OPPOSITION No B 2 373 697

Mountain Bears – Unipessoal, Lda., Rua Mouzinho de Albuquerque, nº 16, 1º Andar, 2720-390 Damaia, Portugal (opponent), represented by C/M/S Rui Pena, Arnaut & Associados, Rua Sousa Martins 10, 1050-218 Lisboa, Portugal (professional representative)

a g a i n s t

SDI (Wigan) IP Limited, Unit A, Brook Park East, Shirebrook NG20 8RY, United Kingdom (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (professional representative).

On 13/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 373 697 is partially upheld, namely for the following contested goods:

Class 18: Travel bags; kit bags; travelling sacks; backpacks; rucksacks; holdalls, wash bag holdalls; garment bags; pouches; satchels; slings and backpacks for carrying babies and/or children; alpenstocks; mountaineering sticks; wallets and purses; chalk bags being for use in climbing.

Class 25: Clothing, footwear and headgear; boots; ski-boots; sandals; shoes; sports shoes; caps; hats; headbands; sun visors; gaiter straps; gaiters; galoshes; hosiery; inner soles; jackets; jumpers; leggings; outer-clothing; overcoats; parkas; scarves; socks; gloves; neckwear; neckgear; thermal underwear; T-shirts; trousers; shorts; waterproof clothing; wetsuits; money belts; articles of outerclothing but not including waxed jackets; mules.

Class 28: Sporting and climbing equipment; climbers' harnesses.

2.        European Union trade mark application No 12 528 592 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 528 592 for the figurative mark, namely against all the goods in Classes 18, 25 and 28. The opposition is based on European Union trade mark registration No 9 708 711 for the word mark ‘MOUNTAIN BEARS’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

According to Article 41 EUTMR, within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8.

According to Rule 15(2)(c) EUTMIR, the notice of opposition shall contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), and (5) of the Regulation (EUTMR) are fulfilled.

In the present case, in the notice of opposition dated 24/06/2014 (filed within the three-month opposition period which ended on 26/06/2014), the opponent declared that the ground for the opposition was Article 8(1)(b) EUTMR, as can be seen in the opposition form, where only this article is indicated. The opponent did not submit any additional document or argument, within the opposition period, to show its intention to claim any other ground for the opposition, in addition to Article 8(1)(b) EUTMR.

However, in its observations dated 07/11/2014, the opponent claimed, under point ‘IV – UNFAIR ADVANTAGE’, that ‘the mere use of the EUTM application for goods and services that are not under the Opponent’s control will, most certainly, have a negative impact on the reputation acquired and will, in any case, dilute the distinctiveness of the opponent’s trademarks’. In other words, the opponent claimed Article 8(5) EUTMR as a ground on which the opposition is based.

Therefore, the opponent made reference to Article 8(5) EUTMR as a ground for the opposition only in its additional facts and arguments presented to substantiate the opposition, which were filed after the three-month period given for filing an opposition. However, in accordance with Rule 15(2)(c) EUTMIR, such ground may not be added after the expiry of this deadline and, therefore, the opponent may not extend the scope of the opposition at this stage of the proceedings.

Consequently, the opposition will only be examined on the ground of Article 8(1)(b) EUTMR. The Opposition Division will, however, consider this as a claim for enhanced distinctiveness through intensive use and reputation of the earlier mark in the context of 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.

1. The goods

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

Class 25: Clothing, footwear and headgear.

The contested goods are the following:

Class 18: Luggage; travel bags; trunks; kit bags; travelling sacks; backpacks; rucksacks; holdalls, wash bag holdalls; garment bags; pouches; satchels; slings and backpacks for carrying babies and/or children; alpenstocks; mountaineering sticks; walking sticks; walking stick seats; umbrellas; harness straps; wallets and purses; cases; cases of leather or imitation leather; boot liners; sacks and bags and liners for the aforesaid goods; parts and fittings for the aforesaid goods; chalk bags being for use in climbing.

