OPPOSITION No B 2 558 289

SoulCycle Inc., 609 Greenwich Street, New York, New York 10014, United States of America (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Piotr Pacek, Domeyki 5, 43300 Bielsko-Biała, Poland and Peter Lang, Kellererweg 6, 86633 Neuburg/Donau, Germany (applicants), represented by Tomasz Maciej Rychlicki, ul. Wąwozowa 28/44, 02-796 Warsaw, Poland (professional representative).

On 01/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 558 289 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 762 241 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against the goods and services of European Union trade mark application No 13 762 241. The opposition is based on inter alia, European Union trade mark registration No 12 825 303 and European Union trade mark registration No 11 319 324. 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 European Union trade mark registration No 12 825 303 (Earlier Right 1 (ER1)) and European Union trade mark registration No 11 319 324 (Earlier Right 2 (ER2)).

1. The goods and services

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

EU trade mark registration No 12 825 303 (ER1):

Class 25:        Clothing, namely, pants, drawstring pants, sweat pants, shorts, exercise tights, shirts, short sleeve shirts, tops, sleeveless tops, long-sleeve tops, sweaters, sweatshirts, t-shirts, tank tops, sports bras, jackets, hooded pullovers; headwear, namely, hats, headbands; swimwear; children's clothing; Thermals, Socks, Bandanas, Wristbands, Shoes, Flip-flops, Neckties, Undergarments, Scarves, Gloves; all the aforementioned  goods being in connection with indoor cycling or other sports, fitness or lifestyle activities (both active and after wear).

EU trade mark registration No 11 319 324 (ER2):

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; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus.

Class 28:        Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees.

Class 38:        Telecommunications.

Class 41:        Education; Providing of training; Entertainment; Sporting and cultural activities.

The contested goods and services are the following:

Class 9:        Spectacles [optics]; Glasses cases; Eyewear pouches.

Class 25:        Clothing; Ready-made clothing; Ready-to-wear clothing; Outerclothing for men, women and children; Underwear, Clothing accessories, Socks, Gloves of clothing, Headgear, Footwear.

Class 35:        Trading in the field of clothing, footwear, headgear, haberdashery and accessories for clothing and footwear.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s (ER1) list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 9

The contested spectacles [optics] are included in the broad category of the opponent’s optical apparatus and instruments (ER2). Therefore, they are identical.

The contested glasses cases; eyewear pouches are similar to a low degree to the opponent’s optical apparatus and instruments (ER2), as they can coincide in end user and distribution channels. Furthermore they are often complementary.

Contested goods in Class 25

The contested clothing; ready-made clothing; ready-to-wear clothing; outerclothing for men, women and children; underwear, clothing accessories, socks, gloves of clothing, include, as broader categories, or at least overlap with, the opponent’s clothing, namely, pants, drawstring pants, sweat pants, shorts, exercise tights, shirts, short sleeve shirts, tops, sleeveless tops, long-sleeve tops, sweaters, sweatshirts, t-shirts, tank tops, sports bras, jackets, hooded pullovers; swimwear; children's clothing; thermals, socks, bandanas, wristbands,  neckties, undergarments, scarves, gloves; all the aforementioned  goods being in connection with indoor cycling or other sports, fitness or lifestyle activities (both active and after wear) (ER1). 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 headgear include, as a broader category, the opponent’s headwear, namely, hats, headbands; all the aforementioned goods being in connection with indoor cycling or other sports, fitness or lifestyle activities (both active and after wear) (ER1). 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 footwear include, as a broader category, the opponent’s shoes, flip-flops; all the aforementioned goods being in connection with indoor cycling or other sports, fitness or lifestyle activities (both active and after wear) (ER1). 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 35

Similarity between retail and trading services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical.

Trading is defined as ‘the action or activity of buying and selling goods and services’ (Oxford English dictionaries https://en.oxforddictionaries.com/ on 27/02/2017).  Trading services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested trading in the field of clothing, footwear, headgear, haberdashery and accessories for clothing and footwear is similar to a low degree to the opponent’s Class 25 clothing, namely, pants, drawstring pants, sweat pants, shorts, exercise tights, shirts, short sleeve shirts, tops, sleeveless tops, long-sleeve tops, sweaters, sweatshirts, t-shirts, tank tops, sports bras, jackets, hooded pullovers; headwear, namely, hats, headbands; swimwear; children's clothing; thermals, socks, bandanas, wristbands, shoes, flip-flops, neckties, undergarments, scarves, gloves; all the aforementioned  goods being in connection with indoor cycling or other sports, fitness or lifestyle activities (both active and after wear) (ER1).

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 found to be identical or similar to a low degree are directed at the public at large and the professional public. The degree of attention may vary from average to higher that average, depending on their price and the frequency of their purchase.

