OPPOSITION No B 2 246 570

55 DSL AG, Walchestrasse 27, 8006 Zürich, Switzerland (opponent), represented by Barzano’ & Zanardo Milano S.p.a., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Gregory Adam Dunlap, 18565 NW Nelscott St., Portland, Oregon 97229, United States of America (applicant), represented by Bawden & Associates, 4 The Gatehouse, 2 High Street, Harpenden, Hertfordshire AL5 2TH, United Kingdom (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 246 570 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 864 311. The opposition is based on European Union trade mark registration No 583 716. 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

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

Class 25:        Clothing, footwear, headgear.

The contested goods are the following:

Class 25:        Hooded sweatshirts; Pants; Shirts; Thermal underwear.

The contested hooded sweatshirts; pants; shirts; thermal underwear are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is average.

3. 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 earlier mark is a figurative mark consisting of a highly stylised sharp-edged black figurative element, resembling, for at least part of the public, the right side of a person in profile with a sharply pointed arm and leg that both extend beyond the circular border. For other parts of the public, this element may resemble pliers or a cutting tool. The figurative element is set against a white circular background, with a black border.

The contested sign is also purely figurative, consisting of three highly stylised white shapes, in a softly rounded design and fully separated from one another. These forms may, for part of the public, resemble a person dancing or jumping, or, for another part of the public, a boomerang, a bat and a ball. These white forms are set against a black rectangular background.

The figurative elements of the marks may be understood, by at least part of the public, as, inter alia, a moving person, tools or sports equipment. As they are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive.

Neither of the marks has any elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their use of black and white and in the circular form at the top of each mark. However, they differ in their outlines and overall stylisation (inter alia, a circle versus a rectangle), in the reversed colours and in the separation and softer stylisation of the elements in the contested mark.

Therefore, the signs are visually similar to a low degree.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, part of the public may associate the figurative elements of both signs with one of the meanings explained above: a moving person. However, the signs are depicted very differently and it is also highly possible that the contested mark will be perceived as, for example, a boomerang and some other sports equipment and/or that the earlier mark will be perceived as a tool of some kind. Therefore, the signs are, at most, conceptually similar to a low degree. For the part of the public that does not perceive any meaning in the marks, a conceptual comparison is not possible and 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

The contested goods are identical to the opponent’s goods.

The signs are visually similar to a low degree and, for part of the public, conceptually similar to a low degree.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the different figurative elements are particularly relevant when assessing the likelihood of confusion between them.

Even though there are some similarities between the signs, such as the hook or boomerang shape that is open on the left-hand side and the small circular figures on top of these, the overall designs of the opposing marks are different. The earlier mark consists of a circle with two pointed forms, and the sharp ends of the hook-shaped figure extend beyond the circular border. The contested sign consists of a rectangular background and three different softly rounded elements set within it. The signs therefore consist of different shapes and their colours are also reversed. Even though the goods are identical, the Opposition Division finds that the differences between the marks are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks.

This finding will hold even more true in relation to the part of the relevant public that does not perceive the signs as having the concept of a moving person in common, as for that part of the public the signs are not aurally similar and have no conceptual similarity.

Considering all the above, even given that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

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