OPPOSITION No B 2 619 610

Olympique de Marseille SASP, La Commanderie 33, Traverse de la Martine, 13012 Marseille, France (opponent), represented by Markplus International, 39 rue Fessart, 92100 Boulogne-Billancourt, France (professional representative)

a g a i n s t

Martini Sportswear GmbH, Annaberg 133, 5524 Annaberg, Austria (holder), represented by Wolfgang Lang, Alter Markt 1, 5020 Salzburg, Austria (professional representative).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 619 610 is partially upheld, namely for the following contested goods and services:

Class 16:         Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes).

Class 25:        Sportswear.

Class 35:        Advertising; business management; business administration; office functions.

2.        International registration No 1 238 065 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration No 1 238 065 designating the European Union. The opposition is based on, inter alia, French trade mark registration No 3 983 934. 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.

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 French trade mark registration No 3 983 934.

1. The goods and services

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

Class 9:        Equipment for processing information and computers; game software; software (recorded); computer peripherals; electric batteries; spectacles (optics); eyewear; spectacle cases; diagnostic apparatus not for medical purposes; memory or microprocessor cards; organizers; enlarging apparatus (photography); magnets; decorative magnets; players; portable media players; compasses; computer keyboards; USB keys; compact discs (audio-video); headphones; video screens; holograms; covers for portable computers; speakers; housings speakers; binoculars (optics); optical / optical lanterns lamps; lenses, contact lenses; magnifier; instruments for spectacles; sunglasses; sports glasses; lasers not for medical purposes; objectives (optical); optical apparatus and instruments; compact disc players; DVD players; computer printers; notebook computers; nautical apparatus and instruments; digital picture frames; Special cases for photographic apparatus and instruments; projectors; measures (measuring instruments); bags designed for portable computers; mouse (computer); mouse pads; mobile phones; hands free kits for phones; Headphone / telephones.

Class 16:        Patterns for sewing; drawings; instruments / drawing supplies; paper handkerchiefs; paper towels; paper tablecloths; toilet paper; bags and sachets (envelopes, pouches) of paper or plastics for packaging; garbage bags of paper or plastic; adhesive tapes / adhesive tapes for stationery; posters; albums; almanacs; writing slates; atlases; stickers (for stationery); bracelets for writing instruments; brochures; staples; notebooks; calendars; notebooks; catalogs; mats for beer; files (office use); adhesives for stationery; composters; paper-cut; letter trays; covers (stationery); pencils; folders for papers; writing materials; erasers; wrapping paper; packaging of cardboard or paper for bottles; pads for stamps; envelopes (stationery); invitations; sheets; flyers / leaflets; globes; paper; paper table covers; checkbook holders; chalk holder; pencil holders; pencils; porteplume; postcards; prospectus; directories; stamps (seals); stamp pads; cards; wishes; paper towels; drawing sets.

Class 25:        Clothing; shoes; headgear; bath slippers; bath slippers; bathing caps; bathing trunks; swimwear / bathing suits; bathrobes; bandanas (scarves); headbands (clothing); down; berets; jackets; boas (necklets); body (leotards) boots; shawls; hats; studs for football shoes; football boots; shirts; shirts; collar / collars (clothing); made clothing; leather or imitation leather clothing; belts (clothing); underclothing / bottom (underwear); corsets; suits; furs (clothing); gloves (clothing); scarves; gabardine (clothing); vests; waterproof; skirts; suits; coats; pants; slippers / slippers; coat / coats / overcoats (clothing); parkas; bathrobes / dressing gowns; beach shoes; shirt fronts; ponchos; money belts; (clothing); sweaters; pajamas; dresses; sandals; soles; suits for water skiing; ski boots; ties; hosiery; socks; slippers; sports shoes; briefs; bras; diapers of textile; panties; outer clothing; scarves; sneakers; underwear sudorifuges / sudorifuge underclothing; aprons (clothing); T-shirts; uniforms; jackets; clothing / apparel items; clothes; cap peaks.

