OPPOSITION DIVISION
OPPOSITION No B 2 732 959
Nuria Cordoba Candela, Pol. Ind. Carrus Avda. Ronda Vall d’Uxo, 29-2ª planta,
03206 Elche, Spain (opponent), represented by Patentes y Marcas A. Pomares,
S.L., C/ José Ramos, 2 Entlo., 03203 Elche (Alicante), Spain (professional
representative)
a g a i n s t
KS Warenhaus IPCo GmbH, Maximiliansplatz 12, 80333 München, Germany
(holder), represented by Grünecker Patent- Und Rechtsanwälte Partg MbB,
Leopoldstr. 4, 80802 München, Germany (professional representative).
On 09/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 732 959 is partially upheld, namely for the following
contested goods:
Class 25: Headgear.
2. International registration No 1 293 971 is refused protection in respect of the
European Union for all of the above goods. It may proceed for the remaining
goods, namely Clothing; footwear; parts and fittings for clothing, footwear and
headgear as far as included in this class.
3. Each party bears its own costs.
PRELIMINARY REMARK –THE APPLICABLE REGULATIONS
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods of international registration
designating the European Union No 1 293 971 for the figurative sign . The
opposition is based on International trade mark registration No 1 087 246 designating
the Benelux countries, Germany and Italy for the figurative mark . The
opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 732 959 page: 2 of 8
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.
a) The goods
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear.
The contested goods are the following:
Class 25: Clothing; footwear; headgear; parts and fittings for all of the
aforementioned goods as far as included in this class.
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.
As a preliminary remark, it is to be noted that goods or services are not regarded as
being similar or dissimilar to each other on the ground that they appear in the same
or different classes under the Nice Classification.
Contested goods in Class 25 Clothing, footwear, headgear are identically included
in the opponent’s list of goods.
The contested parts and fittings for all the aforementioned goods as far as included
in this class will be compared with the opponent’s goods separately, in relation to the
different goods to which those parts and fittings refer (i.e. clothing, footwear and
headgear), since different results are obtained from the comparison.
Fittings for footwear includes goods such as studs for football boots and cleats for
attachment to sport shoes. Such goods are complementary to the opponent’s
footwear. These conflicting goods are often sold through the same distribution
channels and target the same relevant publics. Moreover, the consumers would
expect these goods to be manufactured by the same undertaking. Parts of footwear
covers, for example, insoles for footwear and heel inserts. Such goods are
complementary to the opponent’s footwear (insoles are only used in combination with
footwear) and consumers seek for, for example, both insoles and shoes in the same
shops. Finally, the consumers expect such goods to be produced by the same
companies. According to the above, it is considered that the contested parts and
fittings for footwear as far as included in this class are deemed similar to the
opponent’s footwear.
Decision on Opposition No B 2 732 959 page: 3 of 8
The contested parts and fittings for clothing or headgear as far as included in this
class, are dissimilar to the opponent’s clothing, footwear, headgear since they differ
in nature, purpose, method of use, distribution channels and points of sale. They are
not in competition, are not directed at the same consumers, and not likely to be sold
by the same kind of undertakings. Even if part of these parts and fittings are
expressly related to the opponent’s clothing, headgear, being complementary, the
contested goods are meant to be used in the manufacture of clothing or headgear,
parts and accessories, and are mainly directed at professionals in the field of clothing
and headgear manufacturing, whereas the opponent’s clothing, headgear are
finished products directed at consumers who are willing to purchase a finished
product, ready to be used. Therefore, the complementary between these goods is not
enough per se to consider them similar.
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 or similar are directed at the
public at large. The degree of attention paid by consumers during their purchase is
deemed to be average.
c) The signs
Earlier trade mark Contested sign
The relevant territories are the Benelux countries, Germany and Italy.
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). This applies by analogy to international registrations
designating the European Union. Therefore, a likelihood of confusion for only part of
the relevant public of the European Union is sufficient to reject the contested
application.
Decision on Opposition No B 2 732 959 page: 4 of 8
A significant part of the public recognises the English expression ‘Globe trotter’ as
meaning ‘adventurer’ or ‘traveller’, either because consumers have enough English
knowledge as to understand it (e.g. Dutch-speaking consumers), or because this
exact expression has been adopted in their language and is commonly used to refer
to that same concept (e.g. French or German-speaking consumers). This concept in
the contested mark is not perceived in the earlier mark (see conceptual analysis
below), and will lead to clear conceptual differences between the signs, making them
distant enough as to clearly discard the existence of likelihood of confusion or
association between them, even taking into account the visual and aural
coincidences to which reference is made below.
