OPPOSITION No B 2 625 146

El Corte Ingles, S.A., Hermosilla, 112, 28009 Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 – 1º izda, 28010 Madrid, Spain (professional representative)

a g a i n s t

Sorensen & Sorensen GbR, Schönbergstraße 38, 73760 Ostfildern, Germany (applicant), represented by Spieß Schumacher Schmieg & Partner Rechtsanwälte,

Märkisches Ufer 34, 10179 Berlin, Germany (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 625 146 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 275 499. The opposition is based on European Union trade mark registrations No 4 782 041 and No 13 102 868, as well as on the Spanish trade mark registration No 2 568 172. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark registrations No 4 782 041 and No 13 102 868 and Spanish trade mark registration No 2 568 172.

The request was filed in due time and is admissible, as far as it concerns the earlier trade marks European Union trade mark No 4 782 041 (for the word mark ‘OUTDOOR PRO’, for good and services in Classes 9, 14, 25, 28 and 35)  and Spanish trade mark registration No 2 568 172 (for the figurative mark , for goods in Classes 25 and 28) that were registered for more than five years prior to the relevant publication date (29/09/2015) referred to above.

On 15/09/2016, the opponent was given two months to file the requested proof of use. The opponent did not provide any evidence in relation to the relevant earlier rights.

According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected as long as it is based on European Union trade mark registration No 4 782 041 pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR, and on Spanish trade mark registration No 2 568 172, pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

The examination will proceed on the basis of EUTM No 13 102 868, for which the grace period applied and in respect to which no proof of use was required from the opponent, as indicated by the Office in the communication to the parties of 15/09/2016.

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

The goods and services, on which the opposition is based and covered by the relevant EUTM No 13 102 868, are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 12: Vehicles; apparatus for locomotion by land, air or water.

Class 14: Precious metals and their alloys; jewellery, precious stones; horological and chronometric instruments.

Class 18: Leather and his/her imitations; animal skins, hides; trunks and travelling bags; umbrellas and parasols; 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.

Class 35: Advertising; business management; business administration; office functions; wholesaling, retailing and sale via global computer networks of scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking, life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, coin-operated apparatus, data processing equipment and computers, vehicles, apparatus for locomotion by land, air and water, precious metals and their alloys, jewellery, horological instruments, leather and imitations of leather, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, harness and saddlery, ropes, nets, tents, awnings, tarpaulins, sails, sacks and bags, raw fibrous textile materials, textiles and textile goods, bed covers, table covers, clothing, footwear, headgear, games and playthings, gymnastic and sporting articles, decorations for Christmas trees.

The contested goods and services are the following:

Class 9: Sports eyewear; sports glasses; opticians' goods; sunglasses; protective helmets for sports; media content; recorded content; DVDs; instructional DVDs; tennis instruction videos; databases (electronic); software; diving equipment; sports training simulators; none of the aforesaid goods being designed for cycling.

Class 10: Physical therapy equipment; medical clothing; orthopaedic and mobility aids; prosthetics and artificial implants; hearing protection devices; physical therapy equipment; medical and veterinary apparatus and instruments; medical furniture and bedding, equipment for moving patients; compression garments; compression underwear; compression bandages; exercising apparatus for medical rehabilitative purposes; suspensory bandages for use in sports; knee guards in the nature of supports [other than sports articles]; weights for physical exercise [adapted for medical use]; apparatus for achieving physical fitness [for medical use]; apparatus for electrical muscle stimulation; physical exercise apparatus, for medical purposes; apparatus for use in exercising muscles for medical use; respiratory therapy instruments; parallel bars for medical therapeutic use; computer controlled training apparatus for therapeutic use; cushions (heating -), electric, for medical purposes; massage apparatus; physiotherapy and rehabilitation equipment; rowing machines for physical exercise [for medical use]; treadmills for medical use in physiotherapeutic exercise; step-up machines for use in physiotherapy; support garments for medical use; therapeutic hosiery; corsets for curative purposes.