3. The signs

SOUL	SOULCYCLE
(ER1)                                        (ER2) Earlier trade marks		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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier marks are both word marks, while the contested sign is a figurative mark containing the word elements ‘SOUL’ and ‘FRIEND’, written in grey stylized upper-case lettering. The two elements are separated by a small grey stylized hyphen which could possibly be perceived by part of the public as the mathematical symbol indicating the concept of Infinity.

The earlier rights and the contested sign all share the word element ‘SOUL’, which is the only element in the opponent’s (ER1) and identically occupies the first part of the opponent’s (ER2) and the contested sign. Considering that this element will be understood by the relevant public as meaning ‘the spiritual or immaterial part of a human being or animal, regarded as immortal’ or ‘emotional or intellectual energy or intensity, especially as revealed in a work of art or an artistic performance’ (Oxford English dictionaries https://en.oxforddictionaries.com/ on 27/02/2017), the Opposition Division deems it to be inherently distinctive since it has no direct relation to the goods and services in question.

The opponent’s (ER2) has the additional component ‘CYCLE’, which is defined as ‘a series of events that are regularly repeated in the same order’ (Oxford English dictionaries https://en.oxforddictionaries.com/ on 21/02/2017). This element is considered to have a normal level of distinctiveness for the goods and services at hand, as is the juxtaposition or conjunction of the two components ‘SOUL’ and ‘CYCLE’ that constitute this earlier right. The relevant public will not attribute a meaning to ‘SOULCYCLE’ other than the sum of its previously defined parts.

The contested sign has the additional component ‘FRIEND’, which is defined as ‘a person with whom one has a bond of mutual affection, typically one exclusive of sexual or family relations’ (Oxford English dictionaries https://en.oxforddictionaries.com/ on 21/02/2017). This element is also considered to have a normal level of distinctiveness for the goods and services at hand, as is the juxtaposition or conjunction of the two word elements ‘SOUL’ and ‘FRIEND’ that constitute the sign in question. The relevant public will not attribute a meaning to the contested sign as a whole, other than the sum of their previously defined parts.

Visually, the signs coincide in the word element ‘SOUL’, which is the only element in the opponent’s (ER1) and identically occupies the first part of the opponent’s (ER2) and the contested sign. They differ in that the opponent’s (ER2) also contains the conjoined word element ‘CYCLE’, while the contested sign also comprises the juxtaposed word element ‘FRIEND’, separated from the ‘SOUL’ element by the previously described stylized hyphen. They also vary due to the grey stylized upper-case lettering of the contested sign.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

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

Aurally, the signs coincide in the pronunciation of the element ‘SOUL’, which is the only element in the opponent’s (ER1) and identically occupies the first part of the opponent’s (ER2) and the contested sign. They differ in the pronunciation of the additional words ‘CYCLE’ and ‘FRIEND’ of the opponent’s (ER2) and contested sign, respectively. It should be noted that although part of the public could possibly recognize the hyphen as the mathematical symbol indicating the concept of Infinity, this will not alter the pronunciation of the contested sign as a whole, contrary to the applicant’s arguments. The Opposition Division is of the opinion that the symbol will not be pronounced at all.

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

Conceptually, the signs share the word element ‘SOUL’, which is the only element in the opponent’s (ER1) and identically occupies the first part of the opponent’s (ER2) and the contested sign. As was stated above, this common element is inherently distinctive since it has no direct relation to the goods and services in question.

To that extent, the signs are conceptually similar to an average degree.

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks 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 goods/services covered are from the same or economically linked undertakings.

As has been concluded above, the contested goods and services are identical or similar to a low degree, while the signs are visually, aurally and conceptually similar to an average degree, sharing the word element ‘SOUL’, which is the only element in the opponent’s (ER1) and identically occupies the first part of the opponent’s (ER2) and the contested sign. It should be noted that this coinciding element plays an independent distinctive role in the signs and the relevant public will not attribute a meaning to the opponent’s (ER2) and the contested sign other than the sum of their previously defined parts.

Likewise, the stylization of the contested mark, including the hyphen, is unable, by itself, to keep the marks sufficiently apart to the extent where a likelihood of confusion on the part of the relevant public can safely be excluded.

Account is taken of 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). This is especially important as 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 consumer.

In its observations, the applicant argues that the earlier trade marks have a low distinctive character given that there are many trade marks that include the ‘SOUL’ word element. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the ‘SOUL’ word element. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the differences between the signs are insufficient to counterbalance the similarities and therefore there is a likelihood of confusion on the part of the English-speaking part of the public. As was 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 825 303 and European Union trade mark registration No 11 319 324. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier EU trade mark registrations mentioned above lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights 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

Dorothée SCHLIEPHAKE

José Alexandre DE PAIVA ANDRADE TEIXEIRA

Gueorgui IVANOV

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.