OPPOSITION No B 2 502 923

Gaston J. Glock style LP, 3842 Highlands Parkway, Postbox D6, Smyrna, Georgia 30082, United States of America (opponent), represented by Mishcon de Reya LLP, Africa House, 70 Kingsway, London WC2B 6AH, United Kingdom (professional representative)

a g a i n s t

Gocotex S.L., Calle Perfumeria, 21 – Nave 8 – Pol. Ind. La Mina, 28770 Madrid, Spain (applicant), represented by Sonia Del Valle Valiente, c/ Miguel Angel Cantero Oliva, 5, 53, 28660 Boadilla del Monte (Madrid), Spain (professional representative).

On 16/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 502 923 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 13 459 557. The opposition is based on European Union trade mark registrations No 9 992 371, No 9 992 538, No 10 279 065, No 10 279 172 and No 11 870 235. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

On admissibility

According to Rule 15(1) EUTMIR, a notice of opposition may be entered on the basis of one or more earlier marks within the meaning of Article 8(2) EUTMR (earlier marks) and/or one or more other earlier rights within the meaning of Article 8(4) EUTMR (earlier rights), provided that the earlier marks or earlier rights all belong to the same proprietor or proprietors. If an earlier mark and/or an earlier right has more than one proprietor (co-ownership), the opposition may be filed by any or all of them.

In the present case, the notice of opposition was filed by more than one opponent. However, the right to file an opposition jointly with other opponents applies only in cases where the opponents have a certain relationship, namely:

• that they are co-owners of the earlier right(s) on which the opposition is based, or
• that the opposition is filed by the owner or co-owner of an earlier mark or right together with one or more licensees of these earlier marks/rights.

The notice of opposition did not indicate the relationship of the opponents (co-ownership or owner/licensee), nor did it appoint only one opponent from among those listed.

According to Rule 17(4) EUTMIR, if the notice of opposition does not comply with the provisions of Rule 15 EUTMIR (other than those referred to in paragraphs 1, 2 and 3 of Rule 17 EUTMIR), the Office shall inform the opponent accordingly and shall invite him to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before this time limit expires, the Office shall reject the opposition as inadmissible.

The Office informed the opponent of the deficiency in its notification dated 05/10/2015. The opponent was set a time limit of two months, until 10/12/2015, to remedy the deficiency, namely to either clearly indicate that the opponents were co-owners or owner/co-owner and licensee of the earlier rights on which the opposition is based or, if this was not the case, appoint one opponent from among those listed.

The opponent did reply within the prescribed time limit; it submitted evidence of the recordal submitted to the Office indicating that two of the earlier rights had been totally transferred to the owner of the other three and requested that the opposition be maintained solely under the name of the owner of all five earlier rights, namely Gaston J. Glock style LP. Therefore, the deficiency was remedied.

On proof of use

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade marks No 9 992 371, No 9 992 538, No 10 279 065 and No 10 279 172.

In the present case the contested trade mark was published on 05/01/2015.

Earlier European Union trade marks No 9 992 371, No 9 992 538, No 10 279 065 and No 10 279 172 were registered on 25/11/2011, 08/03/2014, 08/11/2015 and 23/02/2012, respectively. Therefore, as indicated by the Office on 30/08/2016, the request for proof of use is inadmissible because the earlier trade marks had not been registered for at least five years at the date of publication of the contested trade mark application.