Class 14: Horological instruments; horological instruments; timekeeping systems for sports; sports watches; jewellery boxes and watch boxes; jewels; key rings [trinkets or fobs].

Class 16: Printed matter; stationery and educational supplies; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; books; tickets; flyers; photographs; cards; calendars; posters; events programmes; manuals for instructional purposes; appointment books; magazines [periodicals]; newspapers.

Class 25: Clothing; gym suits; sports jackets; sports socks; sports pants; athletics shoes; athletics vests; sports underwear; sports headgear [other than helmets]; headgear; footwear; none of the aforesaid goods being designed for cycling.

Class 28: Sporting articles and equipment; sportballs; grips for rackets; grip tape for racquets; protective covers for rackets; strings for rackets; tennis racket strings; string materials for sporting racquets; tennis rackets; bags specially adapted for sports equipment; sportballs; ball inflators; ball pitching machines; tennis ball throwing apparatus; elbow guards [sports articles]; cases for tennis balls; fist protectors [sporting articles]; fitness exercise machines; soccer balls; golf irons; golf practice apparatus; golf balls; golf gloves; golf clubs; golf club bags; gloves made specifically for use in playing sports; racquet ball gloves; bar-bells; climbers' harness; knee guards [sports articles]; rowing machines; protective padding for sports; swimming equipment; skis; ski boards; sailboards; tennis ball retrievers; tennis balls; tennis nets; tennis rackets; trampolines; sporting articles not included in other classes; toys, games, playthings and novelties; toys adapted for educational purposes; electronic educational teaching games; hunting and fishing equipment.

Class 35: Business management of sports people; professional business consulting; sponsorship search; rental of advertising space; commercial administration of the licensing of the goods and services of others; arranging advertising contracts for others; marketing services; arranging of commercial and business contacts; advertising; agency services for promoting sports personalities; promotional management for sports personalities; retail services in relation to sporting articles; retail services in relation to sporting equipment; retailing in the fields of sporting goods, sportswear, sports shoes, sports equipment, in particular tennis rackets and tennis balls, pharmacy articles, bag makers' goods and saddlery, in particular sports bags, foodstuffs and beverages; retailing in relation to hearing protectors, physiotherapy apparatus, medical clothing, medical and veterinary apparatus and instruments, compression clothing, compression underwear, compression bandages, sports apparatus for use in medical rehabilitation, support bandages for use when playing sport; business management of sporting facilities [for others]; advertising, including promotion of products and services of third parties through sponsoring arrangements and licence agreements relating to international sports' events; business analysis, research and information services; business assistance, management and administrative services; commercial trading and consumer information services; advertising, marketing and promotional services; public relations services; provision of advertising space, time and media; advertising and marketing consultancy; arranging and conducting of sporting events for advertising and sales promotion purposes; none of the aforesaid services being intended for cycling.

Class 41: Educational instruction; coaching [training]; workshops (arranging and conducting of -) [training]; sports coaching; educational services relating to sports; training of sports players; exercise [fitness] advisory services; provision of information relating to sports; information relating to sports education; provision of instruction relating to nutrition; adult training; conducting courses, seminars and workshops; development of educational materials; personnel training; personal development training; tutoring; physical-education services; educational services relating to sports; swimming instruction; instructional services for skiing; tennis instruction; training of sports teachers; fitness and athletic training; recreation information; recreation facilities (providing -); provision of sporting club facilities; providing sports facilities; sport camp services; provision of leisure facilities; golf facilities (providing -); providing sports facilities; providing sports facilities; physical fitness centres (operation of -); swimming facilities; health club services [health and fitness training]; horse riding schools; providing sports training facilities; gymnasium club services; provision of sporting club facilities; provision of training facilities; physical education facilities (provision of -); indoor tennis centres; booking of sports facilities; rental of stadium facilities; rental of tennis courts; rental of sports grounds; providing facilities for sports events; services for the provision of exercise equipment; education, entertainment and sports; sporting and cultural activities; sporting and recreational activities; sports and fitness; sporting and cultural activities; entertainment services relating to sport; entertainment; coaching services for sporting activities; sporting services; organisation of sports competitions; arranging and conducting of sporting events, competitions and sports tournaments; provision of recreational activities; providing facilities for sporting events, sports and athletic competitions and awards programmes; organising and conducting tennis tournaments; publication of printed matter; translation and interpretation; publishing and reporting; box office services; ticket procurement services for sporting events; photography; production of television and radio programs; production of training videos; production of films for educational purposes; animal training.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 and services assumed to be identical are directed at the public at large, as well as at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services. For instance, in its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of goods in Class 14, such as watches and jewels. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed. Furthermore, a higher degree of attention may be assumed also for some of the services in Class 35, mainly directed at professional public and having economic consequences for the parties, for instance services as business management, advertising and commercial administration.  

