OPPOSITION DIVISION
OPPOSITION No B 2 826 231
Puma SE, Puma Way 1, 91074 Herzogenaurach, Germany (opponent), represented
by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid,
Spain (professional representative)
a g a i n s t
Pantofola d’Oro S.p.A., Via T.C.Onesti. 3/I, 63100 Ascoli Piceno, Italy (applicant),
represented by Mar.Bre S.R.L., Via San Filippo 2, 60044 Fabriano (AN), Italy
(professional representative).
On 08/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 826 231 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS:
The opponent filed an opposition against all the goods (in Classes 18, 25 and 28) of
European Union trade mark application No 15 860 208 (figurative mark:
“ ”). The opposition is based on the following earlier trade marks:
European Union trade mark registration No 13 199 666 (figurative mark:
“ ”) for goods in Classes 18, 25 and 28;
European Union trade mark registration No 12 697 066 (figurative mark:
“ ”) for goods in Classes 18, 25 and 28;
European Union trade mark registration No 14 462 873 (figurative mark:
Decision on Opposition No B 2 826 231 page: 2 of 8
“ ”) for goods in Class 25;
European Union trade mark registration No 3 513 694 (figurative mark:
“ ”) for goods in Classes 18, 25 and 28;
International registration No 1 138 941 designating the European Union and
Croatia (figurative mark: “ ”) for goods in Classes
18 and 25;
International registration No 925 647 designating the European Union,
Romania, Bulgaria and Croatia (figurative mark:
“ ”) for goods in Classes 18, 25 and 28.
The opponent invoked Article 8(1)(b) and 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.
a) The goods
The goods in Classes 18, 25 and 28 of earlier European Union trade mark
No 12 697 066 on which, inter alia, the opposition is based are the following:
Class 18: Leather and imitations of leather, and goods made from these materials,
namely briefcases, bags, bags for clothes, carry-all bags, weekend bags,
multipurpose bags, multipurpose athletic bags, multipurpose sports bags, work bags,
attaché cases, shopping bags, two-wheeled shopping bags, souvenir bags, bags
(envelopes, pouches) for packaging, tote bags, handbags, small clutch purses, sling
bags, Gladstone bags, women’s handbags, men’s handbags, men’s bags, bum bags,
evening bags, evening bags, beach bags, bags for sports, courier bags, money
changing bags, tool bags, hiking bags, belt bags and hip packs, pouches, gym bags,
shoe bags, book bags, school book bags, school bags, school satchels, school
backpacks, shoulder belts and straps, shoulder bags, haversacks, bags, Boston
Decision on Opposition No B 2 826 231 page: 3 of 8
bags, everyday bags, pouch baby carriers, baby carriers, slings for carrying infants,
diplomatic bags, attaché cases, briefcases, boxes, luggage, travel luggage,
suitcases for travel, large bags, flight bags, trunks and travelling bags; Baggage,
Flight bags, Wheeled shopping bags, Travelling handbags, Vanity cases, not fitted,
Garment carriers, Travel garment covers, Travel garment covers, Duffel bags,
Kitbags, Rucksacks, Bags for climbers, Bags for campers, Diaper bags; Bags and
pouches, included in class 18, and small goods of leather, namely luggage tags,
Luggage label holders, Bags for men, Baggage, Coin purses, Coin purses, Baggage,
Wallets, Coin purses, Card holders, Card holders, Briefcases, Credit-card holders,
Credit-card holders, Credit-card holders, Business card cases, Driving licence cases,
Key bags, Key bags, Fanny packs, Clutch bags, Small pouches, Toiletry bags,
Cosmetic purses, Cosmetic purses, Make-up bags, Cosmetic purses, Cosmetic
purses, Make-up bags, tie cases, Laces (Leather -); Wallets, pocket wallets, key
cases, handbags, briefcases, shopping bags, satchels, carrier bags, travelling bags,
sports bags, included in class 18, duffel bags, rucksacks, school bags, belt bags,
toiletry bags, trunks and travelling bags; Umbrellas, big umbrellas and walking sticks.
Class 25: Apparel, footwear, headgear.
