OPPOSITION No B 2 420 738
One Way Sport OY, Sähkötie 8, 01510 Vantaa, Finland (opponent), represented by Fieldfisher (Germany) LLP, Am Sandtorkai 68, 20457 Hamburg, Germany (professional representative)
a g a i n s t
Outerknown, LLC, 3300 La Cienega Place, Los Angeles, California 90016, United States of America (applicant), represented by Dehns, St Bride’s House, 10 Salisbury Square, London EC4Y 8JD, United Kingdom (professional representative)
On 03/03/2017, the Opposition Division takes the following
1. Opposition No B 2 420 738 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 12 983 789. The opposition is based on international trade mark registration No 999 876 designating the European Union. 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 goods
The goods on which the opposition is based are the following:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
The contested goods are the following:
Class 25: Apparel; clothing; tops and bottoms; headwear; footwear.
Contested goods in Class 25
Clothing; headwear; footwear are identically contained in both lists of goods (including synonyms).
The contested apparel; tops and bottoms are included in the broad category of the opponent’s clothing. Therefore, they are identical.
- 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 are directed at the public at large. The degree of attention is considered to be average.
- The signs
Earlier trade mark
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 two stylised letters ‘OW’ depicted in black upper case letters in a rather thick typeface, with a relatively thin black shadow both underneath the letters and under the upper inner circle of the letter ‘O’. There is also horizontal grey pixelated shading across the middle of the letters ‘OW’. For the majority of the relevant public, the letters ‘OW’ have no particular meaning in relation to the relevant goods and are, therefore, distinctive. The English-speaking part of the relevant public may perceive the earlier mark as the interjection ‘OW’, used as an expression of intense or sudden pain. However, this expression has no particular meaning in relation to the goods in question and is, therefore, distinctive for this part of the public as well.
The contested sign is a figurative mark consisting of two rather simple elements: one could be perceived either as a black circle (which would not be particularly distinctive, as it is a basic geometric shape) or as the numerical digit zero (in which case it might be perceived as a reference to the size of the relevant goods (for newborns) and therefore would also be non-distinctive); the other would be perceived as a black ‘less-than’ sign; or otherwise the two elements simply as an abstract figurative device (and therefore as distinctive). However, the contested sign could also be perceived as the letter ‘O’ and a less-than sign. In this case, the letter ‘O’ has no particular meaning in relation to the relevant goods and is, therefore, distinctive, whereas the ‘less-than’ sign, as such, will be attributed less trade mark significance, as it is a common and simple mathematical symbol.
Taking this into account, the Opposition Division finds it appropriate to first examine the opposition in relation to the part of the relevant public that perceives the contested sign as the letter ‘O’ and a less-than sign. This part of the relevant public would be more likely to confuse the signs, in view of the coincidence in the letter ‘O’, and this scenario therefore constitutes the opponent’s best case scenario.
Visually, the signs coincide in the letter ‘O’ at the beginning of each sign. However, they differ in the second letter, ‘W’, of the earlier mark and in the additional less-than symbol of the contested sign, which is considered weaker.
The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short signs small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.
Therefore, taking into account that the only similarity between the signs, which both consist of two components, is the first letter ‘O’, which is depicted in a rather different way in each sign, the signs are visually similar only 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 sound of the letter ‘O’, present identically in both signs. However, the pronunciation differs in the sound of the second letter, ‘W’, of the earlier mark, which has no counterpart in the contested sign. For the English-speaking part of the public, which may perceive the earlier mark as the interjection ‘OW’, the signs will be aurally similar only to a very low degree, if at all, as this interjection would be pronounced as /AƱ/.
However, as the less-than symbol in the contested sign is unlikely to be pronounced, the signs are aurally similar to an average degree for the part of the public in the relevant territory that pronounces the earlier mark as /OW/.
Conceptually, the earlier mark will be perceived either as having no meaning or as the interjection ‘OW’, and the contested sign will be associated with the semantic content outlined above; the signs are, therefore, 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.
- 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 the non-English-speaking part of the public and has no particular meaning in relation to the goods in question for the English-speaking part of the public, which may perceive the earlier mark as consisting of the interjection ‘OW’. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
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).
It should also be taken into account that both signs are short marks and that they differ in at least one letter/symbol, which is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.
In relation to all the contested goods, which are all in Class 25 and which are identical to the opponent’s goods, customers can themselves either choose the goods they wish to buy or be assisted by sales staff. Whilst oral communication in respect of the products and the trade mark is not excluded, the choice of these goods 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 in relation to these goods (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50).
In addition, experience shows that consumers are unlikely to refer to goods sold under a monogram or an acronym, as the earlier mark in the present case, by pronouncing the monogram or acronym itself. In marks in the fashion sector (to which the conflicting marks belong), the ornamental value of a monogram or acronym is particularly important. Therefore, the visual differences between the signs caused by the differing additional elements of the marks and their differing stylisation are particularly relevant when assessing the likelihood of confusion between them (see, in this respect, 10/10/2012, R 1974/2011-1, CO (fig.) / GG (fig.) et al., § 16).
Therefore, in relation to the contested goods in Class 25, which are identical to the opponent’s goods, and for which the relevant public’s degree of attention is average, the Opposition Division considers that even the average degree of aural similarity between the signs that exists for part of the relevant public is insufficient to outweigh the low degree of visual similarity between the signs caused by the incidental inclusion of the same first letter, ‘O’, in particular bearing in mind that the conflicting marks are short signs consisting of only two letters/symbols, one of which is completely different from the other and both of which are depicted differently. These clear differences between the signs will not go unnoticed by the relevant public and there is no reason to believe that consumers would assume that the goods in Class 25 offered under the signs in dispute originated from the same undertaking or from economically linked undertakings. Consequently, the signs are not sufficiently similar to lead to a likelihood of confusion.
For the part of the relevant public that perceives the earlier mark as an interjection, the differences between the marks will be even more striking, as a result of the additional conceptual distinction.
As explained above, the examined perception of the contested sign would be the opponent’s best case scenario as the signs would be even less similar for consumers that perceive the first component in the contested sign as a circle or a zero or otherwise as consisting of an abstract figurative device. Therefore, this part of the public would be even less likely to confuse the signs in dispute. As a result, there is no likelihood of confusion for this part of the public either.
Considering all the above, there is no likelihood of confusion on the part of the public irrespective of the components of which the contested sign is perceived to consist. Therefore, the opposition must be rejected.
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
Anunciata SEVA MICO
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.