Therefore, in order to focus on the best-case scenario for likelihood of confusion to
occur, the Opposition Division will focus on the part of the public for which ‘Globe
trotter’ does not mean ‘adventurer’ or ‘traveller’, namely the Italian-speaking part of
the relevant public.
The Italian-speaking consumers perceive the element ‘trotters’ in the earlier mark and
‘TROTTER’ in the contested mark as having the same concept of ‘trottare’, which is
the Italian term used for, inter alia, ‘the actions of walking fast or running at a low
speed’. The reason for this is the significant spelling similarities between the words
‘trotters’ and ‘TROTTER’ and the Italian term ‘trottare’, which will unavoidably lead
Italian consumers to attributing the same concept to these words.
According to the above, it can be stated that the term ‘trotters’ is of lower than
average distinctive character for clothing, footwear, and the term ‘TROTTER’ is of
lower than average distinctive character for the holder’s clothing, footwear, parts and
fittings for footwear as far as included in this class, for being at least allusive of their
characteristics, for instance, their purpose (e.g. goods designed for the practice of
specific activities, such as running or walking fast).
The element ‘t.’ in the earlier mark has the concept of the letter it represents, and the
element ‘GLOBE’ in the contested mark is perceived as having the concept of ‘Globo’
(i.e. the word used for, inter alia, ‘World, planet Earth’ in Italian). Therefore, since they
have no meaning in relation to the goods involved, these elements are of average
distinctive character.
The figurative element in the earlier mark consists of an oval shape. It is non-
distinctive, for being a simple geometrical shape acting as a frame. The figurative
element in the contested mark is formed by a combination of two lines and three
stars, evoking a flag. Even if formed by commonly used elements, it is considered of
average distinctive character, for the particular way in which they are positioned and
combined.
As argued by the holder, consumers generally tend to focus on the beginning of a
sign when they encounter a trade mark. This is because the public reads from left to
right, which makes the part placed at the left of the sign (the initial part) the one that
first catches the attention of the reader. When the text is positioned in different lines,
reading takes place from left to right, and from top to bottom. In this regard, it is
important to note that the beginnings of the marks, ‘t.’ and ‘GLOBE’, where the main
differences are found (see comparison below), are the parts of the signs that will first
catch the attention of consumers.
Decision on Opposition No B 2 732 959 page: 5 of 8
Visually, even if the earlier mark contains lower-case letters whereas the contested
mark is written in upper-case, the verbal elements in both marks are written in regular
fonts, and consumers will perceive them as containing equivalent letters.
The signs coincide in ‘trotter’ of the earlier mark and ’TROTTER’ of the contested
mark. The signs differ in their beginnings ‘t.’ and ‘GLOBE’, in the ending ‘s’ of the
earlier mark, and in the figurative elements described above. They also differ in
typeface.
Attention must be paid to the fact that, as explained above, the beginnings of signs
are where consumers focus their attention, and in the present case the beginnings
contain the main dissimilarities. This reinforces the impact of the differing parts of the
marks, and somehow diminishes the impact of the coincidences, which are located at
the end of the signs.
The words ‘trotters’ and ‘TROTTER’, where the coincidences are found, have a
reduced impact when used in relation to goods for which they are of lower than
average distinctive character, according to the distinctiveness analysis above. In
relation to these goods (i.e. footwear; clothing covered by both marks, and parts and
fittings for footwear as far as included in this class, in the contested mark), and taking
into account all of the above, it is considered that the signs are considered visually
similar to a low degree.
The reasoning in the previous paragraph does not apply to the goods for which
‘trotters’ and ‘TROTTER’ are of average distinctive character, namely headgear. In
relation to these goods, and taking into account all of the above, the signs are
considered visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘t-r-o-t-t-e-
r’, present identically in both signs. The pronunciation differs in the sound of the
ending ‘s’ of the earlier mark, and in the sound of ‘t’ and of ‘globe’, at the beginning of
the earlier and contested signs, respectively.
The aural coincidences are found in the terms ‘trotters’ and ‘TROTTER’. Following
the reasoning above regarding the distinctive character of each element in the signs,
and of how this affects their weight or impact within the sign, it is considered that the
marks are aurally similar to a low degree for the goods for which they are allusive i.e.
footwear; clothing covered by both marks, and parts and fittings for footwear as far
as included in this class, in the contested mark and aurally similar to an average
degree for the rest of goods, namely headgear.
Conceptually, both signs will be perceived as referring to the concept of ‘walking
fast’ or ‘running at low speed’ (i.e. the Italian term ‘trottare’), attributed to their terms
‘trotters’ and ‘TROTTER’. They differ in the concepts of letter ‘t’ in the earlier mark
and ‘GLOBE’ in the contested sign, as well as in the concepts of their respective
figurative elements (see description of signs above).
