OPPOSITION No B 2 699 547

R.O.U.G.H. Sportartikel Marketing & Vertriebs GmbH, Bahnhofstr. 109, 72411 Bodelshausen, Germany (opponent), represented by PGL Plegge, Gebauer & Löhr – Rechtsanwälte Partgmbb, Widukindstr. 19, 49477 Ibbenbüren, Germany (professional representative)

a g a i n s t

Universkate, SARL, 30 Rue Jacques Baudry, 75015 Paris, France (applicant).

On 22/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 699 547 is partially upheld, namely for the following contested goods:

Class 25:        Waist belts; Bonnets; Socks; Sports socks.

Class 28:        Roller skates; Sporting articles and equipment; In-line roller skates;  Ice skates; Skates; Ice skate blades; Ice hockey skates; Bags for skateboards; Elbow guards for use in skateboarding; Athletic protective wrist pads for skateboarding; Athletic protective knee pads for skateboarding; Athletic protective arm pads for skateboarding; Protectors for the knees for use when skateboarding [sports articles]; Protectors for elbows for use when skateboarding [sports articles]; Athletic protective knee pads for skating; Athletic protective elbow pads for skating; Athletic protective wrist pads for skating.

2.        European Union trade mark application No 15 088 206 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 088 206, namely against all the goods in Classes 25 and 28. The opposition is based on European Union trade mark registration No 2 237 378. The opponent invoked Article 8(1)(a) and (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.

1. The goods

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

Class 25:        Clothing, footwear, headgear.

Class 28:        Snowboards, skateboards and skateboard rollers.

The contested goods, after a limitation, are the following:

Class 25:        Waist belts; Bonnets; Socks; Sports socks.

Class 28:        Roller skates; Sporting articles and equipment; In-line roller skates; Scooters [toys]; Ice skates; Toy roller skates; Skates; Ice skate blades; Ice hockey skates; Wheels for toy vehicles; Children's four-wheeled vehicles [playthings]; Bags for skateboards; Elbow guards for use in skateboarding; Athletic protective wrist pads for skateboarding; Athletic protective knee pads for skateboarding; Athletic protective arm pads for skateboarding; Protectors for the knees for use when skateboarding [sports articles]; Protectors for elbows for use when skateboarding [sports articles]; Athletic protective knee pads for skating; Athletic protective elbow pads for skating; Athletic protective wrist pads for skating.

        

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 Waist belts; Socks; Sports socks are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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

Contested goods in Class 28

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

The contested roller skates; In-line roller skates; Skates and the opponent’s skateboards coincide in purpose, distribution channels and the relevant public. Therefore, they are similar.

The contested ice skates; Ice skate blades; Ice hockey skates and the opponent’s snowboards, skateboards and skateboard rollers share the same purpose of recreation, broadly speaking. They can be directed at the same public who can expect that the goods are manufactured under the control of the same entity. Furthermore, they can coincide in distribution channels, such as sporting equipment retail outlets. Therefore, they are similar.

The contested bags for skateboards; Elbow guards for use in skateboarding; Athletic protective wrist pads for skateboarding; Athletic protective knee pads for skateboarding; Athletic protective arm pads for skateboarding; Protectors for the knees for use when skateboarding [sports articles]; Protectors for elbows for use when skateboarding [sports articles]; Athletic protective knee pads for skating; Athletic protective elbow pads for skating; Athletic protective wrist pads for skating all coincide in producer, relevant public and distribution channels with the opponent’s skateboards. Furthermore, they are complementary. Therefore, they are similar.

The contested Scooters [toys]; toy roller skates; Wheels for toy vehicles; Children's four-wheeled vehicles [playthings] are dissimilar to all the opponent’s goods. All these contested goods are toys and playthings or parts of toys and they have different provider and distribution channels than the opponent’s goods. Their nature and purpose are not the same, either. Furthermore, they are not in competition nor are they complementary.

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

3. The signs

	Record Wheels
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘Wheels’ of the contested sign is meaningful in certain territories, for example, in those countries where English is understood, where it will be perceived as, inter alia, circular objects which are fixed underneath a vehicle and which enable it to move along the ground, and therefore it has a potential impact on the distinctiveness of this element for some of the goods at issue. However, in other territories, this word lacks any clear meaning. Consequently, and due to procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public, where the element ‘Wheels’ has equal degree of distinctiveness for all of the goods at issue.

The contested sign is a word mark constituted of the two verbal elements ‘Record’ and ‘Wheels’. The English word ‘Record’ will be understood by the Spanish speaking part of the public since it is very close to the equivalent word in the official language, namely ‘récord’. It will be understood as the best result that has ever been achieved in a particular sport or activity and in relation to the relevant goods this element has an average degree of distinctiveness. The second element ‘Wheels’ is fanciful and in relation to all of the goods in question has an average degree of distinctiveness.

The earlier mark is a figurative mark comprising a figurative element placed above a slightly stylised representation of the word ‘RECORD’. The latter will be perceived as having the meaning described above and thus have an average degree of distinctiveness in relation to the goods in question, while the stylisation of the word has a secondary role in the perception of the sign.

The earlier mark’s figurative element is fanciful and distinctive to an average degree. However, it has to be borne in mind that, 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).

Neither of the signs have any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the verbal element ‘Record’ which constitutes the first verbal element of the contested sign and the only verbal element of the earlier mark. The signs differ in the second verbal element ‘Wheels’ of the contested sign, and the figurative element of the earlier mark as well as the stylisation of the verbal element in the earlier mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is 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.

In view of the fact that the common element is immediately perceptible in the contested sign and is the most relevant element of the earlier mark, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛Record’, present identically in both signs and constituting the only verbal element of the earlier mark. The pronunciation differs in the sound of the letters ‛Wheels’ which constitute the second verbal element of the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the contested sign as a whole does not have any meaning for the public in the relevant territory, the element ‘Record’, included in both the contested sign and the earlier mark, will be associated with the meaning explained above. The signs are conceptually 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 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 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

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

For the purposes of 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).

The goods are identical or similar and the inherent distinctiveness of the earlier mark is normal. The degree of attention of the relevant public is average.

The signs differ in only one verbal element, namely the last element of the contested sign and in the earlier mark’s figurative element, as explained in section c) of this decision. Furthermore, the signs differ in the stylisation of the verbal element in the earlier mark however this stylisation is of secondary importance. Therefore, the Opposition Division finds that, taking into account the consumers’ imperfect recollection, the stronger impact of the verbal element than the figurative element, and the fact that consumers tend to focus on the beginning of a sign, these differences are not sufficient to outweigh the visual, aural and conceptual similarity established between the signs and to exclude a likelihood of confusion.

In that regard, it has to be pointed out that it is common practice, in the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade marks with a new, fashionable image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices. Also it should be kept in mind that the likelihood of confusion includes likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16). Therefore, when encountering the conflicting signs, the relevant public, which only rarely has the chance to directly compare two trade marks and must rely on its imperfect recollection, is likely to mentally register the fact that they have in common the element ‘Record’, and perceive the contested sign as a variation of the earlier mark, or vice versa. Consequently, the public may attribute the same (or an economically linked) commercial origin to the goods that are identical or similar.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public in the European Union and therefore the opposition is partly wellfounded on the basis of the opponent’s European Union trade mark registration No 2 237 378. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

The rest of the contested goods 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 goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and/or the goods are obviously not identical.

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 shall decide a different apportionment of costs.

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

The Opposition Division

Solveiga BEIZA

Cecilie Leth BOCKHOFF

Michele M. BENEDETTI-ALOISI

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.