OPPOSITION No B 2 745 886

Vigoss Tekstil Konfeksiyon Sanayi ve Ticaret Anonim Sirketi, Günesli Evren Mah. Gulbahar Cad. Yesiltepe Sok. N.5, Bagcilar, Istanbul 134045, Turkey (opponent), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte Part GmbB, Anna-Louisa-Karsch-Str. 2, 10178 Berlin, Germany (professional representative)

a g a i n s t

Zhen Zhang, Floor 6, Building A7, Wangheng Industrial Park, Fuguang Village, Nanshan District, Shenzhen City, Guangdong Province, People’s Republic of China (applicant), represented by Eurochina Intellectual Property, San Mateo, 65 – Local 1 ‘Llopis & Asociados’, 03012 Alicante, Spain (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 745 886 is partially upheld, namely for the following contested goods:

Class 14:        Watch bands; straps for wristwatches; watch chains; watches; watch cases; chronographs [watches]; chronometric instruments; chronometers; clocks and watches, electric; jewelry ornaments.

Class 28:         Protective paddings [parts of sports suits]; body-building apparatus; shin guards [sports articles]; elbow guards [sports articles]; knee guards [sports articles]; weight lifting belts [sports articles]; arm guards for sport use; sports belts.

2.        European Union trade mark application No 15 253 925 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 253 925. The opposition is based on European Union trade mark registration No 4 223 236. The opponent invoked Article 8(1)(a) and (b) EUTMR.

Preliminary remark on the basis of opposition

According to Article 41(1) EUTMR, the notice of opposition must be filed within a period of three months following the publication of the EU trade mark application.

According to Rule 15(2)(b) EUTMIR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based.

The contested European Union trade mark application was published on 05/05/2016. The opposition period expired on 05/08/2016. Within the opposition period, namely on 01/08/2016, the opponent filed a notice of opposition invoking EUTM No 4 223 236 as the basis of the opposition. However, on 21/12/2016, within the period allowed for the opponent to substantiate the earlier right and to submit further facts, evidence and arguments, it invoked an additional right as a basis of the opposition, namely international registration No 1 216 766 designating the European Union for the figurative sign  covering, inter alia, goods in Classes 9, 14, 18 and 25. The additional right invoked after the expiry of the three-month opposition period widens the basis of the opposition and it is inadmissible.

Therefore, the opposition must be rejected as inadmissible insofar as it is based on earlier international registration No 1 216 766, and the opposition is deemed to be based only on earlier EUTM No 4 223 236.

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 14:         Ankle bracelets, belt buckles of precious metal for clothing, bolo ties with precious metal tips, bracelets, bracelets of precious metal, brooches, cigar and cigarette boxes of precious metal, cigarette cases made of precious metal, cigarette holders of precious metal, cigarette lighters of precious metal, clip earrings, clocks, costume jewellery, cuff-links, diving watches, earrings, fancy keyrings of precious metals, jewel chains, jewel pendants, jewellery boxes of precious metal, jewellery cases of precious metal, jewellery caskets of precious metal, jewellery chains, jewellery findings, jewellery for the head, jewellery pins for use on hats, jewellery watches, key holders of precious metals, key rings of precious metal, lapel pins, letter openers of precious metal, match boxes of precious metal, match holders of precious metal, mechanical and automatic watches, neck chains, necklaces, necktie fasteners, ornamental lapel pins, ornamental pins, ornaments of precious metal, pins being jewellery, pocket watches, purses and wallets of precious metal, rings, tie bars, tie clips, tie fasteners, tie pins, tie tacks, watch boxes, watch bracelets, watch cases, watch chains, watches, watches containing an electronic game function, watches containing a game function, watches for outdoor use.

Class 18:         Athletic bags, all purpose athletic bags, attache cases, backpacks, baby backpacks, baby carriers worn on the body, all purpose sports bags, barrel bags, beach bags, book bags, Boston bags, carry-on bags, clutch bags, diaper bags, duffel bags, gym bags, leather shopping bags, overnight bags, school book bags, school bags, shoulder bags, textile shopping bags, tote bags, travel bags, travelling bags, garment bags for travel, shoe bags for travel, billfolds, hat boxes for travel, briefcase-type portfolios, briefcases, business card cases, calling card cases, credit card cases, infants carriers worn on the body, non-motorized collapsible luggage carts, document cases, key cases, overnight cases, passport cases, cosmetic cases sold empty, toiletry cases sold empty, vanity cases sold empty, change purses, clutch bags, clutch purses, coin purses, drawstring pouches, fanny packs, felt pouches, golf umbrellas, handbags, leather key fobs, knapsacks, luggage, luggage tags, waist packs, parasols, pocketbooks, briefcase-type portfolios, purses, rucksacks, suitcases, valises, wallets.