Following the reasoning above regarding the distinctive character of each element in
the signs, and of how this affects their weight or impact within the sign, it is
considered that the marks are conceptually similar to a low degree for the goods for
which they are allusive i.e. footwear; clothing covered by both marks, and parts and
fittings for all of the aforementioned goods as far as included in this class, as far as
related to footwear, in the contested mark and conceptually similar to an average
degree for the rest of goods, namely headgear.
Decision on Opposition No B 2 732 959 page: 6 of 8
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.
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 of an element in the mark that is considered of lower than average
distinctivecharacter(i.e.‘trotters’)forpartofthegoodsinvolved,andofa
non-distinctive element (i.e. oval shape), as stated above in section c) of this
decision.
e) Global assessment, other arguments and conclusion
The goods compared have been found to be partly identical, partly similar and partly
dissimilar.
The goods are directed at the public at large, who are deemed to pay an average
degree of attention during their purchase.
The signs, are considered to be visually, aurally and conceptually similar to a low
degree, for the part of the goods for which the terms ‘trotters’ and ‘TROTTER’ are of
low distinctive character, and visually, aurally and conceptually similar to an average
degree for the rest of the goods.
The coincidences between the marks are found on elements of the signs that have
been considered to be of low distinctive character for part of the goods, and
distinctive for another part. The differences between the marks are found in
distinctive elements, which are furthermore positioned in the parts of the signs where
the attention of consumers is focused, namely the beginnings of the signs.
In this scenario, the Opposition Division considers that the coincidences between the
marks are enough for likelihood of confusion to occur, in relation to the goods found
to be identical for which all the words forming the marks are of average distinctive
character. Therefore, the opposition is upheld in relation to the contested headgear.
In this same line, the opposition Division considers that the coincidences between the
marks are not enough for likelihood of confusion to occur, in relation to the goods for
which the words ‘trotters’ and ‘TROTTER’, where the coincidences are found, are of
lower than average distinctive character. In this scenario, the coincidences are found
on elements of reduced impact for the reasons explained above. Taking into account
that the main dissimilarities are found in distinctive elements, of greater impact also
Decision on Opposition No B 2 732 959 page: 7 of 8
due to their position within the signs, it is considered that such coincidences are
clearly not enough to lead consumers to believe that the goods, even if considered
identical or similar, come from the same or economically-linked undertakings.
Therefore, the opposition is rejected in relation to the contested Clothing; footwear;
parts and fittings for footwear as far as included in this class.
The rest of the contested goods, namely parts and fittings for clothing, headgear as
far as included in this class, are dissimilar. As similarity of goods and services is a
necessary condition for the application of Article 8(1) EUTMR, the opposition based
on this Article 8(1)(b) and directed at these goods cannot be successful.
The parties refer to previous decisions of the Office to support their arguments.
However, the Office is not bound by its previous decisions, as each case has to be
dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that,
according to settled case-law, the legality of decisions is to be assessed purely with
reference to the EUTMR, and not to the Office’s practice in earlier decisions
(30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and
outcome should still be duly considered when deciding upon a particular case. In the
present case, the previous cases referred to by the parties are not relevant to the
present proceedings, since they involve different signs and/or different goods and/or
services, and, therefore, the same reasoning cannot be expected to be followed
and/or the same conclusions reached.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the Italian-speaking part of the public in relation to headgear
and, therefore, the opposition is partly well founded on the basis of the opponent’s
International registration.
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.
For the part of the public not taken into account in the analysis in section c) above,
namely those perceiving the English expression ‘Globe trotter’ as meaning
‘adventurer’ or ‘traveller’, there is a clear conceptual difference between the signs
(see description of concepts in section c) above)
Such conceptual differences can in certain circumstances counteract the visual and
phonetic similarities between the signs concerned. For there to be such a
counteraction, at least one of the signs at issue must have, from the point of view of
the relevant public, a clear and specific meaning so that the public is capable of
grasping it immediately (BASS, cited in paragraph 52 above, paragraph 54).
In this case, the conceptual differences referred to will clearly lead to perceive the
signs as distant enough as to clearly discard the existence of likelihood of confusion
or association between them, even taking into account the rest of coincidences
referred to above. Therefore, for this part of the public likelihood of confusion will not
be considered to exist for the part of the goods for which the opposition has been
rejected.
Decision on Opposition No B 2 732 959 page: 8 of 8
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Ric WASLEY María del Carmen SUCH
SANCHEZ
Richard BIANCHI
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.