Class 28:        Games; toys; Christmas tree decorations (except lighting articles); Christmas trees of synthetic materials; fitness or gym equipment; toys for pets; fishing tackle; balls and play balloons; billiard tables; tails / bands / bowling / tables or billiard balls; chalk for billiard cues; body boards; kites; cricket bags; golf club bags (golf clubs) / golf clubs; golf gloves; hockey sticks; play balloons; playing balls; sea kayaks; teddy bear; soft toys (toys); skateboards; ice skates or roller; shin guards (sports articles); scooters; sailboards or surfing; snowshoes; snowshoes; skis; water skis; bags especially designed for skis and surfboards; snowboards (snow surfboards); Sports briefs for support (sports articles); protective padding (parts of sports suits).

Class 35:        Advertising; business management; business administration; office functions; distribution of advertising materials (leaflets, pamphlets, printed matter, samples); subscription services to newspapers (for others); business organization and business management; professional business consultancy; display; demonstration of goods; distribution of advertising material (leaflets, pamphlets, printed matter, samples); dissemination (distribution) of samples; Business management for athletes; market research; marketing; opinion poll; sponsorship search; advertising mail; advertising on a computer network; accounting; document reproduction; employment agencies; computer file management; organization of exhibitions for commercial or advertising purposes; rental of advertising time on all means of communication; publication of advertising texts; rental of advertising space; dissemination of advertising; public relations.

Class 41:        Education; training; entertainment; sporting and cultural activities; information relating to entertainment or education; recreational services; publication of books; book loans; production of films on video tapes; rental of motion pictures; rental of sound recordings; rentals VCRs or radio and television sets; rental of show scenery; Mounting video tapes; photography services; organization of competitions (education or entertainment); arranging and conducting of seminars; conferences, congresses; organization of exhibitions for cultural purposes; Reservation of seats for shows; game services provided on-line from a computer network; gambling service; publication of electronic books and journals on-line; micropublishing; ticket service (entertainment); club services (entertainment or education); sports club (shaping and fitness); organization of sports competitions; sports field rental; provision of recreation facilities; provision of sports facilities; camps (internships) sports development; fitness; stage rental; party planning (entertainment).

The contested goods and services are the following:

Class 16:        Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 25:        Sportswear.

Class 35:        Advertising; business management; business administration; office functions.

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 16

Paper and adhesives for stationary are identically contained in both lists of goods.

Some of the contested goods include, as broader categories, the opponent’s more specific goods in Class 16. This is the case for the contested printed matter, which includes the opponent’s brochures, the contested stationery, which includes the opponent’s adhesives for stationery, the contested office requisites (except furniture), which include the opponent’s files (office use), and the contested instructional and teaching material (except apparatus), which includes the opponent’s globes. It is impossible for the Opposition Division to filter these goods from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad categories of the holder’s goods, they are considered identical to the opponent’s abovementioned goods.

The same reasoning applies to the contested bookbinding material and artists’ materials, which overlap with the opponent’s paper, and the contested plastic materials for packaging (not included in other classes), which overlap with the opponent’s bags and sachets (envelopes, pouches) of plastics for packaging. Therefore, since the Opposition Division cannot dissect ex officio the broad categories of the holder’s goods, they are considered identical to the opponent’s abovementioned goods.

The contested adhesives for household purposes have the same nature and purpose as the opponent’s adhesives for stationery. These goods also often come from the same entities and are distributed through the same channels. Therefore, they are similar to a high degree.

The contested cardboard has the same nature as the opponent’s paper. These goods target the same end users, are manufactured by the same entities and are sold through the same distribution channels. Therefore, they are similar to a high degree.

The contested photographs have the same nature and purpose as the opponent’s posters. They target the same end users, and they are often manufactured by the same entities and distributed through the same channels. Moreover, the goods are in competition. Therefore, they are similar to a high degree.

The contested paint brushes are similar to the opponent’s drawing sets. These goods have the same purposes, end users and distribution channels. Manufacturers are expected to compose drawing sets of their own drawing articles, including paint brushes; consequently, these goods have the same usual origins.

The remaining contested goods, namely typewriters; printers’ type; printing blocks, are dissimilar to all the opponent’s goods and services in Classes 9, 16, 25, 28, 35 and 41. Contrary to the opponent’s observations, the Opposition Division finds that printers’ type and printing blocks are parts, components or fittings of a final product. They have different natures and purposes, target different consumers, are distributed through different channels and are manufactured and provided by different undertakings from the opponent’s goods and services, and they cannot be complementary to pencils, notebooks and writing materials. Furthermore, the Opposition Division finds that typewriters have nothing relevant in common with the opponent’s goods and services.