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 ‘mo/u/n/tain’ written in standard lower case letters, where the letters ‘u’ and ‘n’ share a main feature. Underneath in the right corner, with smaller upper case letters in grey, is placed the verbal element ‘PRO’ and on top of the sign are depicted three fanciful devices, two of them blue circles with white geometrical elements inside and one placed in between a stylised x-cross depicted in black.

The contested sign is a figurative mark consisting of a highly stylised verbal element, which may be read as ‘PRO’, written in white characters against a black square.  

As a preliminary remark, it has to be noted that when assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark’s verbal element ‘mo/u/n/tain’ will be understood by a part of the public, in particular the English-speaking part of the public, as ‘a very high area of land with steep sides’. Furthermore, this verbal element may be perceived also by other parts of the public with similar equivalents, in particular in French, Spanish, Italian, etc. Therefore, for that part of the public, this verbal element will have an allusive or descriptive character in relation to some of the goods and services in question, in particular goods and services in Classes 9, 14, 25 and 28, that might be in a way related to mountain activities and products (for instance, specialised devices, equipment, articles and clothing, etc.).    

The word ‘PRO’, present in the earlier mark and eventually readable in the stylised element of the contested sign for part of the public, will be associated by a significant part of the public, in particular the English-, German- and French-speaking part of the public, with the word ‘professional’, which might be perceived, inter alia, as ‘extremely competent in a job, etc.’, ‘produced with competence or skill’, ‘an expert player of a game who gives instruction’, etc. On the other hand, the word also designates the positive concept of ‘in favour of’ or ‘for’, for instance a certain idea or matter or as in the expression ‘pros and cons’, and to that extent, it is familiar to the public throughout the European Union. Furthermore, as the General Court has stated (20/11/2002, T 79/01 & T 86/01, Kit Pro / Kit Super Pro, EU:T:2002:279, § 26-28; 15/11/2011, T 434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 64), the term ‘pro’ is ‘commonly used in trade for the presentation of all kinds of goods and services’. Insofar as the public perceives the word ‘pro’ as a laudatory or a vague term referring to the positive, or best, qualities, also associated with goods or/and services used by professionals, its distinctiveness is very limited in relation to the goods and services at issue and for any part of the relevant public. In addition, although a clear connection cannot be established between all the relevant goods and services and the relevant term ‘PRO’, it has to be considered that the EU public is accustomed to see the term and perceive it as devoid of particular distinctiveness in general.  

The contested sign has no elements that are more dominant than other elements. However, the verbal element ‘PRO’ in the earlier mark, due to its much smaller size and secondary position, in the right down corner of the sign, is less eye-catching than the remaining elements in the mark. Therefore, in the earlier mark the word ‘mo/u/n/tain’ together with the figurative elements represent the dominant elements of the sign.  

