OPPOSITION No B 2 714 486

Ahlers AG, Elverdisser Str. 313, 32052 Herford, Germany (opponent), represented by Dompatent Von Kreisler Selting Werner – Partnerschaft Von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative)

a g a i n s t

Hangzhou Pioneer Clothing Co. Ltd., No. 11, Hongtai Fourth Rd., Hongken Farm, ETDZ, Xiaoshan Dist., Hangzhou, Zhejiang, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 17/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 714 486 is upheld for all the contested goods.

2.        European Union trade mark application No 15 214 885 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 214 885. The opposition is based on, inter alia, German trade mark registration No 30 2010 057 326. 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 German trade mark registration No 30 2010 057 326.

1. The goods

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Clothing; layettes [clothing]; clothing for gymnastics; footwear; hats; hosiery; gloves [clothing]; scarves; suspenders; masquerade costumes.

The contested clothing and footwear are identically contained in both lists of goods.

The contested layettes [clothing]; clothing for gymnastics; hosiery; gloves [clothing]; scarves; suspenders; masquerade costumes are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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

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

3. The signs

Pioneer
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 word mark consisting of the verbal element ‘Pioneer’.

The contested sign is a figurative mark consisting of the black graphic representation of a man hiking, as shown above, and, underneath, of the verbal elements ‘Pioneer Camp’ in a standard black capitalized case.

The common verbal element ‘PIONEER’ will be understood as such by the relevant public since it is very close to the German equivalent ‘PIONIER’, to be the first at something in the sense of innovator. In any case, as it is not directly descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. However, the word ‘CAMP’ in the contested sign, that will be understood as well since it is identical in German, and the graphic representation of a man hiking are weak since they can give indication about the type of clothing and footwear the trade mark is meant for.  

The contested sign has no elements that could be considered clearly more dominant than other elements.

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).

 Visually and aurally, the signs coincide in the verbal element ‘PIONEER’ and in its corresponding sound. This element is the first verbal element the public will focus on and use to refer to the contested sign 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. However, the signs differ in the additional word/sound ‘CAMP’ and in the figurative element in the contested sign that have no counterpart in the earlier mark but which distinctive character in relation to the goods at hand is weak.

Therefore, taking into consideration the distinctive role of the common element, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the concept conveyed by the word ‘PIONEER’ which is distinctive compared to the rest of the elements composing the contested sign, the signs are highly 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 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

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case the goods are identical and the signs are visually, aurally and conceptually highly similar on account of the fact that the only element of the earlier mark is entirely reproduced in the contested sign and that it plays a distinctive role in both of them. Although in the contested sign the verbal elements are not placed in the first row, as already mentioned, the verbal components of a sign usually have a stronger impact than the figurative elements and consequently, the verbal element ‘PIONEER’ will be the element that first catches the attention of the reader.

Moreover, the additional elements in the contested sign are not sufficient to counteract the similarity existing since they will not have as much of an impact on consumers due to their allusive role.

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.

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 that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

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 German trade mark registration No 30 2010 057 326. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right German trade mark registration leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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.

The Opposition Division

Benoit VLEMINCQ

Sandra IBAÑEZ

Pedro JURADO MONTEJANO

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.