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 9 992 371.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9:	Special glasses for shooting, hunting, and sports; protective glasses; sports’ glasses; sun glasses; binoculars; protective ear plugs; telescopes; warning signs; bullet backstop; telescopic sights and scopes for firearms.
Class 13:	Rifle bags, gun bags.
Class 18:	Sports bags; athletic bags; back packs; ruck sacks; travel bags; duffle bags; shooting and hunting bags and accessory bags; umbrellas; shooting sticks.
Class 25:	Sportswear, shooting and hunting apparel, shirts, jackets, trousers, pants, shoes, boots, socks, caps, hats, knitted hats, beanies, headbands, shawls, headscarves, scarves, gloves, hand-warmers, undergarments, vests, pullovers, and ear muffs; belts; suspenders; braces.
Class 28:	Equipment for shooting, hunting, and sports, namely, firearm targets, hunting stands, clay pigeon/cock traps, duck carrousels, pigeon carrousels.
Class 35:	Advertising, marketing and promotional services; advertising, marketing and promotional services provided via the Internet; retail services connected with the sale of, special glasses for shooting, hunting, and sports, protective glasses, sports’ glasses, sun glasses, binoculars, protective ear plugs, telescopes, warning signs, bullet backstop, telescopic sights for firearms, aiming sights for firearms, sports bags, athletic bags, back packs, ruck sacks, travel bags, duffle bags, rifle bags, shooting and hunting bags, gun and accessory bags, umbrellas, shooting sticks, sportswear, shooting and hunting apparel, namely, shirts, jackets, trousers, pants, shoes, boots, socks, caps, hats, knitted hats, beanies, headbands, shawls, headscarves, scarves, gloves, hand-warmers, undergarments, vests, pullovers, and ear muffs, belts, suspenders, braces, equipment for shooting, hunting, and sports, namely, firearm targets, hunting stands, clay pigeon/cock traps, duck carrousels, pigeon carrousels; including any such retail services provided via shops, mail order or via the internet.

The contested goods and services are the following:

Class 18:	Leather and his/her imitations; animal skins, hides; trunks and travelling bags; blinders [harness]; handbag frames; harness; leather shoulder belts; chin straps, of leather; walking sticks; alpenstocks; baggage; trunks [luggage]; baggage; pouches; bags for campers; tool bags of leather, empty; gym bags; bags for climbers; baggage; shopping bags; hand bags; muzzles; bridoons; kid; cases, of leather or leatherboard; boxes of vulcanised fibre; leatherboard; straps (leather -); fastenings for saddles; coverings of skins [furs]; collars for animals; horse collars; laces (leather -); straps for soldiers’ equipment; harness traces; straps of leather(saddlery); leather leashes; stirrup leathers; straps for skates; imitation leather; leather, unworked or semi-worked; butts [parts of hides]; walking stick handles; stirrups; rubber parts for stirrups; cases, of leather or leatherboard; travelling sets [leatherware]; vanity cases, not fitted; key bags; bits for animals [harness]; sling bags for carrying infants; casings, of leather, for springs; umbrella covers; saddle cloths for horses; whips; skins of chamois, other than for cleaning purposes; saddlery; harness fittings; horseshoes; leather thread; haversacks; baggage; baggage; briefcases; horse blankets; rucksacks; sling bags for carrying infants; moleskin [imitation of leather]; coin purses; chain mesh purses; bags (nose -) [feed bags]; bags (game -) [hunting accessories]; umbrellas; parasols; curried skins; cattle skins; fur; briefcases; music cases; garment bags for travel; umbrella handles; furniture coverings of leather; muzzles; knee-pads for horses; head-stalls; covers for animals; riding saddles; hat boxes of leather; saddle cloths for horses; card cases (notecases); leather thongs; traces (harness); skin (goldbeaters’ -); gut for making sausages; valves of leather; umbrella or parasol ribs.
Class 24:	Textiles and textile goods, not included in other classes; fabric, impervious to gases, for aeronautical balloons; cotton fabrics; banners; flags, not of paper; brocades; buckram; elastic woven material; fabric for footwear; fabrics; fabric of imitation animal skins; adhesive fabric for application by heat; fabrics; diapered linen; traced cloths for embroidery; gummed cloth, other than for stationery; lining fabric for shoes.
Class 25:	Clothing, footwear, headgear; jackets; bath robes; espadrilles; non-slipping devices for footwear; sleep masks; frames (hat -) [skeletons]; motorists’ clothing; swimming costumes; bandanas [neckerchiefs]; sashes for wear; headbands [clothing]; bath slippers; bath sandals; overalls; dressing gowns; boas [necklets]; tights; berets; footmuffs, not electrically heated; pockets for clothing; lace boots; boots; ski boots; football boots; booties; knickers; babies’ pants [clothing]; socks; leg warmers; footwear; sports shoes; beach shoes; pants (am.); shirts; short-sleeve shirts; singlets; tee-shirts; bodices [lingerie]; footwear uppers; shirt yokes; hoods [clothing]; chasubles; waistcoats; shawls; goloshes; jackets [clothing]; fishing vests; heavy jackets; rainsuits; cyclists’ clothing; belts (money -) [clothing]; belts [clothing]; bonnets; slips [undergarments]; ready-made clothing; combinations [clothing]; heelpieces for footwear; ties; corsets; corsets; camisoles; collars; detachable collars; aprons [clothing]; sports shoes; masquerade costumes; petticoats; fur stoles; girdles; skirts; skorts; linings (ready-made -) [parts of clothing]; scarves; topcoats; gabardines [clothing]; gymnastic shoes; swimming caps; shower caps; ski gloves; gloves; fittings of metal for footwear; jumpers; leggings [trousers]; lingerie; liveries; sock suspenders; garters; garters; muffs [clothing]; maniples; mantillas; stockings; stockings (sweat-absorbent -); hosiery; mittens; miters [hats]; ear muffs [clothing]; footwear uppers; pants (am.); tights; pocket squares; neckerchiefs; parkas; slippers; shirt fronts; pelerines; pelisses; pinafores; furs [clothing]; pyjamas; soles for footwear; beachwear; gaiters; ponchos; knitwear [clothing]; collar protectors; pullovers; cuffs; tips for footwear; heelpieces for stockings; clothing of leather; clothing of imitations of leather; clothing for gymnastics; paper clothing; outerclothing; sweat-absorbent underwear; sandals; saris; sarongs; bathing drawers; pants (am.); dress shields; skull caps; headgear; top hats; hats (paper -) [clothing]; brassieres; soles for footwear; pullovers; heelpieces for footwear; studs for football boots; garters; headgear; wimples; togas; trouser straps; costumes; wetsuits for water-skiing; turbans; uniforms; veils [clothing]; gowns; clothing; welts for footwear; visors [headwear]; cap peaks; footwear; wooden shoes.
Class 35:	Business management; retailing, wholesaling and sale via global computer networks of clothing, footwear and clothing accessories, textiles and fabrics, handbags and backpacks and sporting, travel and hunting articles.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large (e.g. in the case of clothing) and also at business customers with specific professional knowledge or expertise (e.g. in the case of business management). The degree of attention may vary from average to higher than average, depending on the nature and type of the goods and services concerned, how technical they are, their level of sophistication and price, and the frequency with which they will be purchased.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a figurative mark consisting of a letter ‘G’ depicted at an angle in a slightly stylised white font inside a figurative device consisting of a red circle.