Class 28: Games and playthings, gymnastic and sporting equipment, gymnastic and
sporting articles (included in class 28); Skiing and tennis equipment; Skis, ski
bindings, ski poles, edges for skis, climbing skins for skis; Balls, including balls for
sports and balls for games, golf balls, tennis balls; Dumb-bells, shot puts, Discuses,
javelins, Gym clubs, Sport hoops; Shinguards, Knee, elbow and ankle guards for
sports purposes; Sports gloves, included in class 28; Tennis rackets, cricket bats,
golf clubs, hockey sticks, table tennis rackets, badminton rackets and squash rackets
and parts therefor, in particular grips, strings, grip and lead tape; Bags for sports
equipment, specially designed for the objects to be carried therein; Specially adapted
bags and sleeves for tennis rackets, table tennis rackets, badminton rackets, squash
rackets, cricket bats, golf clubs and hockey sticks; Roller skates and ice skates, inline
skates, table tennis tables and nets; Nets for sports, goal and ball nets; Sports field
markings, namely start and finish banners, tapes and awnings for sports events,
umpires’ stools for tennis events.
The remaining earlier rights are based on the same or less goods in Classes 18, 25
and 28.
The contested goods in Classes 18, 25 and 28 are the following:
Class 18: Saddlery, whips and animal apparel; Umbrellas and parasols; Walking
staffs; Luggage, bags, wallets and other carriers; Shoulder belts [straps] of leather;
Studs of leather; Straps for soldiers’ equipment; Kid; Cases of leather or
leatherboard; Girths of leather; Straps made of imitation leather; Leather luggage
straps; Shoulder straps; Leather laces; Leather, unworked or semi-worked; Leather
for shoes; Leather thread; Leather and imitations of leather; Animal skins; Curried
skins; Chamois leather, other than for cleaning purposes; Fur; Faux fur; Semi-worked
fur; Boxes of leather or leatherboard; Boxes made of leather; Imitation leather hat
boxes; Leather cloth; Shoulder belts; Polyurethane leather; Worked or semi-worked
hides and other leather; Leather sold in bulk; Imitation leather sold in bulk; Imitation
leather; Umbrella rings; Keycases; Vanity cases, not fitted; Traveling trunks; Slings
for carrying infants; Bags for sports; Chain mesh purses; Two-wheeled shopping
bags; Umbrella sticks; Purses; Handbags; Traveling bags [leatherware]; Satchels;
Briefbags; Collars for animals; Umbrella covers; Umbrella handles; Suitcase handles;
Parasols; Umbrellas; Business card cases; Card cases [notecases]; Credit card
cases [wallets]; Music cases; Bags for campers; Holdalls; Bags for climbers; Beach
Decision on Opposition No B 2 826 231 page: 4 of 8
bags; Luggage tags; Frames for umbrellas or parasols; Handbag frames; Attache
cases; Garment bags for travel; Daypacks; Backpacks; Haversacks; Net bags for
shopping.
Class 25: Clothing; Footwear; Headgear; Rainproof clothing; Cyclists’ clothing;
Clothing for gymnastics; Suits; Bathrobes; Non-slipping devices for footwear;
Bandanas [neckerchiefs]; Caps [headwear]; Lingerie; Sweat-absorbent underwear;
Teddies [undergarments]; Braces for clothing [suspenders]; Studs for football boots;
Corsets; Galoshes; Training shoes; Stockings; Socks; Breeches; Bathing trunks;
Sports singlets; Hoods [clothing]; Hat frames [skeletons]; Belts [clothing]; Money
belts [clothing]; Tights; Layettes [clothing]; Bathing suits; Beach clothes; Cravats;
Bathing caps; Fittings of metal for footwear; Ready-made linings [parts of clothing];
Boot uppers; Fishing vests; Overalls; Gloves [clothing]; Ski gloves; Welts for
footwear; Sports jerseys; Sleep masks; Wet suits for water-skiing; Slippers; Ear
muffs [clothing]; Parkas; Pelisses; Shirt yokes; Pajamas (Am.); Ponchos; Tips for
footwear; Heelpieces for stockings; Stiffeners for shoes; Footmuffs, not electrically
heated; Football shoes; Collar protectors; Dress shields; Shirt fronts; Footwear soles;
Heels; Heelpieces for footwear; Pockets for clothing; Footwear uppers; Combinations
[clothing]; Visors [headwear].
Class 28: Sporting articles and equipment; Toys, games, playthings and novelties;
Fairground and playground apparatus; Festive decorations and artificial Christmas
trees; Gymnastic articles not included in other classes; Gymnastic and sporting
articles; Body training apparatus [exercise]; Sporting articles not included in other
classes; Bags specially adapted for sports equipment; Trolley bags for golf
equipment; Bladders of balls for games; Cases adapted for sporting articles; Shock
absorbtion pads for protection against injury [sporting articles]; Ball inflators; Covers
(Shaped -) for sporting articles; Soccer ball knee pads; Sports games; Gloves for
games; Football gloves; Gloves made specifically for use in playing sports; Protective
padding for sports; Grips for sporting articles; Face masks for sports; Goal posts;
Balls being sporting articles; Inflatable balls for sports; American footballs;
Basketballs; Rugby footballs; Exercise balls; Gym balls; Handballs; Knee guards
[sports articles]; Elbow guards [sports articles]; Shin guards [sports articles]; Shin
guards for soccer; Skates; Roller skates; Ice skates; Soccer goals; Body protectors
for sports use; Punching bags; Rosin used by athletes; Soccer ball goal nets; Nets
for sports; Cricket bags; Golf bags, with or without wheels; Baseball gloves; Golf
gloves; Fencing gauntlets; Batting gloves [accessories for games]; Boxing gloves;
Balls for games; Play balloons.
