OPPOSITION No B 2 750 522

Speedo Holdings B.V., Claude Debussylaan 24, 1082 MD Amsterdam, the Netherlands, (opponent), represented by Stevens Hewlett & Perkins, 1 St Augustine's Place, Bristol  BS1 4UD, United Kingdom (professional representative)

a g a i n s t

Fuse SRL, Via Nuova, 9, 41011 Campogalliano, Italy (applicant), represented by Ing. C. Corradini & C. S.R.L., Via Dante Alighieri, 4, 42121 Reggio Emilia, Italy (professional representative).

On 31/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 750 522 is upheld for all the contested goods, namely

Class 25:         Clothing; Footwear; Hats; Tee-shirts; Printed t-shirts; Sweat shirts; Hooded sweatshirts; Jerseys [clothing]; Undershirts; Sports jerseys.

2.        European Union trade mark application No 15 397 425 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of goods and services of European Union trade mark application No 15 397 425 for the figurative mark , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 12 444 352 of the word mark ‘BIOFUSE’. 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

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Clothing; footwear; headgear; swimwear; belts.

The contested goods are the following:

Class 25: Clothing; Footwear; Hats; Tee-shirts; Printed t-shirts; Sweat shirts; Hooded sweatshirts; Jerseys [clothing]; Undershirts; Sports jerseys.

Clothing; footwear; hats are identically contained in both lists of goods.

The contested tee-shirts; printed t-shirts; sweat shirts; hooded sweatshirts; jerseys [clothing]; undershirts; sports jerseys are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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 average.

3. The signs

BIOFUSE
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.

The common element ‘FUSE’ will not evoke a concept from the perspective of public in certain territories, for example, in Spain and Germany, where at the same time ‘BIO’, at the beginning of the earlier mark, will immediately evoke the concepts associated with the characteristics of the relevant goods, as will be explained in more detail below. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish- and German-speaking part of the public.

The fact that the earlier mark appears in title case, whereas the contested sign is written in upper case is irrelevant for the comparison. This is because the protection offered by the registration of a word mark (as is in the case of the earlier mark) applies to the word itself and not its written form.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

It can be reasonably assumed that the public in the relevant territory will readily discern the prefix ‘BIO’, in the contested sign, as referring to ‘biological’ or ‘life’, and also to ‘environmental sustainability’. This is justified by the fact that nowadays it is widely used in commerce to refer to organic and/or environmentally friendly products. This has also been confirmed by the General Court, which held that the term ‘bio’ is used on the market to indicate that the goods in question contribute to environmental sustainability, that they use natural products or that they have been produced organically (10/09/2015, T-610/14, BIO organic, EU:T:2015:613, § 17 and the case-law cited therein).

Bearing in mind the nature of the goods in question, this prefix is weak for all of these goods, as it only indicates that they are produced from natural materials or using environment friendly methods. Therefore, the impact of this prefix on the perception of the relevant public is limited.

Consequently, although generally the beginning of a sign is more likely to attract the consumer’s attention than its ending, the fact remains that when the consumer is used to seeing a certain prefix in relation to certain kinds of goods or services, it tends to pay greater attention to the remaining, distinctive elements of the mark.

The contested sign contains figurative elements.

However, 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).

The figurative element on the left of the contested sign is composed of two intertwined circles, one with a black background and a smaller one with a white background. This combination of two simple geometric shapes does not convey any clear and unambiguous message. There is also a little and barely perceptible star like element at the top right upper side of the word ‘fuse’. It may be seen as an asterisk symbol (*) which in the text is used for cross-reference, indication of an ungrammatical expression, etc. However, since the word ‘FUSE’ of the contested sign has no meaning for the relevant public and there is no other cross-referenced text in the sign, this element conveys no apparent meaning. Furthermore, due to its size, this element is less eye-catching than the other elements, which dominate the contested sign.

Visually, the relevant consumers will pay more attention to the coincidence in the signs’ common and distinctive element ‘FUSE’ rather than to the differentiating element ‘BIO’ of the earlier mark, which will not be perceived as an indication of the origin of the goods or to the figurative elements which are not particularly elaborate and have less impact. In addition, despite being graphically represented, the letters of the word ‘FUSE’ in the contested sign are in a rather standard typeface.

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 string of letters ‛FUSE’, composing the entire earlier mark and differ in the sound of the letters composing the meaningful element ‘BIO’ which has less impact as it will be associated with specific characteristics of the goods.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs, as a whole, has a meaning for the public in the relevant territory. Although the first word of the contested sign, ‘BIO’ will evoke a concept, it does not serve to distinguish the marks from a conceptual point of view, as it will be understood as indicating that the goods offered under this mark contribute to environmental sustainability, that they are made of natural products, etc. As explained above, the figurative elements will not be associated with clear and unambiguous meaning. Therefore, the conceptual comparison does not influence the assessment of similarity of the marks.

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.

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 in question 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 in the mark of an element with limited distinctiveness, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Since the goods are identical and the signs coincide in the distinctive element of the earlier mark and differ in the elements with less impact, the consumers may be led to believe that that the goods covered by the marks are from the same or economically linked undertakings.

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.

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 that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The applicant refers to previous decisions of the Office to support its argument that, in view of the differences between the signs, there is no likelihood of confusion irrespective of the results of the comparison of goods. However, in the present case it is concluded that the signs are similar. Consequently, this argument of the applicant must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Spanish- and German-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 12 444 352. It follows that the contested trade mark must be rejected for all the contested goods.

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

Alexandra APOSTOLAKIS

Justyna GBYL

Begoña URIARTE VALIENTE

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.