The contested sign is a figurative mark consisting of a figurative element to the left of the expression ‘GENERAL TACTIC’. This figurative element will be perceived, due to the presence of the word ‘GENERAL’, as a stylised letter ‘G’; it is depicted at an angle in a red font with its top and bottom ends cut off. It is followed by the words ‘GENERAL’ and ‘TACTIC’, centred and one above the other. These words are written in upper case in the same font as the letter ‘G’, but in grey. Each of the letters ‘A’ has a small red triangle under its vertex.

The element ‘GENERAL’ will be understood in the relevant territory as ‘a word used either to describe several items or activities when there are too many of them or they are not important enough to mention separately’ or ‘to refer to a senior officer in the armed forces, usually in the army’. ‘TACTIC’ will also be understood by most of the public in the relevant territory, as it is either used or very close to the equivalent words used in some of the official languages of the EU to refer to ‘the method that you choose to use in order to achieve what you want in a particular situation’ (information extracted from Collins Dictionary on 06/03/2017 at www.collinsdictionary.com). However, it cannot be excluded that the word ‘TACTIC’ might be perceived as fanciful by another part of the public.

In any case, both elements are considered to have a normal degree of distinctiveness for the entire relevant public, as they are not descriptive, allusive or otherwise weak for the relevant goods and services.

Neither of the signs has any element that could be considered clearly more distinctive or dominant (more eye-catching) than other elements.

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 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. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, both signs include a letter ‘G’, which is depicted at an angle and in a similar font. However, they differ in the angle at which and the colour in which the letter ‘G’ is depicted. Moreover, in the contested sign, the top and bottom ends of the letter are cut off. The signs also differ in the figurative device of the red circle, present in only the earlier mark, and in the words ‘GENERAL TACTIC’, present in only the contested mark.

