OPPOSITION No B 2 646 001

zero Holding GmbH & Co. KG, Konsul-Smidt-Str. 8G, Speicher 1, Haus 2-4, 28217 Bremen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft Mbb – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

IST Sports Corp., Room A, 6F, No. 6, Lane 345, Yang-Kuang St. Neihu, Taipei 114, Taiwan (applicant), represented by Kolster Oy Ab, Salmisaarenaukio 1, 00180 Helsinki, Finland (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 646 001 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 685 309. The opposition is based on European Union trade mark registration No 5 345 798. 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.

1. The goods and services

Following a modification of the earlier mark, the goods and services on which the opposition is based are the following:

Class 3: Cosmetic soaps; perfumery, essential oils, articles for body- and beauty-care.

Class 9: Spectacles including sunglasses.

Class 14: Jewellery, including costume jewellery; clocks and watches, watchstraps.

Class 18: Bags included in Class 18.

Class 25: Outer clothing, including knitted and woven clothing; footwear, headgear, belts (except belts made of common and precious metals and imitations thereof) (clothing), gloves (clothing), scarves, headscarves and neckerchiefs.

Class 26: Belt buckles (clothing accessories).

Class 35: Retail services, including for mail order, by means of teleshopping channels and via the Internet, in relation to clothing, headgear and footwear, leatherware (including clothing), cosmetics, perfumery, eyewear, wrist watches and pocket watches, jewellery; presentation of goods in shops, trade fairs and on communications media, for retail purposes; professional business consultancy and marketing for others; franchising, namely providing of organisational know-how.

Following a restriction made by the applicant, the contested goods are the following:

Class 9: Protective clothing for the prevention of injury.

Class 25: Protective clothing for sports; Headbands; Waistbands; Hoods.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

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 contested protective clothing for the prevention of injury is similar to a low degree to the opponent’s outer clothing. The contested goods are used for protection against accidents or injuries. The opponent’s goods in Class 25 include outer clothing, including knitted and woven clothing; footwear, headgear, while the contested goods are different items of clothing intended for protection against accidents, fire or injury. There is a fine line between protective clothing and ordinary clothing. Protective clothing is used not only in laboratories and hospitals and in dangerous professions such as fire fighting, but also by the general public for activities such as high-risk sports. In this sense, these goods have the same nature, method of use and relevant public. Therefore, the contested goods are similar to a low degree to the opponent’s goods.

Contested goods in Class 25

The contested headbands; hoods are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested waistbands are included in the broad category of the opponent’s outer clothing, including knitted and woven clothing. Therefore, they are identical.

The contested protective clothing for sports is similar to a low degree to the opponent’s outer clothing, including knitted and woven clothing in Class 25. As explained above, both categories of goods have the same nature and method of use and target the same public.

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 similar to a low degree (e.g. protective clothing for the prevention of injury) or identical (e.g. headbands) are directed at the public at large and at customers with specific professional knowledge or expertise.

The degree of attention will vary from average (e.g. for headbands) to high (e.g. for protective clothing for the prevention of injury).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a figurative mark consisting of the verbal element ‘zero’ depicted in stylised lower case letters.

The word ‘ZERO’ is an English word which refers to the number ‘nought’. In relation to the perception of this word in the European Union, the Board of Appeal has held that (01/03/2011, R 380/2010-2, ZYRO / zero):

43. It is difficult to establish with certainty if the average consumer in the entire Community will understand its meaning (as the figure or symbol ‘0’). It is true that in many Member States the national equivalent of the English word ‘zero’ is very different (including Germany and other Member States in which Germanic or Slavic languages are spoken). However, it should also be noted that the Courts have considered on various occasions that the average consumer in the Community as a whole would understand certain English words (e.g. see judgment of 21 January 2010, T-309/08, ‘G Stor’, para. 32 in which it was considered that the element ‘star’, is a word which is part of basic English vocabulary, the meaning of which is widely understood throughout the Community, or see judgment of 16 January 2008, T-112/06, ‘Idea’, para. 69, second sentence: ‘[f]urthermore, ‘idea’ is a basic expression in English, the meaning of which is generally known even to the non-English-speaking public, or the judgment of 3 March 2004, T-355/02, ‘Zirh’, para. 46: ‘…it is likely that the average consumer in the Member States will think of the English word ‘sir’ given the widespread acquaintance with that word in Europe’.