Class 25: Clothing, footwear and headgear; boots; iron fittings for boots; non-slipping devices for boots; ski-boots; sandals; shoes; sports shoes; caps; hats; headbands; sun visors; gaiter straps; gaiters; galoshes; hosiery; inner soles; jackets; jumpers; leggings; outer-clothing; overcoats; parkas; scarves; socks; gloves; neckwear; neckgear; thermal underwear; T-shirts; trousers; shorts; waterproof clothing; wetsuits; money belts; liners for clothing; articles of outerclothing but not including waxed jackets; mules.

Class 28: Sporting and climbing equipment; climbers' harnesses.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, 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.

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 18

The contested travel bags; kit bags; travelling sacks; backpacks; rucksacks; holdalls, wash bag holdalls; garment bags; pouches; satchels; wallets and purses are similar to the opponent’s clothing since producers of clothing may also produce this kind of articles as accessories. Furthermore, they can target at the same relevant public and be distributed through the same trade channels.

The contested slings and backpacks for carrying babies and/or children may be produced by the same undertakings than the opponent’s clothing. Furthermore, they may also coincide in end users and distribution channels. The goods are, therefore, similar to a low degree.

The contested alpenstocks; mountaineering sticks; chalk bags being for use in climbing are articles and implements for practicing sports and climbing. Even though these goods have a different nature and purpose from the opponent’s clothing, footwear and headgear, which also includes sportswear and shoes for sports, undertakings that manufacture sports equipment may also manufacture sportswear. In this regard, the producers, end users and the distribution channels can be the same. Therefore, there is a low degree of similarity between the contested alpenstocks; mountaineering sticks in Class 18 and the opponent’s clothing, footwear and headgear in Class 25.

The contested luggage; trunks; walking sticks; walking stick seats; umbrellas; harness straps; cases; cases of leather or imitation leather; boot liners; sacks and bags and liners for the aforesaid goods [luggage; travel bags; trunks; kit bags; travelling sacks; backpacks; rucksacks; holdalls, wash bag holdalls; garment bags; pouches; satchels; slings and backpacks for carrying babies and/or children; alpenstocks; mountaineering sticks; walking sticks; walking stick seats; umbrellas; harness straps; wallets and purses; cases; cases of leather or imitation leather; boot liners]; parts and fittings for the aforesaid goods [luggage; travel bags; trunks; kit bags; travelling sacks; backpacks; rucksacks; holdalls, wash bag holdalls; garment bags; pouches; satchels; slings and backpacks for carrying babies and/or children; alpenstocks; mountaineering sticks; walking sticks; walking stick seats; umbrellas; harness straps; wallets and purses; cases; cases of leather or imitation leather; boot liners; sacks and bags and liners for the aforesaid goods] are cases or boxes for storing or transporting personal articles, sticks used for support in walking, covers for protection from rain, snow or sun, strips attached to a horse’s body or head to control it, layers of material used on the inner side or surface of boots, and sacks, bags and liners for storing or protecting all the preceding goods, as well as parts and fittings of all the preceding goods. These goods do not share any relevant points of contact with the earlier goods in Class 25. They clearly differ in nature, purpose and method of use. Furthermore, they do not coincide in producers, end users or distribution channels and they are not complementary or in competition. Therefore, they are dissimilar.

Contested goods in Class 25

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

The contested boots; ski-boots; sandals; shoes; sports shoes; galoshes; mules are included in the broad category of the opponent’s footwear. Furthermore, the contested caps; hats; headbands; sun visors are included in the broad category of the opponent’s headgear. Finally, the contested gaiter straps; gaiters; hosiery; jackets; jumpers; leggings; outer-clothing; overcoats; parkas; scarves; socks; gloves; neckwear; neckgear; thermal underwear; T-shirts; trousers; shorts; waterproof clothing; wetsuits; money belts; articles of outerclothing but not including waxed jackets are included in the broad category of the opponent’s clothing. Therefore, all these contested goods are identical to the corresponding opponent’s goods.

The contested inner soles and the opponent’s footwear can coincide in producer, end user and distribution channels. Furthermore, they may be complementary. The goods

are similar.