Contested goods in Class 25

The contested sportswear is included in the broad category of the opponent’s clothing. Therefore, they are identical.

The holder argues that it operates in the area of ski clothing and that the opponent operates in the field of football and provides articles for football fans. However, this is not reflected by the lists of goods, on the basis of which the Opposition Division must carry out the comparison.

Contested services in Class 35

Advertising; business management; business administration; office functions are identically contained in both lists of services.

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 or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention of the public will vary from low (e.g. for cheap goods for everyday use, such as materials for packaging in Class 16) to high (e.g. for specialised services directed at business customers, such as business management in Class 35).

3. The signs

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 mark is a figurative mark composed of a dark blue circle with a wavy white line inside it. The line starts and ends outside the circle and its thickness alternates between thick and thin. The wave at the left of the circle is higher than that at the right. The Opposition Division finds that at least part of the relevant public will perceive this wavy line as a stylised letter ‘M’, and it will first examine the opposition in relation to this part of the public. Contrary to the holder’s observation, the Opposition Division finds it highly unlikely that the line will be perceived as a letter ‘N’ or ‘W’, due to the number of waves and the fact that the letter ‘N’ or ‘W’ would have to appear in an unnatural, off-centre position accompanied by additional waves.

The contested sign is a figurative mark, composed of a figurative element in the form of a dark circle with a wavy white line inside it. The line starts outside the circle and ends inside the circle and its thickness changes, as it becomes thinner as it goes from left to right. The wave depicted at the left of the circle is higher than that depicted at the right. The Opposition Division finds that the line will be perceived by the relevant public as a stylised letter ‘M’. The mark also contains the stylised verbal elements ‘MARTINI’ and ‘SPORTSWEAR AUSTRIA’ written over two lines.

The figurative element consisting of the dark circle and the word ‘MARTINI’ are the co-dominant elements in the contested sign, as they overshadow the words ‘SPORTSWEAR AUSTRIA’, which are depicted in much smaller text. Moreover, for the part of the relevant public that is familiar with basic English, these words are also weak in relation to the goods in Class 25, as they indicate that the relevant goods are sportswear made in Austria.

The word ‘MARTINI’ in the contested sign might be perceived by part of the relevant public as an Italian surname, but another part of the relevant public will perceive it as meaningless. As this word is not descriptive or allusive in relation to the relevant goods and services, it is distinctive.

The letter ‘M’, perceived in the earlier mark by at least part of the relevant public, has no meaning in relation to the majority of the relevant goods and services, and is, therefore, distinctive. However, the letter ‘M’ is commonly used on the market to describe the size of clothing. Therefore, although its stylisation is distinctive, the letter ‘M’, as such, lacks distinctiveness in the earlier mark for the relevant goods in Class 25. The letter ‘M’ will also be dissected in the contested sign by at least part of the relevant public. However, as the figurative element is immediately followed by the word ‘MARTINI’, the relevant public will most likely perceive the letter ‘M’ as the first letter of this word, and it has therefore a normal degree of distinctiveness.

Visually, the signs coincide in that they are composed of a dark circle and a similarly stylised letter ‘M’, created by a wavy line, and in both cases the wave at the left is higher than that at the right. They differ only slightly in the way in which the thickness of the line making up the letter ‘M’ changes, and the facts that in the earlier mark the line has an additional lower curve and in the contested sign the line ends inside the circle. Furthermore, they differ in the additional co-dominant word ‘MARTINI’ and in the less dominant and, for part of the public, weak elements ‘SPORTSWEAR AUSTRIA’.

Therefore, taking into account the commonality between the earlier mark and the co-dominant figurative element in the contested sign, they are visually similar to an average degree for the goods and services in Classes 16 and 35. Although the letter ‘M’, as such, lacks distinctiveness in the earlier mark for the goods in Class 25, the signs are visually similar to a low degree with respect to those goods, since the letter ‘M’ in the earlier mark is highly stylised and very similar to the letter ‘M’ in the contested sign, where it will moreover be perceived as a distinctive element.

