OPPOSITION DIVISION
OPPOSITION No B 2 723 016
IIC-Intersport International Corporation GmbH, Wölflistr. 2, 3006 Bern
Switzerland (opponent), represented by Wilson & Berthelot, 22, rue Bergère,
75009 Paris, France (professional representative)
a g a i n s t
Technobody Spółka Z Ograniczoną Odpowiedzialnością, ul. Stanisława Lentza
10A, 02-956 Warszawa, Poland (applicant), represented by Anna Górska, Długa
59/5, 31-147 Kraków , Poland (professional representative).
On 21/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 723 016 is upheld for all the contested goods, namely
Class 25: Sweat shirts; hooded sweatshirts; leg warmers; sports jerseys; yoga
shirts; sports jerseys and breeches for sports; leggings [trousers];
running suits; gym suits; sportswear; clothing for gymnastics;
athletic tights; sports socks; sports socks; socks; trousers shorts;
sweatpants; sweatpants; yoga pants; warm-up pants; tracksuit
bottoms; sports pants; moisture-wicking sports pants; athletic
uniforms; gym shorts; jogging tops; warm-up tops; running shoes;
gym boots; boots for sports; sports shoes.
2. European Union trade mark application No 15 105 703 is rejected for all the
contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 620.
Preliminary Remark:
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 723 016 page: 2 of 8
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 15 105 703 , namely against all the goods in
Class 25. The opposition is based on, inter alia, international trade mark registration
No 1 055 653 designating the European Union . The
opponent invoked Article 8(1) (b) and Article 8 (5) 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 International trade mark registration No 1 055 653 designating the
European Union.
a) The goods
The goods on which the opposition is based are the following:
Class 9: Helmets, vests, elbow and knee pads for protective purposes for sport;
helmets for skiing, helmets for hockey; sunglasses, ski glasses, swim goggles; ski
masks, diver’s masks; life jackets; belts, flotation aids, vests and belts for swimming;
body suits, suits, gloves and earplugs for divers; buoys and snorkels for swimming
and diving.
Class 18: Backpacks, multi-purpose sports bags, belt bags, namely belt bags for
skiing, backpacks for skiing in both Alpine and Nordic disciplines, trekking bags and
backpacks, especially backpacks made of waterproof textile materials specifically
designed for skiing.
Class 25: Clothing, footwear, headgear, including boots, shoes, gloves, hats;
bodysuits, gloves, shoes and boots for skiing and other snow sports; apres-ski
shoes, ski trousers adaptable to shoes, gaiters; boots and gloves for skiing; clothing
and footwear for indoor and outdoor racket sports; tennis shoes and clothing; bathing
caps; sports underwear.
Decision on Opposition No B 2 723 016 page: 3 of 8
Class 28: Sporting articles included in this class; table tennis, badminton and tennis
nets; racket-ball, table tennis, tennis, squash and badminton rackets; racket covers
and bags; strings for rackets; racket handles; balls and shuttlecocks, tables for table
tennis; skis, bindings and poles for Alpine skiing and Nordic skiing, ski brakes;
custom designed cases for skis; sleds; protective paddings (parts of sports suits);
hockey sticks and hockey pucks; ice skates; bags adapted for carrying sporting
articles; protective covers for tables for table tennis; flippers for swimming and diving.
The contested goods are the following:
Class 25: Sweat shirts; hooded sweatshirts; leg warmers; sports jerseys; yoga
shirts; sports jerseys and breeches for sports; leggings [trousers]; running suits; gym
suits; sportswear; clothing for gymnastics; athletic tights; sports socks; sports socks;
socks; trousers shorts; sweatpants; sweatpants; yoga pants; warm-up pants;
tracksuit bottoms; sports pants; moisture-wicking sports pants; athletic uniforms; gym
shorts; jogging tops; warm-up tops; running shoes; gym boots; boots for sports;
sports shoes.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of
individual goods and services to a broader category, is exclusive and restricts the
scope of protection only to the goods specifically listed.
Contested goods in Class 25
The contested Sweat shirts; hooded sweatshirts; leg warmers; sports jerseys; yoga
shirts; sports jerseys and breeches for sports; leggings [trousers]; running suits; gym
suits; sportswear; clothing for gymnastics; athletic tights; sports socks; sports socks;
socks; trousers shorts; sweatpants; sweatpants; yoga pants; warm-up pants;
tracksuit bottoms; sports pants; moisture-wicking sports pants; athletic uniforms; gym
shorts; jogging tops; warm-up tops are included in the broad category of the
opponent’s clothing. Therefore, all these goods are identical.
