OPPOSITION No B 2 668 138

Almeriblan S.L., C/ Rambla Obispo Orbera 24, 04001 Almeria, Spain (opponent), represented by Aseprin, S.L., Calle Pradillo, 18. 1º, 28002 Madrid, Spain (professional representative)

a g a i n s t

Mag. Michael Buchleitner run4business e.U., Babenbergerstraße 22, 2345 Brunn am Gebirge, Austria (applicant), represented by Karl Schleinzer, Führichgasse 6, 1010 Wien, Austria (professional representative).

On 03/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 668 138 is upheld for all the contested goods, namely:

Class 25:        Clothing; Headgear; Footwear.

2.        European Union trade mark application No 14 581 458 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 581 458, namely against all the goods in Class 25. The opposition is based on Spanish trade mark registration No 2 988 916. 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.

1. The goods

In the notice of opposition, the opponent indicated that the goods on which the opposition is based are sports made garments in Class 25. To substantiate the earlier right, the opponent submitted an extract in Spanish from the Spanish Patent and Trademark Office, followed by a translation into English on 20/07/2016. In the translation, the opponent’s goods are garments made sport. The Opposition Division considers that the goods were wrongly translated in both documents and that the goods on which the opposition is based should be sportswear. Consequently, only sportswear shall be taken into consideration for the purpose of the further examination of the opposition.

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

Class 25:        Sportswear.

The contested goods are the following:

Class 25:        Clothing; Headgear; Footwear.

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

The contested headgear overlaps with the opponent’s sportswear. Therefore, they are identical.

The contested footwear is similar to the opponent’s sportswear, as they have the same purpose. They can have the same producer, end user and distribution channels.

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

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 in two verbal elements, ‘RUN’ and ‘IN’. The letter ‘n’ of this last element has a very stylised font, stretched horizontally. These elements are separated by a dot. The verbal elements are distinctive, since the majority of the Spanish public will not be familiar with the meaning of the English words ‘RUN’ and ‘IN’. The sign also contains a less distinctive figurative element of a purely decorative nature, a grey circle that surrounds the verbal element ‘RUN’. Therefore, the verbal elements are more distinctive than the figurative element.

The contested sign is a figurative mark, consisting of two verbal elements: ‘RUN’ at the top and ‘INC’ at the bottom followed by a dot. Both elements are depicted in a stylised green font. Neither of these elements will be understood by the relevant public, since a substantial part of the relevant Spanish public will not be familiar with the meaning of the English words ‘RUN’ and ‘INC’. Therefore, they are distinctive.

The signs under comparison have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs have the same first verbal element, ‘RUN’, and they coincide in ‘IN*’ in the second verbal element of both signs. However, they differ in the last letter of the contested sign, ‛C’, which has no counterpart in the earlier mark. The signs also differ in the position of the dot, as stated above, and in the figurative element of the earlier mark, which is less distinctive than the verbal elements and therefore consumers will pay more attention to the verbal elements. 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 (or from top to bottom), which makes the part placed at the left or at the top of the sign (the initial part) the one that first catches the attention of the reader. For these reasons, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛RUN-IN*’, present identically in both signs. The pronunciation differs in the sound of the letter ‛C’ of the contested sign, which has no counterpart in the earlier mark. Despite the applicant’s argument, the signs in dispute have the same rhythm and intonation. The dot in the contested sign is not likely to be pronounced, whereas a part of the public will pronounce the dot in the earlier mark and another part of the public will not, because of its position. Therefore, the signs are aurally highly similar for the part of the public that will not pronounce the dot of the earlier mark, and similar to an average degree for the part of the public that will pronounce it.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. With regard to the applicant’s arguments that the disputed signs will be associated with the concept of running and the element ‘INC’ of the contested sign with ‘incorporated’, the Opposition Division considers that, taking into account the relevant public’s knowledge of English, this will not happen. Therefore, 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.

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 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 services covered are from the same or economically linked undertakings.

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).

In the present case, the goods at issue are partly identical and partly similar; they are addressed to the public at large, which will pay an average degree of attention. The earlier mark has a normal degree of distinctiveness.

The signs under comparison are visually similar to an average degree. Aurally, they are highly similar for the part of the public that will not pronounce the dot of the earlier mark and similar to an average degree for the part of the public that will pronounce the dot of the contested sign, as explained in detail above in section c) of this decision. The differences between the signs, as outlined above, are not sufficient to counteract their similarities.

Considering all the above and taking into account 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), there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 988 916. It follows that the contested trade mark must be rejected for all the contested goods.

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

Katarzyna ZANIECKA

Alexandra APOSTOLAKIS

Adriana VAN ROODEN

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.