Class 25:         Anklets, anoraks, balloon pants, bandannas, bandeaus, head bands, sweat bands, neck bands, wrist bands, bathing suits, bathing trunks, bathrobes, beach cover-ups, beachwear, bed jackets, money belts, belts, berets, Bermuda shorts, cloth bibs, blazers, bloomers, blouses, blousons, boas, body shapers, body suits, boleros, bonnets, bottoms, bow ties, boxer shorts, bras, brassieres, breeches, briefs, bustiers, caftans, camisoles, capes, caps, cardigans, cassocks, chaps, chemises, coats, fur coats, leather coats, overcoats, rain coats, sport coats, suit coats, top coats, collars, corselets, corsets, coveralls, cover-ups, cravats, creepers, cuffs, culottes, cummerbunds, dickies, dresses, dressing gowns, dungarees, dusters, evening gowns, foul weather gear except for footwear, foundation garments, frocks, fur jackets, fur stoles, gabardines, gaiters, gauchos, gloves, golf shirts, gowns, night gowns, greatcoats, gym shorts, gym suits, halter tops, hats, head wear, hoods, hosiery, housecoats, infantwear, jackets, leather jackets, wind resistant jackets, jeans, jerseys, jodhpurs, jogging suits, jumpers, jumpsuits, kerchiefs, knee highs, knickers, knit shirts, leggings, leotards, lingerie, loungewear, maillots, mantillas, mantles, miniskirts, mittens, mufflers, muffs, muu muus, neckerchiefs, neckties, neckwear, negligees, night shirts, overalls, pyjamas, pantaloons, panties, pants, sweat pants, tap pants, pantsuits, pantyhose, pareu, parkas, pedal pushers, peignoirs, petticoats, pinafores, play suits, pocket squares, polo shirts, ponchos , pullovers, quilted vests, rain wear except footwear, robes, rompers, sarongs, sashes, scarves, shawls, shifts, shirts, sport shirts, sweat shirts, undershirts, shortalls, shorts, sweat shorts, singlets, skirts, slacks, sleepwear, slips, smocks, socks, stockings, stoles, suits, vested suits, warm-up suits, sun visors, suspenders, swaddling clothes, sweaters, turtleneck sweaters, V-neck sweaters, sweatsocks, swim trunks, swim wear, swimsuits, T-shirts, tailleurs, tangas, tanktops, teddies, tennis wear, footwear, ties, tights, togas, tops, toques, tracksuits, trousers, tunics, turbans, turtlenecks, tuxedos, underclothes, undergarments, underpants, underwear, unitards, veils, vests, visors, waistcoats, wraps, saris.

The contested goods are the following:

Class 9:         Smartwatches; smart goggles; navigational instruments; wearable activity trackers; covers for smartphones; battery chargers; cases for smartphones; DVD players; headphones; portable media players; video recorders; cameras [photography]; computers.

Class 14:         Watch bands; straps for wristwatches; watch chains; watches; watch cases; chronographs [watches]; chronometric instruments; chronometers; clocks and watches, electric; jewelry ornaments.

Class 28:         Protective paddings [parts of sports suits]; body-building apparatus; shin guards [sports articles]; elbow guards [sports articles]; knee guards [sports articles]; weight lifting belts [sports articles]; apparatus for games; arm guards for sport use; sports belts.

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.

Contested goods in Class 9

Regarding the contested smartwatches, in its observations the opponent argues that watches having an electronic game function should be considered smartwatches. However, while watches may have various functions such as lights, calendars, alarms, etc., their nature remains that of timepieces. Although the contested smartwatches and the opponent’s watches; watches containing a game function in Class 14 are wearable on the wrist, the functionality of the contested smartwatches goes far beyond timekeeping. In addition to offering basic functions such as calculations, translations and games, they perform the functions of a portable computer, a portable media player or a mobile phone. In general, their nature is similar to that of computers, as they contain software, may collect information from internal or external sensors and may control or retrieve data from other instruments or computers. They may support wireless technologies. Therefore, the contested smartwatches and the opponent’s watches; watches containing a game function have different natures and purposes. They have different producers and distribution channels. Therefore, they are dissimilar. The contested smartwatches also have a different nature, purpose and usual origin, and different distribution channels, from those of the opponent’s remaining goods in Class 14 and goods in Classes 18 and 25. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

The contested smart goggles are self-adapting electronic eyewear that can add information to what the wearer sees. They have a different nature, purpose and method of use from those of the opponent’s goods in Classes 14, 18 and 25. They have different producers and distribution channels. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

The contested navigational instruments are navigation tools, the purpose of which is to ascertain position and determine speed, direction, etc., to enable users to arrive at their destination. In its observations, the opponent argues that watches for outdoor use typically comprise navigational instruments. However, watches for outdoor use are still watches, the main function of which is to show the time. They have a different nature, purpose and method of use from those of navigational instruments. They do not have the same producers and distribution channels. Furthermore, the contested navigational instruments also have a different nature, purpose and method of use, and different producers and distribution channels, from those of the opponent’s remaining goods in Class 14 and goods in Classes 18 and 25. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

