OPPOSITION No B 2 743 550

Reebok International Limited, 4th Floor 11-12 Pall Mall, London SW1Y 5LU, United Kingdom (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

RBX Creations, 4 Rue des puits de Romas, 17520 Neuillac, France (applicant).

On 14/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 743 550 is partially upheld, namely for the following contested goods and services:

Class 25:        Headgear; footwear; clothing; hats.

Class 28:        Sporting articles and equipment.

2.        European Union trade mark application No 15 130 644 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 130 644. The opposition is based on, inter alia, European Union trade mark registration No 2 895 019. The opponent invoked Article 8(1) (b) and 8(5) EUTMR.

Preliminary remarks

Initially, in the notice of opposition the opponent invoked Articles 8(1)(b) and 8(5) EUTMR in relation to the present opposition, however, in the observations filed with the Office on 14/02/2017, the opponent clearly withdrew Article 8(5) EUTMR. Therefore, the Opposition Division will only proceed with the analysis of the likelihood of confusion – 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 European Union trade mark registration No 2 895 019.

1. The goods and services

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

Class 9:        Pre-recorded audio and video cassettes; eyewear, eyewear cases, eyewear neck cords, eyewear cleaning cloths, goggles, sunglasses; pedometers; heart rate monitors for fitness training, sports and recreational use; protective helmets for cycling, football, skiing, hockey and auto racing.

Class 14:        Jewellery.

Class 18:        Luggage, all purpose sports bags, duffel bags, tote bags, knapsacks, shoulder bags.

Class 25:        Footwear, apparel, headwear.

Class 28:        Sports equipment.

Class 32:        Beverages.

Class 35:        Retail and outlet store services.

The contested goods and services are the following:

Class 25:        Headgear; footwear; clothing; hats.

Class 28:        Sporting articles and equipment.

Class 35:        Commercial trading and consumer information services; business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional 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 25

The contested footwear is mentioned identically in the opponent’s specification.

The contested headgear is identical to the opponent’s headwear.

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

The contested clothing overlaps with the opponent’s apparel. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 28

The contested sporting articles and equipment includes, as a broader category, the opponent’s sports equipment. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

The contested commercial trading and consumer information services are mainly business support services such as processing orders, advisory services relating to the purchase of goods and services, arranging commercial contracts etc. They are not directly connected with the opponent’s retail and outlet store services. Their purpose and nature are different. The opponent’s services refer to the action of selling goods or commodities in relatively small quantities for use or consumption. Furthermore, this term is considered to be vague and in this context where the Office is unable to clearly determine the exact scope of protection of vague terms, the vagueness of the wording is not a sufficient basis in itself for arguing in support of identity or similarity. Vague term such as the one in the present case may only be taken into account in their most natural and literal meaning and may not be construed as relating to goods’/services’ qualities, properties, methods of use, etc. to which that term is not expressly limited. Therefore, the services under dispute are dissimilar.  Likewise, these services have nothing relevant in common with the opponent’s goods in Classes 9, 14, 18, 25, 28 and 32. They have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users. Therefore, these goods and services are dissimilar.

The contested business assistance, management and administrative services; business analysis, research and information services fall under the category of business services. These services are performed to organise and run a business. They do not relate to the actual retail of goods but are preparatory or ancillary to the commercialisation of goods. When comparing these contested services with the opponent’s services in Class 35, the Opposition Division finds them dissimilar. The opponent’s services in Class 35 consist in sale services allowing consumers to conveniently satisfy different shopping needs at one stop. They differ in their nature and purpose, as the opponent’s services relate to the process of selling goods through different channels and the contested services focus on providing tools, expertise and information to carry out business. They are neither in competition nor complementary and they are not usually offered by the same undertaking.

These services also have nothing relevant in common with the opponent’s goods in Classes 9, 14, 18, 25, 28 and 32. They have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users. Therefore, these goods and services are dissimilar.

The contested advertising, marketing and promotional services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. The earlier services are retail and outlet store services. The contested services do not share any points in common with the earlier services since they will not be provided by the same companies, through the same channels or aimed at the same consumers. They are not in competition with each other or complementary either. Therefore, the services at issue are dissimilar.

A fortiori these services also have nothing relevant in common with the opponent’s goods in Classes 9, 14, 18, 25, 28 and 32. They have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users. Therefore, these goods and services are dissimilar.

