CANCELLATION DIVISION
CANCELLATION No 13 982 C (INVALIDITY)
Okamoto Sportswear GmbH, An´n Slagboom 7, 22848 Norderstedt, Germany
(applicant), represented by Taylor Wessing, Hanseatic Trade Center Am Sandtorkai
41, 20457 Hamburg, Germany (professional representative)
a g a i n s t
Sovmestnoe obchtchestvo s ogranitchennoy otvetstvennostiyu “Conte Spa”, d.
30, Pobedy Street, 230026 Grodno, Belarus (IR holder).
On 21/11/2017, the Cancellation Division takes the following
DECISION
1. The application for a declaration of invalidity is upheld.
2. International trade mark registration No 1 192 414 is declared invalid in its
entirety for the European Union.
3. The IR holder bears the costs, fixed at EUR 1 080.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 applicant filed an application for a declaration of invalidity against all the goods of
international registration designating the European Union No 1 192 414 ‘TRINITI’. The
application is based on German trade mark registration No 2 902 278 ‘TRINITY’. The
applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that there is likelihood of confusion on the part of the public.
The IR holder was invited to appoint a representative and to file observations to the
invalidity application. The IR holder did not appoint a representative and neither did it
file any other communication to the Office.
Decision on Cancellation No 13 982 C Page 2 of 5
LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION
WITH 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 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.
The goods on which the application is based are the following:
Class 25: Clothing, in particular outer clothing for women and men and children;
footwear.
The contested goods are the following:
Class 25: Headgear except headgear for sport; underclothing; brassieres; teddies
(undergarments); hosiery; layettes (clothing); neckties; knitwear; beach
clothes; masquerade costumes; ear muffs (clothing); headbands
(clothing); bath slippers; sashes for wear; scarfs; gaiter straps; women’s
stockings, tights, leggings; children’s stockings, tights, leggings.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods. The term in particular, used in the applicant’s list of goods,
indicates that the specific goods are only examples of items included in the category
and that protection is not restricted to them. In other words, it introduces a non-
exhaustive list of examples (on the use of in particular see reference in judgment of
09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
Contested goods in Class 25
The contested underclothing; brassieres; teddies (undergarments); hosiery; layettes
(clothing); neckties; knitwear; beach clothes; masquerade costumes; ear muffs
(clothing); headbands (clothing); sashes for wear; scarfs; gaiter straps; women’s
stockings, tights, leggings; children’s stockings, tights, leggings belong to the
applicant’s broad category clothing, in particular outer clothing for women and men and
children. Therefore, these goods are identical.
The contested bath slippers fall into the broad category footwear of the earlier mark.
These goods are identical.
Decision on Cancellation No 13 982 C Page 3 of 5
Finally, the contested headgear except headgear for sport is of an identical or very
similar nature as the applicant’s clothing, in particular outer clothing for women and
men and children. They also serve the same purpose, in particular in the case of
clothing designed to give protection against the elements. Furthermore, headgear is
seen not only as something worn on the head to protect against the weather, but also
as a fashion article, possibly matching an outfit, and for this reason is sometimes
chosen to complement clothing. The distribution channels for these goods coincide and
their sales outlets or the retail departments they are sold in are often either the same or
at least closely connected. Taking all these factors into account, headgear except
headgear for sport and clothing, in particular outer clothing for women and men and
children, are considered similar.
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 or similar are directed at the public
at large. The degree of attention is average.
c) The signs
TRINITY TRINITI
Earlier trade mark Contested trade mark
The relevant territory is Germany.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression, bearing in mind their distinctive and
dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
Both marks are word marks containing a single word element.
Visually, the signs coincide in six out of seven letters placed at the same order. They
merely differ in their last letters ‘Y’ versus ‘I’, which difference is, considering the overall
length of the words and their identical structure, rather marginal. Therefore, the marks
are visually similar to a high degree.
Aurally, the German relevant public will pronounce the marks identically.
Conceptually, the marks may be both perceived as meaningless, in which case the
conceptual aspect does not influence the assessment of the similarity of the signs, or
they may be associated with the German word ‘Trinität’ meaning the holy trinity in the
religious sense. In that case, the marks are conceptually identical.
Decision on Cancellation No 13 982 C Page 4 of 5
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.
The applicant did not explicitly claim that its mark is particularly distinctive by virtue of
intensive use or reputation.
Consequently, 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 from the perspective of the public in the relevant territory.
Therefore, the distinctiveness of the earlier mark must be seen as normal.
e) Global assessment, other arguments and conclusion
According to settled case-law, the risk that the public might believe that the goods or
services in question come from the same undertaking or, as the case may be, from
economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998,
C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the
public must be appreciated globally, taking into account all factors relevant to the
circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of
the risk of confusion entails certain interdependence between the factors taken into
account and, in particular, between the similarity of the trademarks and the similarity of
the goods or services covered. Accordingly, a low degree of similarity between those
goods or services may be offset by a high degree of similarity between the marks, and
vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
The marks are both comprised by a single word element which is nearly identical, the
only difference being the last letters, which, moreover, will be pronounced identically.
While the earlier mark has a normal degree of distinctiveness and the goods are
identical and similar, this insignificant difference in only one letter and only from the
visual perspective, in marks that are not short, cannot exclude the possibility that
average consumers will confuse the marks, in particular taking into account that they
only rarely have the chance to directly compare the marks.
Considering the above, there is a likelihood of confusion on the part of the public.
Therefore, the application is well founded on the basis of the applicant’s German trade
mark registration No 2 902 278. It follows that the contested trade mark must be
declared invalid for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in cancellation proceedings must
bear the fees and costs incurred by the other party.
Since the IR holder is the losing party, it must bear the cancellation fee as well as the
costs incurred by the applicant in the course of these proceedings.
Decision on Cancellation No 13 982 C Page 5 of 5
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs
to be paid to the applicant are the cancellation fee and the representation costs, which
are to be fixed on the basis of the maximum rate set therein.
The Cancellation Division
Pierluigi M. VILLANI Michaela SIMANDLOVA María Belén
IBARRA DE DIEGO
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 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 Cancellation Division on request. According to Article 109(8) EUTMR, such a
request must be filed within one month of 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.