As indicated above, the element ‘mo/u/n/tain’ is understood in part of the EU and therefore is weak for this part of the public for the relevant goods and services mentioned above. The remaining part of the public has no understanding or the word itself does not relate to the nature or the characteristics of the goods and services in question and consequently, the term is of a normal distinctiveness for it; therefore, this part of the public will most likely focus on the more distinctive and dominant verbal element ‘mo/u/n/tain’ that has no counterpart in the contested sign. Therefore, the Opposition Division will first examine the opposition in relation to the part of the public for which the term has a meaning and has limited degree of distinctiveness, since this part of the public would be more prone to confusion.

Visually, the signs coincide in the verbal element ‘PRO’ to the extent that the contested sign will be read as such. However, the signs differ in the high stylisation of this element in the contested sign, as well as in all the remaining features that the earlier mark bears, especially the additional verbal element ‘mountain’ and the three figurative elements on top. As the signs coincide only in a verbal element with a limited distinctiveness, as stated above, and differ in all the remaining verbal and figurative elements, regardless of the less distinctiveness of the word ‘‘mo/u/n/tain’, they are considered visually not similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the verbal element ‘PRO’ to the extent that it will be pronounced in the earlier mark and seen as such in the contested sign.  The pronunciation differs in the other verbal element of the earlier mark, namely ‘mountain’ (to the extent that the letters ‘u’ and ‘n’ will be recognised and pronounced as such) and it has no counterpart in the contested mark. Considering that the signs coincide in the pronunciation of the verbal element ‘PRO’ and taking into account its limited distinctiveness, as well as the limited distinctiveness of the word ‘mo/u/n/tain’, it is concluded that 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. The signs are considered similar to a low degree to the extent that they merely coincide in the laudatory and/or vague term ‘PRO’ and bearing in mind the limited distinctiveness of the word ‘mo/u/n/tain’ itself.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive or weak element/s in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods and services are assumed to be identical to the opponent’s goods and services and the degree of attention is average or high, for the reasons indicated above in section b).

For the part of the public that perceives the element ‘PRO’ in both signs, the signs under comparison are visually dissimilar and aurally and conceptually only similar to a low degree. Moreover, to the extent that the word ‘PRO’ was considered of a generally weak character in relation to the goods and services in question, the similarities between the marks caused by this overlapping concept are also limited. It can be concluded that this element is secondary within the overall impression made by the earlier mark, regardless of the low distinctiveness of the word ‘mo/u/n/tain’, which, in any event, is not presented in the contested sign. Despite its less distinctive character, this word and the figurative elements on top of it still dominate the overall impression created by the mark at issue (also aurally and conceptually), with the result that consumers will retain them in their memory, whereas the other relatively smaller and secondary-positioned verbal element ‘PRO’ will be paid less attention or none.  On the other hand, the contested sign itself is a highly stylised verbal element that has its particularities by its graphical representation, for which the applicant has sought protection.  

Furthermore, many of the goods themselves, in particular the goods in Classes 9, 14, 25 and 28, are consumer products that are commonly purchased in outlets where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (see in this regard judgment of 15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). In such cases, the aural and conceptual similarity between the marks will be counterbalanced by the completely different visual impression that they convey, in particular due to their differentiating verbal and figurative elements with no counterpart in the contested sign, as these elements, regardless of their distinctiveness, will be still perceived, remembered and most likely used as a reference by the relevant public.

As far as it concerns the part of the public with no understanding of the verbal element ‘mo/u/n/tain’ and/or for which this verbal element will be distinctive in relation to all the relevant goods and services, the verbal element ‘mo/u/n/tain’ will only reinforce the different perception of the signs and therefore, for this relevant public the signs will be even less similar as in the case scenario discussed above; the public in such case will be able to safely distinguish between the two signs conveying a different overall impression.  

For the sake of completeness, it must be also noted that to the extent that the public does not perceive any readable verbal element in the contested sign, the marks in question are clearly dissimilar, as they will not coincide in any aspect.

In the light of the above said, even assuming that the goods and services in question are identical, 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

Volker MENSING

Patricia LOPEZ FERNANDEZ DE CORRES

Liliya  YORDANOVA

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.