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 general public with an average degree of attentiveness.

3. The signs

RBK
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 word mark composed of three letters which seem to be an acronym ‘R-B-K’. The contested sign is a figurative mark composed of two verbal elements, a three-letter acronym ‘R-B-X’, written slightly diagonally in uppercase letters in bold and the English word ‘creations’, placed below and written in much smaller, uppercase standard letters. Both terms are placed on a creamy background, within two thin black lines, placed above and below the verbal elements.

The acronyms present in both signs, ‘RBK’ and ‘RBX’, will be perceived as such by the relevant public and their inherent distinctiveness is normal in relation to the goods and services in question.

For the part of the public that will perceive (due to its small script) and understand the second term ‘creations’ of the contested sign (for example the English-speaking part of the public but also there, where this term is nearly identical of very similar, like for example ‘créations’ in French, ‘creaciones’ in Spanish or ‘creazioni’ in Italian, etc.), this element is weak in the context of the relevant goods in Classes 25 and 28, as it may refer to stylish trendy designer garments. For the remaining part of the public the element ‘creations’ is hardly noticeable and therefore, its impact on the assessment of the likelihood of confusion between the sign in question is also limited.

The earlier mark has no element that could be considered more dominant than other elements.

As regards the contested sign, the verbal element ‘creations’ is much smaller and in a subordinate position as compared to the size and position of the dominant element ‘RBX’.

Visually, the signs coincide in the letters ‘RB-’, which constitute their respective beginnings and this aspect is of a great importance because consumers generally tend to focus on the first elements of a sign when being confronted with a trade mark. In the present case, it is reasonable to conclude that their last letters, ‘K’ of the earlier mark and ‘X’ of the contested sign also present a certain similarity from the visual point of view, due to the typical angles of their diagonal lines. Furthermore, the element ‘creations’ (for the part of the public that will be able to identify it) has been found weak in relation to the goods in question. The little differences arising from the remaining figurative elements can be easily overlooked by the relevant public because they are limited to mere ornamental elements (the colour of the background and two thin lines placed above and below the verbal elements in the contested sign). Therefore, taking into account the above-mentioned, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘R-B’, present identically in both signs. The pronunciation differs in the sound of the letter ‘K’ of the earlier mark and the letter ‘X’. For the part of the public that will be able to identify the secondary element ‘creations’ in the contested sign, the signs also differ aurally in this element. However, as mentioned above, for a part of the public this element is weak in relation to the relevant goods. For the remaining part of the public, taking into account its non-dominant position and the very small script in which this element is represented in the contested sign, it will probably not be pronounced. The remaining figurative elements of the contested sign do not play an aural role, as they will not be pronounced either. Therefore, the signs are aurally similar to an average degree.

Conceptually, although a part of the public in the relevant territory may perceive the meaning of the element ‘creations’ of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public. For the remaining part of the public, that will not be able to identify the verbal element ‘creations’ in the contested sign due to its very small script, 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.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C–342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C–251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods and services are partially identical and partially dissimilar to the ones covered by the earlier mark.

The signs are visually and aurally similar to an average degree. They coincide in the two letters/sounds ‘RB’, which constitute their respective beginnings and which will catch the attention of the public. In this regard it should also be noted that that their last letters, ‘K’ of the earlier mark and ‘X’ of the contested sign, have a certain similarity from the visual perspective. The additional differentiating elements present in the signs refer either to the non-dominant and almost negligible element ‘creations’, which  for a part of the relevant public constitutes a weak element in relation to the relevant goods or to the remaining figurative elements present in the contested sign, which, however, are not sufficient to differentiate the signs effectively. Consequently, the consumers will focus their attention on the letters playing a leading role within the signs in question.

Even considering that the coinciding element of the signs is short and there is a difference in the final letter, the aforementioned factors (importance of the coincidence in the initial two letters and a certain visual similarity in the last one), allied to the absence of other important differenting components in the contested mark, justify the conclusion that the marks convey a similar overall impression.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

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). This principle applies to the case at hand because the conflicting goods are identical.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 2 895 019.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

• European Union trade mark No 5 773 031 registered for the figurative mark , covering goods in Classes 9, 18, 25 and 28.

Since this mark is less similar to the contested sign and covers a narrower scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Monika CISZEWSKA

Boyana NAYDENOVA

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.