The remaining contested goods, namely iron fittings for boots; non-slipping devices for boots; liners for clothing are parts of footwear and clothing. The mere fact that they are used for manufacturing end products that belong to Class 25 is not enough to render them similar to the opponent’s goods in this class. They are usually destined to undertakings that manufacture the end product and, therefore, they target different publics, have different distribution channels and are not usually produced by the same kind of undertakings. They also differ in nature, purpose and method of use. Furthermore, these parts of footwear and clothing are not in competition with the opponent’s goods and cannot be considered as complementary. Therefore, they are considered dissimilar to all the opponent’s goods.

Contested goods in Class 28

The opponent’s clothing, footwear and headgear may include sportswear and shoes for sports, namely items of apparel designed specifically to be worn when practising sport. The purpose and nature of these goods are different from those of the contested sporting and climbing equipment; climbers' harnesses, which are articles and implements for practicing sports and climbing. However, undertakings that manufacture sports equipment may also manufacture sportswear. In this regard, the producers, end users and the distribution channels can be the same. Therefore, there is a low degree of similarity between the contested sporting and climbing equipment; climbers' harnesses in Class 28 and the opponent’s clothing, footwear and headgear in Class 25, which also includes sportswear and shoes for sports.

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 to varying degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

MOUNTAIN BEARS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the signs are not meaningful in certain territories, for example, in those countries where Slavic languages are spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Slavic-speaking part of the public such as Polish-, Czech-, Slovakian-, Slovenian-, Croatian- and Bulgarian-speaking areas.

In this regard, contrary to the applicant’s assertions, the use of English language is not widespread across the European Union and, in particular, in the above-mentioned territories on which the comparison has been focused. The Court has confirmed that the general public in the Scandinavian countries, the Netherlands and Finland has at least a basic understanding of English (26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23) but in the remaining non-English-speaking countries English is not normally understood. Furthermore, as regards areas of expertise, IT professionals and scientists are generally considered to be more familiar with the use of technical and basic English vocabulary than the average consumer, irrespective of territory (27/11/2007, T-434/05, Activy Media Gateway, EU:T:2007:359, § 38, 48 for the IT field (C-57/08 P dismissed); 09/03/2012, T-207/11, Isense, EU:T:2012:121, § 21-22 for German professionals in the medical field). However, the same cannot be extended to other goods like the present ones in classes 18, 25 and 28. Furthermore, the Opposition Division is of the opinion that these are not very basic English words that will be understood in all Member States and, moreover, the applicant has not provided compelling evidence that these words are known by a significant portion of the relevant public. Finally, the respective words in these various languages, for example for the common word ‘MOUNTAIN’ is totally different (‘góra’ in Polish, ‘hora’ in Czech and Slovakian, ‘gore’ in Slovenian, ‘planina’ in Croatian and ‘планина’ (planina) in Bulgarian).

Therefore, the verbal elements constituting both signs have no meaning for the part of the relevant public on which the comparison has been focused and, therefore, have an average degree of distinctiveness.

The figurative element of the contested sign will be associated with the silhouette of a mountain chain. Bearing in mind that part of the relevant goods are articles or equipment that can be used in hiking/mountaineering, this element is weaker than normal for part of these goods, namely for travelling sacks; backpacks; rucksacks; holdalls, pouches; satchels; slings and backpacks for carrying babies and/or children; alpenstocks; mountaineering sticks; chalk bags being for use in climbing in Class 18, clothing, footwear and headgear; boots; ski-boots; sandals; shoes; sports shoes; caps; hats; headbands; sun visors; gaiter straps; gaiters; galoshes; hosiery; inner soles; jackets; jumpers; leggings; outer-clothing; overcoats; parkas; scarves; socks; gloves; neckwear; neckgear; thermal underwear; T-shirts; trousers; shorts; waterproof clothing; articles of outerclothing but not including waxed jackets in Class 25 and sporting and climbing equipment; climbers' harnesses in Class 28. The figurative element is distinctive in connection with the remaining goods, namely for travel bags; kit bags; wash bag holdalls; garment bags; wallets and purses in Class 18 and wetsuits; money belts; mules in Class 25.

