OPPOSITION No B 2 767 971

Spar Österreichische Warenhandels-Aktiengesellschaft, Europastr. 3, 5015 Salzburg, Austria (opponent), represented by Pressl Endl Heinrich Bamberger Rechtsanwälte GmbH, Erzabt-Klotz-Str. 21 a, 5020 Salzburg, Austria (professional representative)

a g a i n s t

Jervis Sports and Technology Limited, 23/F, Linkchart Centre, 2 Tai Yip Street, Kwun Tong, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Bernard Soyer Conseil, 58 avenue Marceau, 75008 Paris, France (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 767 971 is upheld for all the contested goods.

2.        European Union trade mark application No 15 440 027 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 440 027 , namely against the goods in Classes 9, 25 and 28. The opposition is based on international trade mark registration No 559 593 ‘HERVIS’ designating, inter alia, France.

The opponent invoked Article 8(1)(b) and 8(5) 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 international trade mark registration No 559 593 designating several territories. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration designating France.

1. The goods

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

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), emergency (life-saving) and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic recording media, sound recording disks; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; diving apparatus, goggles for divers, wet suits equipped with diving apparatus.

Class 25: Clothing, footwear, headgear; fashion wear and clothing for sports; footwear for sports.

Class 28: Games, toys; gymnastic and sporting articles not included in other classes; surf skis; skis, skiing equipment not included in other classes; ice skates; sleighs (sports articles), gymnastic apparatus, flippers for swimming; fishing tackle.

The contested goods are the following:

Class 9: Mobile apps; computer software; software downloadable from the internet; computer hardware.

Class 25: Clothing, headgear, footwear; athletic footwear, athletic shoes, basketball shoes, basketball sneakers, T-shirts, sleeve tee, shirts, polo shirts, sweatshirts; hats, caps, leisurewear, articles of clothing for sports and leisure wear, articles of outerclothing, articles of sports clothing.

Class 28: Basketballs; gymnastic and sporting goods and apparatus; sporting bags and containers adapted for carrying sports articles; basketball nets, basketball backboards, pumps for inflating basketballs and needles therefor; basketball game kits, portable electronic basketball games and basketball table top games; sporting articles including articles and accessories for the games of basketball.

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 9

The opponent’s data processing equipment refers to devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate, or otherwise process information. The contested computer hardware is included in this broad category and these goods are, therefore, identical.

The contested mobile apps, computer software and software downloadable from the internet are composed of programs, routines, and symbolic languages that control the functioning of the hardware (such as computers, smartphones, etc.) and direct its operation. They are complementary to the opponent’s data processing equipment. Furthermore, these goods have the same public, producers and distribution channels. Therefore, they are similar.

Contested goods in Class 25

Clothing, headgear, footwear are identically contained in both lists of goods.

The contested leisurewear overlaps with the opponent’s clothing. Therefore, they are identical.

Various contested goods are included in the broad categories of the opponent’s goods and therefore they are identical. Firstly, the contested athletic footwear, athletic shoes, basketball shoes, basketball sneakers are included in the opponent’s footwear. Moreover, the contested t-shirts, sleeve tee, shirts, polo shirts, sweatshirts, articles of clothing for sports and leisure wear, articles of outerclothing, articles of sports clothing are included in the opponent’s clothing. Finally, the contested hats and caps are included in the opponent’s headgear.

Contested goods in Class 28

The contested basketballs; gymnastic and sporting goods and apparatus; basketball nets, basketball backboards; basketball game kits, sporting articles including articles and accessories for the games of basketball are included in, or overlap with, the broad category of the opponent’s gymnastic and sporting articles. Therefore, they are identical.

The contested portable electronic basketball games and basketball table top games are included in the opponent’s games. Therefore, they are identical.

The contested sporting bags and containers adapted for carrying sports articles; pumps for inflating basketballs and needles are closely related to the opponent’s sporting articles insofar as they are complementary, have the same distribution channels, relevant public and producers. Therefore, they are similar.

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 or similar are directed at the public at large and, as regards the goods in Class 9 and some of the goods in Class 28, also at business customers with specific professional knowledge and expertise.

The degree of attention may vary from average to high depending on the nature, price and frequency of purchase of the relevant goods. For example, it will be high in relation to expensive and not frequently purchased goods such as computer hardware in Class 9 and some of the sporting apparatus in Class 28.

3. The signs

HERVIS
Earlier trade mark	Contested sign

The relevant territory is France.

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 word mark and the contested figurative sign contain a single verbal element. The words ‘HERVIS’ and ‘JERVIS’ are meaningless for the relevant public, have no identifiable components and enjoy an average degree of inherent distinctiveness in the context of the relevant goods.

The figurative features of the contested sign are limited to a particular, although not highly stylised, typeface of a decorative nature. Therefore, the verbal element of the contested sign is more distinctive than its figurative aspect.

Visually, the signs coincide in their length and in the sequence of five letters ‘ERVIS’. They differ in the first letters ‘H’ and ‘J’ respectively, and in the stylised typeface of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, given that the letter ‘H’ at the beginning of the earlier mark is voiceless in French, the earlier mark is totally included in the contested sign. Consequently, the pronunciation of the signs coincides in the sound of the letters ‘ERVIS’ and differs in the sound of the letter ‘J’ at the beginning of the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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 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.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical and partly similar to the opponent’s goods. They are directed at the public at large and also, as regards some of the goods, at professional customers. The degree of attention of the relevant public varies from average to high.

The signs are visually similar to an average degree, aurally highly similar, and the conceptual aspect does not influence the outcome of the assessment of the marks’ similarity.

Account is taken of the fact that average consumers, even those who pay a high degree of attention, 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; 21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Bearing in mind the average degree of inherent distinctiveness of the earlier mark, it is considered that the visual and aural differences – found in the initial letters and the stylisation of the contested sign – are not sufficient to counterbalance the similarities between the signs. It is highly conceivable that the relevant consumer, even with a higher than average degree of attention, will perceive that the identical or similar goods marked with the signs in question come from the same undertaking or from economically linked undertakings.

Considering all the above there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 559 593 designating France. It follows that the contested trade mark 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 and 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 above mentioned earlier right 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).

Likewise, 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(5) EUTMR.

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

Marine DARTEYRE

Zuzanna STOJKOWICZ

Ioana MOISESCU

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.