OPPOSITION DIVISION
OPPOSITION No B 2 438 847
Joola Tischtennis GmbH & Co. KG, Wiesenstr. 13, 76833 Siebeldingen, Germany
(opponent)
a g a i n s t
Joy Group Ltd, 10-11 Bishops Terrace, London SE11 4UE, United Kingdom
(applicant), represented by Fox Williams LLP, 10 Finsbury Square, London City of
EC2A 1AF, United Kingdom (professional representative).
On 09/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 438 847 is upheld for all the contested goods, namely:
Class 25: Clothing; footwear; sportswear.
2. European Union trade mark application No 13 108 031 is rejected for all the
contested goods. It may proceed for the remaining goods and services
3. The applicant bears the costs, fixed at EUR 350.
REASONS
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against some of the goods of European Union trade
mark application No 13 108 031 for the word mark ‘OOLA’, namely against some of
the goods in Class 25. The opposition is based on European Union trade mark
registration No 11 760 791 for the word mark ‘JOOLA’. 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.
Decision on Opposition No B 2 438 847 page: 2 of 4
a) The goods
The goods on which the opposition is based are the following:
Class 18: Bags for sports.
Class 25: Clothing, footwear, clothing for playing sports.
The contested goods are the following:
Class 25: Clothing; footwear; sportswear.
Clothing; footwear; sportswear are identically contained in both lists of goods (despite
minor differences in wording).
b) 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.
c) The signs
JOOLA OOLA
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).
Both signs are word marks with no meaning in the relevant territory and are therefore
distinctive.
Visually, the signs coincide in the string of letters ‘*OOLA’ present in both signs.
However, the signs differ in the first letter of the earlier mark, namely ‘J’. Considering
the fact that the signs only differ in one letter and the contested sign is fully included
in the earlier mark, the signs are considered to be visually highly similar.
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 letters
‘*OOLA’ present identically in both signs. The pronunciation differs in the sound of the
Decision on Opposition No B 2 438 847 page: 3 of 4
letter ‘J’ of the earlier mark which has no counterpart in the contested sign. However,
this additional letter will not create significant aural differences between the signs,
since both, the contested sign and the earlier mark, will be pronounced in two
syllables, namely /JOO-LA/ and /OO-LA/ respectively and will have the same rhythm
and intonation. Therefore, the signs are aurally similar to a high degree.
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.
d) 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 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.
e) Global assessment, other arguments and conclusion
The Court has stated that likelihood of confusion must be appreciated globally, taking
into account all the factors relevant to the circumstances of the case; this
appreciation depends on numerous elements and, in particular, on the degree of
recognition of the mark on the market, the association that the public might make
between the two marks and the degree of similarity between the signs and the goods
and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods are identical. They target the public at large with an average degree of
attention. The signs are visually and aurally similar to a high degree and the
conceptual comparison is not possible. Furthermore, the earlier mark has a normal
degree of distinctiveness.
Account is 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). In an overall assessment of the relevant factors of the case, it is concluded that
the difference identified between the signs, namely one letter, is clearly insufficient to
enable the relevant public to safely distinguish between the signs.
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 European
Union trade mark registration No 11 760 791. It follows that the contested trade mark
must be rejected for all the contested goods.
Decision on Opposition No B 2 438 847 page: 4 of 4
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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. In
the present case, the opponent did not appoint a professional representative within
the meaning of Article 120 EUTMR and therefore did not incur representation costs.
The Opposition Division
Marta GARCÍA COLLADO Jorge ZARAGOZA
GOMEZ
Vanessa PAGE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.