44. If it is considered that words ‘star’, ‘idea’ or ‘sir’ can be understood by the relevant public in the entire Community, the Board, without any evidence proving the contrary, sees no reason not to come to the same finding as concerns the perception by the relevant public in the Community, that is all Member States, as regards such a basic and common English word as ‘zero’. As to the word ‘zero’ the Board notes, furthermore, that it is rather common for the relevant public in the entire Community to be confronted with this sign on, for example, (the packaging of) non-alcoholic beverages (indicating they have zero sugar).

The element ‘ZERO’ of the earlier mark will be understood as referring to ‘no quantity or number; nought; the figure 0’ (information extracted from Oxford Dictionaries on 01/08/2017 at https://en.oxforddictionaries.com/definition/zero) by the relevant public. In line with the reasoning of the Board of Appeal in the decision referred to above, the Opposition Division, without any evidence proving the contrary, sees no reason not to come to the same finding as concerns the perception by the relevant public in the Community, that is all Member States, as regards such a basic and common English word as ‘zero’.

As the word ‘ZERO’ has no meaning in relation to the relevant goods, it is not descriptive, allusive or otherwise weak for these goods; therefore, it is distinctive.

The contested sign is a figurative sign containing the verbal elements ‘NON ZERO GRAVITY’ in stylised bold white upper case letters, except for three of the letters (‘N’, ‘Z’ and ‘O’), which are red. Its background is a black rectangle and beside the letters there is a decorative triangle.

The element ‘GRAVITY’ of the contested sign means, inter alia, ‘the force that attracts a body towards the centre of the earth, or towards any other physical body having mass’ (information extracted from Oxford Dictionaries on 01/08/2017 at https://en.oxforddictionaries.com/definition/gravity). This meaning will be understood by parts of the relevant public (e.g. the English-speaking public, and the Spanish- and Italian-speaking parts of the public, which have similar words for ‘gravity’,‘gravedad’ and ‘gravità’, respectively). The meaning of ‘ZERO’ is explained above and the word ‘NON’ is an English prefix ‘expressing negation or absence’ (information extracted from Oxford Dictionaries on 01/08/2017 at https://en.oxforddictionaries.com/definition/non-), which, being a basic English word, will be understood by the relevant public. Therefore, the contested sign will be understood as ‘lacking weightlessness’ by the relevant public.

Neither of the signs in conflict has any elements that could be considered clearly more dominant or distinctive than others.

Visually, the signs coincide in the word ‘ZERO’, which is the earlier mark’s sole element. However, they differ in the additional words, ‘NON’ and ‘GRAVITY’, and in the additional figurative elements, namely the colours, stylised script and decorative triangle, of the contested sign. The position of the coinciding word ‘ZERO’ in the middle of the contested sign makes it slightly less noticeable.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the letters ‘ZERO’, present identically in both signs, although in different positions. The pronunciation differs in the sounds of the letters ‘NON’ and ‘GRAVITY’ of the contested mark, which have no counterparts in the earlier sign. As the contested sign has a different beginning and finishes with a relatively long, independent word, the coinciding word ‘ZERO’ has less aural impact.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the parts of the public that understand both signs (e.g. the English-speaking public, and the Spanish- and Italian-speaking parts of the public, which have similar words for ‘gravity’), as the signs will be associated with dissimilar meanings, the signs are not conceptually similar.

For the part of the public that does not understand the word ‘gravity’ of the contested sign and understands the word ‘ZERO’ in both signs and the prefix ‘NON’ in the contested sign, the signs are conceptually similar to a low degree.

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 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 goods are partly identical and partly similar to a low degree.

The earlier mark is a one-word figurative sign and the contested mark is a figurative mark composed of three words and additional figurative elements. The signs are visually and aurally similar to a low degree due to the coinciding word ‘ZERO’; however, the contested sign is composed of three words and figurative elements. The signs are not conceptually similar for a part of the relevant public and are conceptually similar for another part of the relevant public.

Although the signs coincide in the word ‘ZERO’, this word is in the middle of the contested sign, which makes it less prominent. In addition, there are sufficient visual differences, due to the figurative and additional verbal elements (the first word, ‘NON’, the last, relatively long word, ‘GRAVITY’, the stylised script, the colours and the decorative triangle) of the contested mark, to result in the signs creating significantly different overall visual impressions, even for the part of the relevant public that understands the concept of only the word ‘ZERO’.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the additional verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them.

In the case at issue, the additional elements are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks.

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).

Considering all the above, even for partly identical and partly similar to a low degree, goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sandra KASPERIŪNAITÉ

Dorothée SCHLIEPHAKE

Patricia LÓPEZ FERNÁNDEZ DE CORRES

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.