The contested wearable activity trackers are devices for monitoring and tracking fitness-related metrics, such as distance walked or run, calorie consumption, etc. They have a different nature, purpose and method of use from those of the opponent’s goods in Classes 14, 18 and 25. They have different producers and distribution channels. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

The contested covers for smartphones; battery chargers; cases for smartphones; DVD players; headphones; portable media players; video recorders; cameras [photography]; computers have different natures, purposes and methods of use from those of the opponent’s goods in Classes 14, 18 and 25. They have different producers and distribution channels. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 14

Watch chains; watches; watch cases are identically contained in both lists of goods.

The contested watch bands; straps for wristwatches overlap with the opponent’s watch bracelets. Therefore, they are identical.

The contested chronographs [watches]; chronometric instruments; chronometers overlap with the opponent’s watches. Therefore, they are identical.

The contested watches, electric are included in the broad category of the opponent’s watches. Therefore, they are identical.

The contested jewelry ornaments include as a broader category the opponent’s ornamental pins. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested clocks, electric have the same nature as the opponent’s watches, as both goods are timepieces. Furthermore, they have the same producers and relevant public. Therefore, they are similar.

Contested goods in Class 28

The contested protective paddings [parts of sports suits]; shin guards [sports articles]; elbow guards [sports articles]; knee guards [sports articles; arm guards for sport use are items of protective padded gear worn when taking part in sport. They are worn by participants in many recreational and sporting activities such as cycling, roller skating, skateboarding, cricket, volleyball, handball, basketball, ice-hockey, etc., and serve to protect the wearer’s body parts, such as elbows, knees, etc. The opponent’s gym suits in Class 25 are sports clothes that are used while participating in various sporting activities. These goods can have the same producers, distribution channels and relevant public. Therefore, they are similar to a low degree.

The contested body-building apparatus is workout/fitness equipment and the opponent’s gym suits in Class 25 are sports clothes designed specifically to be used when participating in sporting activities. Although the natures of these goods are different, there are undertakings that manufacture both fitness equipment and sports clothing. Therefore, they can have the same producers. Furthermore, they can also have the same distribution channels and relevant public. Therefore, they are similar to a low degree.

The contested weight lifting belts [sports articles]; sports belts and the opponent’s belts in Class 25 have the same nature and method of use, as they are worn around the waist. They have the same relevant public. Therefore, they are similar to a low degree.

The contested apparatus for games refers to electronic amusement equipment or video games. This product has a different nature, purpose and method of use, and different distribution channels, from the opponent’s goods in Classes 14, 18 and 25. They do not originate from the same manufacturers. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

2. The signs

VIGOSS
Earlier trade mark	Contested sign

An EUTM application should be considered identical to an earlier trade mark ‘where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer’ (20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54).

An insignificant difference between two marks is a difference that a reasonably observant consumer would perceive only upon examining the marks side by side. ‘Insignificant’ is not an objective term, and its interpretation depends on the level of complexity of the trade marks under comparison. Insignificant differences are those that, because they concern elements that are very small or are lost within a complex mark, cannot be readily detected by the human eye upon observing the trade mark concerned, bearing in mind that the average consumer does not normally indulge in an analytical examination of a trade mark but perceives it in its entirety.

The earlier trade mark is a word mark and the contested sign is a figurative mark, which is, however, depicted in a standard typeface without any additional figurative elements. Both signs consist of the word ‘VIGOSS’. The only difference between the signs is the almost imperceptible stylisation of the contested sign, which could be perceived by a reasonably observant consumer only upon examining the marks side by side, and consequently it is considered insignificant.

Therefore, the signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods, namely watch bands; straps for wristwatches; watch chains; watches; watch cases; chronographs [watches]; chronometric instruments; chronometers; watches, electric; jewelry ornaments in Class 14 are identical to some of the opponent’s goods. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

Furthermore, the contested goods in Class 14, namely clocks, electric, are similar to some of the opponent’s goods, and some of the contested goods in Class 28, namely protective paddings [parts of sports suits]; body-building apparatus; shin guards [sports articles]; elbow guards [sports articles]; knee guards [sports articles]; weight lifting belts [sports articles]; arm guards for sport use; sports belts are similar to a low degree to some of the opponent’s goods.

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 identity between the signs is clearly sufficient to offset the low degree of similarity between the goods. The Opposition Division finds that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against the goods found to be similar or similar to a low degree.

The rest of the contested goods are dissimilar. As the similarity of goods is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Solveiga BIEZA

Birute SATAITE-GONZALEZ

Zuzanna STOJKOWICZ

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.