OPPOSITION No B 2 757 683

Project E, 973 Lambert Drive NE, Atlanta, Georgia 30324, United States of America (opponent), represented by Rapisardi Intellectual Property Limited, 2A Collier House, 163/169 Brompton Road, London SW3 1PY, United Kingdom (professional representative)

a g a i n s t

Boom Bap Wear – France LDA, Centro empresarial de Braga, Rua Professor Henrique Barros, Lote B1, 4705-319 Braga, Portugal (applicant), represented by Abel Dário Pinto de Oliveira, Rua Nossa Senhora de Fátima n° 419 – 3º Frente, 4050-428 Porto, Portugal (professional representative).

On 27/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 757 683 is upheld for all the contested goods.

2.        European Union trade mark application No 15 496 813 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 15 496 813, . The opposition is based on European Union trade mark registration No 6 073 894, . 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:        Footwear; Headgear; Clothing.

The goods 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 in question.

In the present case, the goods at issue 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 that consists of the letter combination ‘XX’ written in a fairly stylised typeface.

The contested sign is a figurative mark that consists of the letters ‘XX’, placed one above the other, and the word elements ‘BOOM BAP WEAR’, which appear underneath in a significantly smaller typeface. Due to its size and central position, the letter combination ‘XX’ is the dominant (most eye-catching) element of the contested sign. The word elements ‘BOOM BAP’ will be associated by part of the relevant public with a style of production in hip-hop music that is characterised by its prominent drum sounds. For the remaining part of the public, they will have no meaning. In any case, as they are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive. On the other hand, the word element ‘WEAR’ is descriptive for the English-speaking part of the public. However, it is distinctive for the remaining part of the public, for which it has no meaning in relation to the goods in Class 25.

Visually, the signs coincide in the letters ‘XX’. They differ in the additional word elements, ‘BOOM BAP WEAR’, of the contested sign, the stylisation of the coinciding letters, ‘XX’, and their alignment, which is horizontal in the earlier mark and vertical in the contested sign. However, bearing in mind that the coinciding letters are also the dominant element of the contested sign, which clearly overshadows the additional word elements, they will naturally catch the attention of consumers. As a result, and because of the dominant character of the coinciding letters in the contested sign, the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛XX’, present identically in both signs. The pronunciation differs in the sound of the additional word elements ‘BOOM BAP WEAR’ of the contested mark. However, due to their size and subordinate position, these elements will not necessarily be pronounced. Consequently, the signs are aurally similar to a high degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the letter combination ‘XX’, included in both signs, will be associated with a concept of a double letter ‘X’. To that extent, the signs are conceptually highly similar. Reference is also made to the previous assertions concerning the semantic content conveyed by the additional word elements of the contested sign. Their impact will, however, be reduced because they are overshadowed by the dominant element of the contested sign.

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 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

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 contested goods are identical to the opponent’s goods. The degree of attention is average. The signs have the distinctive element ‘XX’ in common, which is also the dominant element of the contested sign. Consequently, they are visually similar to an average degree and they are highly similar aurally and conceptually. The differences resulting from the additional word elements and the figurative stylisation of the signs are not sufficient to safely rule out likelihood of confusion. Account is 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). Bearing this in mind, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that the earlier trade mark has a reduced distinctive character given that there are many trade marks that include the letters ‘XX’. In support of its argument, the applicant refers to several trade mark registrations in Benelux, Denmark, Germany, France, Italy, Austria, Finland, Sweden and the United Kingdom.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the letters ‘XX’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 073 894. It follows that the contested trade mark must be rejected for all the contested goods.

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

Michał KRUK

Arkadiusz GORNY

Judit NÉMETH

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.