The contested running shoes; gym boots; boots for sports; sports shoes are included
in the broad category of the opponent’s footwear. Therefore, all these goods are
identical.
b) 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 applicant’s argument that the public would pay special attention when
choosing sports garments, cannot be entertained as even when buying such clothing
the public will not pay a higher attention than average. Furthermore, the earlier goods
contain not only sport garments, but also the broad categories of normal clothing and
footwear as well. The degree of attention is therefore considered to be average.
Decision on Opposition No B 2 723 016 page: 4 of 8
c) The signs
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). This applies by analogy to international registrations
designating the European Union. Therefore, a likelihood of confusion for only part of
the relevant public of the European Union is sufficient to reject the contested
application. The comparison will therefore focus on the English-speaking countries of
the European Union.
The earlier mark is a figurative mark consisting of two verbal parts, the suffix ‘PRO’,
and the prefix ‘TECNO’, slightly stylised, and a graphical representation of two
arrows facing upwards above the verbal elements. The suffix ‘PRO’ is written in much
smaller type face and is clearly separated from the verbal element ‘TECNO’.
When a mark is composed of word elements and figurative elements, the former are,
as a rule, more distinctive than the latter, since the average consumer will more
easily refer to the goods in question by citing the name rather than describing the
figurative element of the mark (see judgment of 15 December 2009, Case T-412/08,
‘Trubion’, para. 45 and the case-law cited therein). As such, most weight has to be
given to the verbal elements of the earlier mark, ‘TECNO’ and ‘PRO’. The prefix
‘TECNO’ of the earlier mark is the abbreviation of the Italian word ‘tecnologico’
(technology). This term will be however also associated in the English speaking EU
member states with ‘technology’. However, this fact does not stop this verbal element
having distinctive character in the mark in relation to the goods at hand, namely
clothing and footwear. It does not say anything about the characteristics/quality of or
provide any relevant information on the goods concerned. No relevant link can be
made between this term and the earlier goods, and the distinctiveness of a mark
must be assessed in relation to the goods at hand, not in the abstract (see decision
of the Boards of Appeal of 28 October 2013 –R330/2013-2 – Techno layer / Tecno
pro (fig. Mark) et al.)
The second verbal element however, ‘PRO’, is of weak distinctive character. The
word ‘PRO’ is discernible for the relevant public as the abbreviated form of the
English word ‘professional’,. Bearing in mind the goods in question, the word could
Decision on Opposition No B 2 723 016 page: 5 of 8
be seen as alluding to the fact that the goods are of a specific character as they are
intended for professionals.
Therefore, the word ‘TECNO’ even if perceived as an abbreviation of the term
‘technology’ by the relevant public, still remains distinctive as mentioned above. In
particular it must be noted that it is more distinctive than the laudatory element ‘PRO’.
It will therefore attract the attention of the trade circles over the weak term ‘PRO’.
The contested mark is also a figurative mark consisting of two verbal elements,
namely ‘TECHNO’ and ‘BODY’. Even written as one word, the element ‘BODY’ is
clearly discernible as it is written, contrary to the first part ‘TECHNO’, in bold letters.
Furthermore, the element ‘BODY’ is underlined by a blue line which ends after the
last letter ‘Y’ like a Zig-Zac. As well here, the English speaking public will associate
‘TECHNO’ with ‘technology’, and it is not a common word or abbreviation used as a
reference to the quality or characteristics of the goods at hand which were found
identical, namely clothing and footwear. It is therefore distinctive.
Furthermore, the contested mark contains the verbal element ‘BODY’ after
‘TECHNO’, which will be recognised by the English-speaking consumers. As
opposed to the word ‘TECHNO’, it immediately provides these trade circles with
information on the contents of the goods, for the protection of which the contested
mark is claimed, i.e. either items of clothing called a body (a common abbreviation for
bodysuit) or in general that the products bearing this sign are used for the human
body. Therefore, this element is weak.
Neither the earlier mark nor the contested sign contain an element that could be
considered clearly more dominant than other elements.
Visually, the marks coincide in the sequence of identical letters ‘T-E-C—N-O’ placed
at the beginning of both marks. The marks differ visually to the extent that the mark
applied for has the additional letter ‘H’ in the first verbal element, and the additional,
however weak, verbal elements ‘PRO’ and ‘BODY’ placed at the end of the
respective marks, as well as in the figurative elements. In addition the verbal
elements ‘PRO’ and ‘BODY’ are weak and consequently their impact is limited.
