OPPOSITION No B 2 698 754
Saki AB, Box 510, 233 26 Svedala, Sweden (opponent), represented by Awapatent AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative)
a g a i n s t
Ilustrator d.o.o., Britanski trg 10, Zagreb 10000, Croatia (holder).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 698 754 is upheld for all the contested goods, namely
Class 25: Bermuda shorts; shoes; children’s footwear; clothing for children; bandanas [neckerchiefs]; hoody; pants; sleeveless jackets; wind resistant jackets; waterproof jackets; caps [headwear]; baseball cap; tee-shirts; tank tops; T-shirts; hooded tops; short-sleeved or long-sleeved T-shirts; short-sleeved shirts; footwear for women and men; football jerseys; football T-shirts; football uniform; wind vests; hooded pullovers; gloves; scarves; sport shoes; printed T-shirts; waterproof pants; weatherproof jackets.
2. International registration No 1 270 175 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods and services.
3. The holder bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 270 175, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 12 598 462. 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.
- The goods
The goods on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear and belts.
The contested goods are the following:
Class 25: Bermuda shorts; shoes; children’s footwear; clothing for children; bandanas [neckerchiefs]; hoody; pants; sleeveless jackets; wind resistant jackets; waterproof jackets; caps [headwear]; baseball cap; tee-shirts; tank tops; T-shirts; hooded tops; short-sleeved or long-sleeved T-shirts; short-sleeved shirts; footwear for women and men; football jerseys; football T-shirts; football uniform; wind vests; hooded pullovers; gloves; scarves; sport shoes; printed T-shirts; waterproof pants; weatherproof jackets.
The contested Bermuda shorts; clothing for children; bandanas [neckerchiefs]; hoody; pants; sleeveless jackets; wind resistant jackets; waterproof jackets; tee-shirts; tank tops; T-shirts; hooded tops; short-sleeved or long-sleeved T-shirts; short-sleeved shirts; football jerseys; football T-shirts; football uniform; wind vests; hooded pullovers; gloves; scarves; printed T-shirts; waterproof pants; weatherproof jackets are included in the broad category of the opponent’s clothing. Therefore, they are identical.
The contested shoes; children’s footwear; footwear for women and men; sport shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.
The contested caps [headwear]; baseball cap are included in the broad category of the opponent’s headgear. Therefore, they are identical.
- 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 public at large. The degree of attention is considered to be average.
- The signs
| STAND
|
|
|
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).
‘STAND’ will most probably be understood as ‘have or maintain an upright position, supported by one’s feet’ (information extracted from Oxford Living Dictionaries on 24/05/2017 at https://en.oxforddictionaries.com/definition/stand), an elevated platform (as in witness stand) or somewhere where goods and services are exhibited or sold (such as in an exhibition), by the relevant public. Whether understood as such or perceived as meaningless, the term is distinctive for the goods.
Visually, the signs coincide in ‘STAND’ and they only differ in the stylisation of the contested sign, which is merely decorative; this difference has a limited impact on the consumer’s perception of the mark. Considering this, the signs are visually similar to a high degree.
Aurally, both signs will be pronounced identically.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For those who understand ‘STAND’, the signs are conceptually identical, for the remainder, a conceptual comparison is not possible.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The goods at issue are identical. The degree of attention is average.
The signs in conflict are visually highly similar, aurally identical and conceptually identical for some, whilst for others they have no concept, as explained in detail above in section c) of this decision.
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. Furthermore, it is common practice in the relevant market for manufacturers to make variations to 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 a trade mark with a new, fashionable image.
In the present case, the likelihood that the public might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand or a word variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the part of the public and the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 598 462. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.
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 holder 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
| Vanessa PAGE | Carlos MATEO PÉREZ | Inés GARCÍA LLEDÓ |
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.