Some of the contested goods are identical or similar to goods on which the
opposition is based. For reasons of procedural economy, the Opposition Division will
not undertake a full comparison of the goods listed above. The examination of the
opposition will proceed as if all the contested goods were identical to those of the
earlier marks which, for the opponent, is the best light in which the opposition can be
examined.
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 assumed to be identical are directed at the public at
Decision on Opposition No B 2 826 231 page: 5 of 8
large at business customers with specific professional knowledge or expertise. The
degree of attention is average.
c) The signs
1.
2.
3.
4.
5.
6.
Earlier trade mark(s) Contested sign
The relevant territory is the European Union, including Croatia, Romania and
Bulgaria.
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).
All signs are figurative marks. All earlier trade marks represent curved or sloping
stripes, with the top end narrower than the bottom end. Trade mark No 2. has the
same shape but is completely filled inside. The signs give the impression of one or
Decision on Opposition No B 2 826 231 page: 6 of 8
more stripes coming from further away and going down in the direction of the viewer.
The contested mark shows the illustration of an object in a substantially different
form. This is a product with a flat edge on the right side, which runs slightly obliquely
upwards. Within this slightly inclined surface are three brighter points, representing
holes. From both sides runs a horizontal line to the left. After a short stretch, they
come into a curved, tapered shape. They continue to taper towards the left side, the
end of the upper part being slightly wider than the lower surface. The connection
between these two components is therefore also oblique. It is a flat grey shape with a
slightly darker outline.
Visually, the signs differ in nearly every aspect (see above). The external
appearance, shape, optical perception, view and division of lines are essentially
different. While the earlier marks taper from the front to the rear, the contested mark
shows a illustration of an object with substantially different components. The
narrowing are within the trade mark in the contested trade mark while the earlier
trade marks are oriented in their external appearance. The signs do not coincide in
even one component. Therefore, they are visually dissimilar.
Aurally, 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, neither of the signs has a meaning for the public in the relevant
territory. Since a conceptual comparison is not possible, the conceptual aspect does
not influence the assessment of the similarity of the signs.
As the signs do not coincide in any element, they are dissimilar.
d) Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a
finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary
conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be
rejected.
This finding would still be valid even if the earlier trade marks were to be considered
as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs
cannot be overcome by the highly distinctive character of the earlier trade marks, the
evidence submitted by the opponent in this respect does not alter the outcome
reached above. The same applies for the reasoning of the opponent as regards a
family of marks.
As far as the opponent quotes the decision of the Boards of Appeal in case
R 2709/2014-1 of 23/10/2015, signs “ / ” and
outcome are aptly different. There is no indicative effect for the case to be assessed.
Decision on Opposition No B 2 826 231 page: 7 of 8
REPUTATION — ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when
the following conditions are met.
• The signs must be either identical or similar.
• The opponent’s trade mark must have a reputation. The reputation must also
be prior to the filing of the contested trade mark; it must exist in the territory
concerned and for the goods and/or services on which the opposition is based.
• Risk of injury: use of the contested trade mark would take unfair advantage
of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of
any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR
(16/12/2010, T 345/08 & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However,
the fulfilment of all the abovementioned conditions may not be sufficient. The
opposition may still fail if the applicant establishes due cause for the use of the
contested trade mark.
b) The signs
The signs have already been compared above under the grounds of Article 8(1)(b)
EUTMR. Reference is made to those findings, which are equally valid for Article 8(5)
EUTMR.
As the signs do not coincide in any element, it is concluded that they are dissimilar.
As seen above, similarity between the signs is a requirement for the opposition to be
successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of
the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore,
the opposition must be rejected and there is no need to examine the other conditions
laid down by Article 8(5) EUTMR (24/03/2011, C 552/09 P, TiMiKinderjoghurt,
EU:C:2011:177, § 66).
Decision on Opposition No B 2 826 231 page: 8 of 8
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 opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Lynn BURTCHAELL Peter QUAY Julia SCHRADER
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.