However, even regarding these latter goods, 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).

Furthermore, the contested sign contains a figurative element of a purely decorative nature, namely the underlining of the verbal element ‘MOUNTAIN’. Therefore, this element has a low distinctiveness.

Contrary to the parties’ claims, the signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements. Therefore, the opponent’s indication that the element ‘MOUNTAIN’ is the dominant element and the applicant’s claim that the silhouette of the mountain ridge in the contested mark is the dominant element must both be set aside.

However, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, which in this case is their common verbal element ‘MOUNTAIN’. 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.

Visually, the signs coincide in their first verbal element ‘MOUNTAIN’ that is a coincidence in eight letters out of thirteen in each sign and is written in a standard typeface in the contested sign. In this regard, even though the applicant states that ‘the opponent has not advanced a positive case on visual similarity’ and that ‘it should therefore be accepted that the marks are visually dissimilar’, in the Opposition Division opinion the visual similarity is evident without the need of any complex analysis between the signs. The signs differ in their respective second verbal elements, ‘BEARS’ of the earlier mark and ‘RIDGE’ of the contested sign, in the position of the verbal elements one below the other in the contested sign, as well as in the merely decorative underlining of the element ‘MOUNTAIN’ and the figurative element (including colours) of the latter, that has been considered weaker than normal for the vast majority of the relevant goods and/or with a lower impact regarding all the relevant goods.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the first eight letters ‘MOUNTAIN’, present identically in both signs. The pronunciation differs in the sound of the respective five letters placed at the end of these long signs, namely ‘BEARS’ in the earlier mark and ‘RIDGE’ in the contested sign. As a result of their similar word structure and longitude, their rhythm and intonation are significantly similar.

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

Conceptually, although the public in the relevant territory will perceive the weaker than normal meaning of the figurative element of the contested mark (in relation to the vast majority of the relevant goods) and/or with a lower impact regarding all the relevant goods, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs 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.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 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).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). This is known as the interdependency principle.

In the present case, the contested goods are partly identical and similar to varying degrees and partly dissimilar to the goods on which the opposition is based. The earlier mark has a normal degree of distinctiveness in relation to all the relevant goods and the public at large will pay a normal degree of attention when purchasing the goods.

The earlier sign, ‘MOUNTAIN BEARS’, and the contested mark, ‘MOUNTAIN RIDGE’, are visually and aurally similar to an average degree to the extent that they coincide in eight letters and sounds occurring at the beginning of these verbal elements, whereas the signs also coincide aurally in their word structure and longitude and, thus, in their rhythm and intonation. The differences between the signs are confined to their last five letters and sounds, a place where they will have less impact on the consumer and to the decorative underlining and to the weaker than normal figurative element for the vast majority of the relevant goods and/or with a lower impact regarding all the relevant goods.

In addition, account should be taken of the fact that average consumers 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). Based on this principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting goods come from the same undertaking or economically linked undertakings.

Furthermore, it should also be borne in mind that 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 covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical and similar goods, even those only similar to a low degree, as a result of the principle of interdependence. Therefore, the relevant public may believe that the goods come from the same undertaking or, at least, economically-linked undertakings.

The applicant refers to a previous decision of the Office to support its 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 case referred to by the applicant is not relevant to the present proceedings, because even though the signs contain the common word ‘MOUNTAIN’ they are not overall comparable because of their totally different second elements (‘HORSE’ vs ‘DESIGNS’), respective figurative elements and relevant territory (Sweden, where English is understood by a considerable proportion of consumers).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-, Czech-, Slovakian-, Slovenian-, Croatian- and Bulgarian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark 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.

It follows from the above that the contested trade mark must be rejected for the goods 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.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Inés GARCÍA LLEDÓ

Eva Inés PÉREZ SANTONJA

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.