Therefore, as the signs coincide in only the letter ‘G’ (depicted differently, as explained above) and differ in the presence of additional, differing distinctive elements that are clearly perceptible, they are visually similar to a very low 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 letter ‛G’, if it is pronounced by the relevant public. However, it most probably will not be pronounced in the contested sign, as it will be seen by most of the relevant public as a depiction of the initial letter of the verbal element ‘GENERAL’. The pronunciation differs in the sound of the letters ‛GENERAL TACTIC’ of the contested sign, which have no counterparts in the earlier mark.

Therefore, since the signs coincide in only the sound of the letter ‘G’, for the very limited part of the public that will pronounce this letter when referring to the contested sign, they are aurally similar to a very low degree; for most of the public in the relevant territory, the signs are aurally dissimilar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark will be associated with the meaning of the letter ‘G’. The contested sign, as a whole, will be associated by a part of the public with ‘the overall method chosen to achieve an objective or goal in a particular situation’. The rest of the public will associate it only with the meaning of the verbal element ‘GENERAL’. For the sake of completeness, it is noted that the element ‘G’ in the contested sign clearly refers to the first letter of ‘GENERAL’ and therefore conveys a different meaning from the single letter ‘G’ in the earlier mark. As the signs will be associated with dissimilar meanings, they are not conceptually similar.

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.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as result of its long-standing and intensive use in the European Union in connection with some of the goods and services for which it is registered, including but not limited to, clothing, footwear, rucksacks and hunting accessories. 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:

• Facebook account: screenshots showing the opponent’s Facebook page, featuring several entries where the earlier mark can be seen affixed to some products.
• YouTube account: screenshots showing the opponent’s YouTube channel, featuring a few videos related to the company and its trade marks and products.
• Corporate website: screenshots showing the opponent’s corporate website and online store, featuring products with the earlier trade marks affixed to them.

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.

The evidence submitted shows the normal promotion and advertising carried out by any company willing to commercialise and sell its products but does not prove that the trade mark enjoys a higher than average degree of distinctiveness for the relevant public in the market. The evidence of enhanced distinctiveness acquired through use must refer to both (i) the relevant geographical area and (ii) the relevant goods and services. From the evidence submitted, the Opposition Division cannot establish precisely for which goods and/or services enhanced distinctiveness is supposed to have been acquired or the market knowledge of the earlier mark ‘G’. Valid evidence proving enhanced recognition of the mark – such as a survey on the mark’s recognition, invoices, price lists, an affidavit, turnover and sales figures or even press cuttings – has not been submitted.

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

The similarities between the signs are limited to the presence of the letter ‘G’, which appears in both marks, depicted in a similar font but in different colours and at different angles. Furthermore, the presence of additional, differing distinctive elements is clearly perceptible; such elements occupy the largest part of the contested mark. These differences are sufficient to exclude any likelihood of confusion or association between the marks, as they render the signs under comparison visually similar to only a very low degree, conceptually not similar and aurally dissimilar, with only a very limited part of the relevant public finding them aurally similar to a very low degree due to the pronunciation of the letter ‘G’ that, as set out before, is highly unlikely.

The opponent claims that, because the goods include clothing items, the visual aspect should have a greater impact on the assessment of the overall likelihood of confusion for these goods.

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 considerable visual differences between the signs caused by the additional, differing elements are particularly relevant when assessing the likelihood of confusion between them in this case.

The fact that the letter ‘G’ is depicted in both signs – even assuming that the goods and services are identical – is not sufficient to find a likelihood of confusion or association on the part of the public.

Account is also taken of the fact that the relevant public will pay an average degree of attention when purchasing or selecting the relevant goods and services.

Considering all the above, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 10 279 172
European Union trade mark registration No 11 870 235

Since these marks are identical to the one which has been compared and cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 9 992 538
European Union trade mark registration No 10 279 065

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain additional elements, namely the stylised letters ‘GAST’ and ‘N’, that are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of the goods and services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

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

Ana MUÑIZ RODRIGUEZ

Fabián GARCÍA QUINTO

Zuzanna STOJKOWICZ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.