OPPOSITION No B 2 708 314

Robert Klingel OHG, Sachsenstr. 23, 75177 Pforzheim, Germany (opponent), represented by Leitner Zeiher Patent- und Rechtsanwälte, Zerrennerstr. 23-25, 75172 Pforzheim, Germany (professional representative)

a g a i n s t

Bella Luna Oy, Heikinpolventie 1, 37150 Nokia, Finland (applicant)

On 16/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 314 is upheld for all the contested goods.

2.        European Union trade mark application No 15 070 766 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 070 766. The opposition is based on, inter alia, International trade mark registration No 1 083 696 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

The opposition is also based on European Union trade mark registration No 6 459 887 in relation to which the grounds invoked are Article 8(1)(a) and (b) EUTMR. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s International trade mark registration No 1 083 696 designating the European Union and the claim under 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, inter alia, the following:

Class 25: Clothing, including sports clothing, clothing for incontinents, included in this class; neck warmers and back warmers; underwear; knitwear; hosiery; footwear, including sports shoes, especially shoes and leather clogs for women and men, shoe inserts, (shoe inlays, shoe soles, supports for shoes); spikes for shoes; headgear, especially headbands; napkins, as well as napkin pants, made of textile material, the afore-mentioned goods, also as disposable articles; inner soles; parts and elements of the afore-mentioned goods, included in this class.

The contested goods are the following:

Class 25: Footwear; Headgear; Clothing.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘including’ and ‘especially’, used in the opponent’s list of goods, indicate that the specific goods listed after these terms are only examples of items included in the broader categories preceding them and that protection is not restricted to these specific goods. In other words, they introduce non-exhaustive lists of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Class 25

For the reasons outlined above, the contested footwear; headgear and clothing are identically covered respectively by the opponent’s footwear, including sports shoes, especially shoes and leather clogs for women and men; headgear, especially headbands and clothing, including sports clothing.

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 considered to be average.

3. The signs

Vamos	vamosko
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 earlier mark is the word mark ‘Vamos’. In the case of word marks, it is the word as such that is protected and not its written form.

The word ‘Vamos’ will not have any meaning for the non-Spanish and non-Portuguese-speaking public in the European Union (such as, for example, the public in Germany and Poland). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-Spanish and non-Portuguese-speaking part of the public for which the word ‘Vamos’ will be perceived as fanciful and, therefore, distinctive.

The contested sign is the word mark ‘vamosko’ which will not be understood as having any meaning for the relevant part of the public and is, therefore, distinctive.

Visually, the earlier mark, ‘Vamos’, is fully contained at the beginning of the contested sign, ‘vamosko’, and they thus coincide in the first five letters, ‘V-A-M-O-S’. However, they differ in the additional two letters, ‘K-O’, contained at the end of the contested sign.

Nevertheless, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables /VA/-/MOS/, present identically in both signs. The pronunciation differs in the additional syllable /KO/ at the end of the contested sign, which has no counterpart in the earlier mark.

For the same reasons as those outlined above, the signs are aurally highly similar.

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 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 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 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

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).

Account should also be 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).

In the present case, the goods at issue are identical and the degree of attention of the relevant public is average. The earlier mark ‘Vamos’, which has a normal degree of distinctiveness, is identically reproduced at the beginning of the contested sign, which is the part that first catches the attention of consumers. Consequently, and despite the slightly different ending of the contested sign with the additional letters ‘ko’, the signs are highly similar overall and they will be associated with no particular concept for the non-Spanish and non-Portuguese-speaking part of the relevant public.

Considering this and taking into account the principles of interdependence and imperfect recollection as outlined above, the Opposition Division considers that there is a likelihood of confusion on the non-Spanish and non-Portuguese part of the relevant public in the European Union within the meaning of Article 8(1)(b) EUTMR. 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 1 083 696 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the examined earlier right and ground invoked leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right or the additional ground invoked by the opponent in relation to this mark (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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 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

Anunciata SEVA MICO

Sam GYLLING

Denitza STOYANOVA-VALCHANOVA

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