Aurally, for part of the relevant public, the signs coincide in the sound of the letter ‘M’, present in both marks, which, despite being weak in the earlier mark, is its only pronounceable element. They differ in the pronunciation of the additional co-dominant verbal element ‘MARTINI’ in the contested sign. Furthermore, they differ in the pronunciation of the words ‘SPORTSWEAR AUSTRIA’ in the contested sign, although they might not be pronounced, since they are less dominant in the mark. Another part of the relevant public will not pronounce the letter ‘M’ in the contested sign, as it is incorporated into the figurative element, and will be perceived as a mere repetition of the first letter of the word ‘MARTINI’, and therefore that part of the relevant public will pronounce only the latter.

Therefore, for part of the relevant public the signs are aurally similar to at most a low degree, and for another part of the relevant public the signs are aurally dissimilar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The wavy line, included in the figurative elements in both signs, will be associated with the letter ‘M’, as explained above. However, with respect to the goods in Class 25, it is very likely that the letter ‘M’ in the earlier mark will be perceived as referring to the size of clothing, while in the contested sign the letter ‘M’ will be perceived as referring to the first letter of the word ‘MARTINI’. The remaining co-dominant and distinctive word ‘MARTINI’ in the contested sign creates a conceptual difference between the marks for part of the relevant public. The impact of the words ‘SPORTSWEAR AUSTRIA’ is limited, as these elements are less dominant and weak for at least part of the relevant public.

Taking into account the above, the signs are conceptually similar to an average degree for the goods and services in Classes 16 and 35 and conceptually not similar for the goods in Class 25.

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 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. This is also true in relation to clothing, as the stylisation of the letter ‘M’, its placement within the circle and the overall composition of the mark give the mark an average degree of distinctiveness despite the lack of distinctiveness of the letter ‘M’ as such for these products.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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.

In the present case, the goods and services are partly identical or similar to a high or average degree and partly dissimilar. The attention of the relevant public varies, depending on the relevant goods and services, between low and high, and the degree of distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree for the goods and services in Classes 16 and 35 and to a low degree for the goods in Class 25. Aurally, the signs are at most similar to a low degree, and for part of the relevant public they are not similar. Conceptually, the marks are similar to an average degree for the goods and services in Classes 16 and 35 and not similar for the goods in Class 25.

For the goods and services in Classes 16 and 35, it is considered that the average visual and conceptual similarity will lead to a likelihood of confusion.

Even though, as explained above in section c), for the relevant goods in Class 25 the similarities are due to the presence of an element that is as such non-distinctive in the earlier mark, the visual similarity caused by the distinctive stylisation of the signs is particularly relevant when assessing the likelihood of confusion between them insofar as clothing is concerned. This is because 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 for these goods (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Moreover, the conflicting goods in Class 25 are identical. According to the interdependence principle mentioned above, this identity counterbalances the lower degree of similarity between the signs for those goods. Taking the above into account, the fact that the marks are aurally similar to at most a low degree and conceptually not similar is not sufficient to exclude a likelihood of confusion for the goods in Class 25.

Furthermore, as regards all the relevant goods and services, account is also taken of the fact that average consumers, even those paying 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).

The holder argues that its international registration has been used on the market for a long time, and, therefore, is well known. However, the right to protection of an international registration within the European Union begins on the date of designation and not before, and, from that date onwards, the international registration has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the international registration falls under any of the relative grounds for refusal, events or facts which happened before the date of designation of the European Union are irrelevant because the rights of the opponent, insofar as they predate the international registration, are earlier than the holder’s.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the part of the public that perceives the letter ‘M’ in both signs and therefore the opposition is partly well founded on the basis of the opponent’s French trade mark registration No 3 983 934. Given that a likelihood of confusion for the abovementioned part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public, for which the wavy line in the circle will not be associated with the letter ‘M’ or any other particular meaning.

It follows from the above that the contested trade mark must be rejected for all the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods 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 and directed at these goods cannot be successful.

The opponent has also based its opposition on French trade mark registration No 3 983 931 for the figurative mark . The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains a figurative element, namely a running man, not present in the contested trade mark. Moreover, it covers the same scope of goods and services. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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. According to Article 85(2) 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 only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Saida CRABBE

Ric WASLEY

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.