Furthermore, some differences lay in the figurative and graphic elements described
above. Therefore the signs are visually similar to an average degree.
Aurally, the graphical elements are not pronounced. According to English
pronunciation rules the marks will be pronounced as |TECH-NO-PRO| and |TEC-NO-
BO-DY|. Both marks have in common the identically pronounced first two syllables |
TEC-NO| given that the letter ‘H’ of the contested mark is silent. Furthermore, the
verbal elements ‘PRO’ and ‘BODY’ are weak terms. taking into account the same
structure and the identical sound of the first two syllables (TEC-NO) of the conflicting
signs, and the fact that the beginnings of the marks have a greater impact since
consumers tend to focus their attention on the beginning rather than on the ending, it
is concluded that the marks are considered aurally similar to an average degree.
Conceptually, although the signs as a whole do not have any meaning for the public
in the relevant territory, the element ‘TEC(-H-)NO’, included in both signs, will be
associated with the meaning explained above. Furthermore, the additional elements
‘PRO’ and ‘BODY’ are weak and do not change the meaning of the elements
‘TECNO/TECHNO’ (see, decision of 25 February 2010, R 62/2009-2
‘SERVICEPOINT (Fig. Mark)/ServicePoint (Fig. Mark) et al.’, para. 25, confirmed by
judgment of 30 May 2013, T- 218/10, ‘Servicepoint’, paras 39 to 41). To that extent,
the signs are conceptually highly similar as both evoke the concept of technology.
Decision on Opposition No B 2 723 016 page: 6 of 8
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
According to the opponent, the earlier mark has been extensively used and enjoys an
enhanced scope of protection. However, for reasons of procedural economy, the
evidence filed by the opponent to prove this claim does not have to be assessed in
the present case (see below in ‘Global assessment’).
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, despite the presence of a weak element in the mark, as stated above in
section c) of this decision.
e) 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. In addition 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).
The goods have been found identical. The signs have been found to be visually and
aurally similar to an average degree. They are conceptually highly similar to the
extent that they both include an element which will be understood by the relevant
public as either an abbreviation for, or which alludes to, the word ‘technology’.
The signs coincide in the distinctive verbal element ‘TEC-*-NO’ at their beginning.
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. Consequently, these coinciding first
elements of the marks at issue have to be taken into account when assessing the
likelihood of confusion between the marks. The visual differences are not enough to
offset, from the point of consumers, the visual similarity between the beginnings of
the marks which are likely, in the context of an overall visual impression, to attract
more attention than the different final elements, namely (the letter ‘H’ and ‘BODY’) of
the contested mark (see, judgment of 31 January 2013, T-66/11, ‘Babilu’, para. 58;
and of 22 September 2005, T-130/03, ‘Travatan’, paras 65 and 66). Furthermore,
these elements are aurally identical.
Decision on Opposition No B 2 723 016 page: 7 of 8
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).
Besides, it is common in the clothing sector for the same mark to be configured in
various ways according to the type of product which it designates, and second, it is
also common for a single clothing manufacturer to use sub-brands (signs that derive
from a principal mark and which share with it a common dominant element) in order
to distinguish its various lines from one another (see judgment of 23 October 2002,
Case T-104/01 ‘Fifties’, para. 49, and judgment of 6 October 2004, joined Cases T-
117/03 to T-119/03 and T-171/03 ‘NLSPORT, NLJEANS, NLACTIVE and
NLCollection’, para. 51). In the present case, it has already been pointed out that the
conflicting marks have the word ‘TECNO/TECHNO’ in common, which is the first
verbal element that forms the marks. Consequently, consumers could perceive the
marks at issue as different configurations of the same mark or one of them as being
a sub-brand of the other.
Considering all the above, there is a likelihood of confusion on the part of the
English-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s international
trade mark registration No 1 055 653. It follows that the contested trade mark must
be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier mark, there is no need to assess the enhanced degree of distinctiveness of
the opposing mark due to its extensive use as claimed by the opponent. The result
would be the same even if the earlier mark enjoyed an enhanced degree of
distinctiveness.
As the earlier international trade mark registration No 1 055 653 leads to the success
of the opposition and to the rejection of the contested trade mark for all the contested
goods 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).
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 (5) EUTMR.
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.
Decision on Opposition No B 2 723 016 page: 8 of 8
The Opposition Division
Sigrid DICKMANNS Karin KLÜPFEL Tobias KLEE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.