part of the public. Accordingly, the pronunciation of the signs coincides in the first and last sound and possibly in their second sound [A]. However, for the cases where the signs will coincide in the pronunciation of their first and second letter [FA], they will differ in the number of syllables they have, as there will be one in the contested sign and two in the earlier one. It is to be remembered that with short signs, like the contested one and signs of four letters, they are not difficult to read and each one is likely to be easy to recall. Accordingly, there is an aural similarity to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the word elements of the marks. With respect to the earlier sign, the concept of the Earth linked to the figurative elements should also be of relevance. For the part of the public for whom the word elements of the signs are meaningless, it will only be the concept of the Earth in the earlier mark that will allude a concept. As the signs will be associated with different meaning, or one of them with no meaning, the signs are conceptually not similar.

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. In the present case, the earlier trade mark as a whole has 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 mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion 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).

It is established case law that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Taking into consideration that the public’s attention focuses on all letters of short signs; the central elements are as important as the beginning and endings; consumers tend to notice even small/single differences, which may suffice to exclude similarity; even a difference in one letter may be sufficient to distinguish signs.

Whereas the average consumer must generally place his trust in the imperfect recollection of the marks that he has kept in his mind, the shorter the signs are, the less imperfect their recollection is, because there are fewer elements that must be remembered.

In the case at hand, the word element of the contested sign is a short sign comprising of three letters and the one of the earlier mark contains four letters, i.e. it is sufficiently short so that all of its elements are noticed and remembered by the consumers. These elements coincide in three out of four letters and differ in the letter ‘I’ in the earlier mark, a relevant factor to consider when evaluating the likelihood of confusion between the signs. The earlier mark also contains figurative elements, which even though not dominating the overall impression created by the sign, are easily noticeable and is likely to be remembered by consumers with the concept of the planet Earth they imply.

The comparison of the goods and services found that they are partially identical, partially similar to a low degree and partially dissimilar. The goods and services are directed at the public at large who show average degree of attention. The comparison of the signs found that they are visually similar to a low degree, aurally similar to an average degree and conceptually not similar.

In this respect, 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 established low degree of visual similarity between the signs is particularly relevant when assessing the likelihood of confusion between them, a premise which also applies to retail services in relation to goods such as shoes and bags. It is considered that this factor is decisive and outweighs the identified aural similarities.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, 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.