OPPOSITION No B 2 643 792

K-2 Corporation, 4201 6th Ave S, Seattle, Washington 98108, United States of America (opponent), represented by Mitscherlich, Patent- Und Rechtsanwälte, Partmbb, Sonnenstraße 33, 80331 Munich, Germany (professional representative)

a g a i n s t

Zoot a.s., Zubatého 295/5 Smíchov, 15000 Praha 5, the Czech Republic (applicant), represented by Tomáš Elbert, Nedvědovo náměstí 2/3, 147 00 Prague 4, the Czech Republic (professional representative).

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 643 792 is partially upheld, namely for the following contested goods and services:

Class 18:         Handbags; holdalls; multi-purpose purses; backpacks; casual bags; shopping bags.

Class 35:        Retail services in relation to clothing; retail services connected with the sale of clothing and clothing accessories; online retailing of clothing.

2.        European Union trade mark application No 14 369 532 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 369 532, for the figurative trade mark . The opposition is based on, inter alia, European Union trade mark registrations No 5 233 119, for the word mark ‘ZOOT’, No 9 572 173, for the word mark ‘Z ZOOT’, and No 4 719 316, for the figurative mark . The opponent invoked Article 8(1)(a) and (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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 5 233 119.

1. The goods and services

The goods on which the opposition is based are the following:

Class 9: Diving suits.

Class 25: Articles of clothing namely swimwear, footwear and headgear.

After a limitation, the contested goods and services are the following:

Class 18: Handbags; holdalls; multi-purpose purses; umbrellas; backpacks; casual bags; shopping bags.

Class 35: Retail services in relation to clothing; data search in computer files for others; market research and marketing studies; presentation of goods on communication media, for retail purposes; administrative processing of purchase orders; on-line advertising on a computer network; retail services connected with the sale of clothing and clothing accessories; online retailing of clothing.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 18

The opponent’s swimwear, headgear and footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion. The contested handbags; holdalls; multi-purpose purses; backpacks; casual bags; shopping bags in Class 18 include goods such as bags, handbags, sports bags and backpacks. These goods are related to articles of swimwear, headgear and footwear in Class 25. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of outer swimwear, headgear and even footwear as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of swimwear, headgear and footwear to directly produce and market the related handbags; holdalls; multi-purpose purses; backpacks; casual bags; shopping bags. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

The same does not apply to the contested umbrellas, which are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod. The nature of these goods is very different from that of swimwear, headgear and footwear in Class 25. They serve very different purposes (protection from rain/sun versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services in relation to clothing; retail services connected with the sale of clothing and clothing accessories; online retailing of clothing are similar to a low degree to the opponent’s articles of clothing namely swimwear.

The rest of the contested services in Class 35 consist mainly in professional services rendered by specialist companies such as business consultants, which help their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share or to promote the launch and/or sale of their goods and services, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Therefore, the contested data search in computer files for others; market research and marketing studies; presentation of goods on communication media, for retail purposes; administrative processing of purchase orders; on-line advertising on a computer network are dissimilar to the opponent’s goods in Classes 9 and 25. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Their purposes are different. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary.

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 and services found to be similar to various degrees are directed at the public at large.

The degree of attention is average.

3. The signs

ZOOT
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 word mark, ‘ZOOT’. The contested mark is a figurative mark composed of the verbal element ‘ZOOT’ followed by a dot; the two letters ‘OO’ are conjoined.

The coinciding element ‘ZOOT’ has no meaning for the relevant public and is, therefore, distinctive to an average degree.

The dot following the verbal element ‘ZOOT’ of the contested sign will be perceived as a punctuation mark by the relevant public and it is devoid of any distinctive character.

Visually, the signs coincide in the verbal element ‘ZOOT’, present identically in both signs. However, they differ in the stylisation and the dot following the verbal element of the contested mark, the latter being devoid of any distinctive character.

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 sound of the letters ‛ZOOT’, present identically in both signs.

Therefore, the signs are aurally identical.

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.

According to the opponent, the earlier trade mark enjoys a high degree of recognition among the relevant public in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Enclosure A1: an extract from the website zootsports.com, listing goods such as clothing, footwear and headgear, and accessories for these goods.

• Enclosure A2: an extract from the website zootsports.com, listing goods such as bags.

• Enclosure A3: an extract from the website zootsports.com, entitled ‘zootsports Locator’, showing two locations in the United Kingdom.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Despite showing some use of the trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted.

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

The goods and services are partly similar and partly dissimilar to the opponent’s goods and target the public at large with an average degree of attention.

The Court has set out the essential principle that 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). In the present case, the low degree of similarity between some of the services, together with the high degree of visual similarity and the aural identity between the marks, will have to be taken into account when assessing the likelihood of confusion between the marks.

From the point of view of the relevant public, the signs are visually highly similar and aurally identical, inasmuch as they coincide in the verbal element ‘ZOOT’, which is the only verbal element of both marks. The signs differ in only the stylisation and the dot following the verbal element of the contested mark, the latter being devoid of any distinctive character.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 233 119.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to those of the earlier trade mark. This conclusion furthermore stands for the contested services found to be similar to a low degree. This is because the similarity between the signs is sufficiently significant to lead to a likelihood of confusion in relation to the services that have only a low degree of similarity.

The rest of the contested goods and services are dissimilar. As similarity of goods and services 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

The opponent has also based its opposition on the following earlier trade marks:

(1) European Union trade mark registration No 9 572 173, for the word mark ‘Z ZOOT’, registered for sports/technical clothing, footwear, and headgear and sports t-shirts, including swimwear and wetsuits in Class 25.

(2) European Union trade mark registration No 4 719 316, for the figurative mark , registered for clothing, footwear, headgear in Class 25, retailing in the field of sports clothing and equipment in Class 35, sponsoring of athletes during sports competitions and/or events in Class 36 and providing information relating to sports competitions and events via a global computer information network in Class 41.

The other earlier rights invoked by the opponent are less similar to the contested mark. Earlier mark (1) includes an additional letter, ‘Z’, placed at the beginning of the mark, whereas earlier mark (2) includes an additional word, ‘SPORT’, depicted twice, once below and once in an inverted form above the highly stylised element ‘ZOOT’. Therefore, the marks contain additional elements that are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of the goods. As regards the services of earlier mark (2), these have different natures and purposes from the contested goods and services found to be dissimilar. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

With regard to the dissimilar goods and services, the examination of the opposition will proceed with the other ground raised by the opponent, Article 8(5) EUTMR.

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 of 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: the 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.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. 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.

2. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined 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.

Despite showing some use of the trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the 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.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Birgit FILTENBORG

Francesca DRAGOSTIN

Marianna KONDAS

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.