SUB ZERO | Decision 2425570 - zero Holding GmbH & Co. KG v. Sub Zero Technology Limited
Date Published: Oct 11, 2017
OPPOSITION No B 2 425 570
zero Holding GmbH & Co. KG, Konsul-Smidt-Str. 8G, Speicher 1, Haus 2-4, 28217 Bremen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)
a g a i n s t
Sub Zero Technology Limited, 35 Churchill Way, Fleckney, Leicestershire LE8 0UD, United Kingdom (applicant), represented by Serjeants LLP, Dock 75 Exploration Drive, Leicester LE4 5NU, United Kingdom (professional representative)
On 30/03/2017, the Opposition Division takes the following
1. Opposition No B 2 425 570 is partially upheld, namely for the following contested goods:
Class 25: Articles of clothing.
2. European Union trade mark application No 12 834 073 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against some of the goods of European Union trade mark application No 12 834 073, namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 5 345 798. 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.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 3: Cosmetic soaps; perfumery, essential oils, articles for body- and beauty-care.
Class 9: Spectacles including sunglasses.
Class 14: Jewellery, including costume jewellery; clocks and watches, watchstraps.
Class 18: Bags included in class 18.
Class 25: Outerclothing, including knitted and woven clothing; footwear, headgear, belts (except belts made of common and precious metals and imitations thereof) (clothing), gloves (clothing), scarves, headscarves and neckerchiefs.
Class 26: Belt buckles (clothing accessories).
Class 35: Retail services, including for mail order, by means of teleshopping channels and via the Internet, in relation to clothing, headgear and footwear, leatherware (including clothing), cosmetics, perfumery, eyewear, wrist watches and pocket watches, jewellery; presentation of goods in shops, trade fairs and on communications media, for retail purposes; professional business consultancy and marketing for others; franchising, namely providing of organisational know-how.
For the sake of clarity, the opposition was also based on services in Class 36. However, the earlier mark, European Union trade mark registration No 5 345 798, was due for renewal on 29/09/2016 and the opponent did not renew the earlier mark insofar as the services in Class 36 were concerned. Therefore, as the earlier mark no longer covers the services in Class 36, the opposition cannot be based on these services.
The contested goods are the following:
Class 25: Articles of clothing; parts and fittings for the aforesaid.
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 ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 25
The contested articles of clothing include, as a broader category, the opponent’s outerclothing, including knitted and woven clothing. 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 opponent’s goods in Class 25 include, inter alia, outerclothing as referred to above. The contested parts and fittings for the aforesaid [articles of clothing] include goods such as ready-made linings [parts of clothing], pockets for clothing, dress shields, shirt fronts and shirt yokes. However, the mere fact that a certain product can be composed of several components does not establish an automatic similarity between the finished product and its parts (see judgment of 27/10/2005, T-336/03, ‘Mobilix’, § 61). Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as the producer, the relevant public and/or complementarity, be fulfilled. In the case at hand, the goods are usually produced by different manufacturers and target a different public. Moreover, the relevant goods differ in their nature, purpose and method of use. They are, therefore, considered to be dissimilar. The same reasoning applies to the opponent’s remaining goods in Class 25 which essentially consist of footwear, headgear and other specific items of clothing. As regards the opponent’s goods in Classes 3, 9, 14, 18 and services in Class 35, they also have a different nature, purpose, distribution channels, relevant public and producers to the contested goods and are therefore also dissimilar. The opponent’s goods in Class 26 consist of belt buckles (clothing accessories). Although these goods are clothing accessories, they have a different nature and purpose than the contested parts and fittings for clothing; they are not complementary nor in competition and are not usually produced by the same manufacturers. As a result, although these goods may target the same relevant public, this is not, on its own, sufficient to find a similarity between the goods. Therefore, the opponent’s goods in Class 26 are also considered dissimilar to the remaining contested goods in Class 25.
For the reasons outlined above, the contested parts and fittings for the aforesaid [articles of clothing] are dissimilar to all of the opponent’s goods and services in Classes 3, 9, 14, 18, 25, 26 and 35.
- 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.
- The signs
Earlier trade mark
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 consisting of the verbal element ‘ZERO’ depicted in stylised lowercase letters.
The word ‘ZERO’ is an English word which refers to the number ‘nought’. In relation to the perception of this word in the European Union, the Board of Appeal has held that (decision of 01/03/2011, Case R 380/2010-2, ZYRO / zero):
43. It is difficult to establish with certainty if the average consumer in the entire Community will understand its meaning (as the figure or symbol ‘0’). It is true that in many Member States the national equivalent of the English word ‘zero’ is very different (including Germany and other Member States in which Germanic or Slavic languages are spoken). However, it should also be noted that the Courts have considered on various occasions that the average consumer in the Community as a whole would understand certain English words (e.g. see judgment of 21 January 2010, T 309/08, ‘G Stor’, para. 32 in which it was considered that the element ‘star’, is a word which is part of basic English vocabulary, the meaning of which is widely understood throughout the Community, or see judgment of 16 January 2008, T 112/06, ‘Idea’, para. 69, second sentence: ‘[f]urthermore, ‘idea’ is a basic expression in English, the meaning of which is generally known even to the non-English-speaking public, or the judgment of 3 March 2004, T-355/02, ‘Zirh’, para. 46: ‘…it is likely that the average consumer in the Member States will think of the English word ‘sir’ given the widespread acquaintance with that word in Europe’.
44. If it is considered that words ‘star’, ‘idea’ or ‘sir’ can be understood by the relevant public in the entire Community, the Board, without any evidence proving the contrary, sees no reason not to come to the same finding as concerns the perception by the relevant public in the Community, that is all Member States, as regards such a basic and common English word as ‘zero’. As to the word ‘zero’ the Board notes, furthermore, that it is rather common for the relevant public in the entire Community to be confronted with this sign on, for example, (the packaging of) non-alcoholic beverages (indicating they have zero sugar).
In line with the reasoning of the Board of Appeal in the decision referred to above and taking into account that there is no evidence to the contrary in the present case, the Opposition Division considers that the meaning of the very basic English word ‘ZERO’ as referring to the number ‘nought’ will be perceived by the relevant public in all the Member States of the European Union.
As regards the distinctiveness of the word ‘ZERO’, it bears no relationship to the relevant goods or their characteristics. Therefore, it is distinctive.
The contested sign is the word mark ‘SUB ZERO’. In the case of word marks, it is the word as such that is protected and not its written form.
The above considerations regarding the perception and the distinctiveness of the word ‘ZERO’ in the earlier mark apply equally to this element of the contested sign.
The applicant argues that the English words ‘SUB ZERO’ mean temperatures below zero degrees and refers to Opposition Decision 775/2004 of 16/03/2004 concerning the same marks as the ones in dispute in the present case and the Opposition Division’s finding in that case that the average consumer in Germany would also understand this meaning. In view of this and without any other arguments or evidence in support, the applicant contends that the majority of both English and non-English speaking consumers in the EU will primarily think that the words ‘SUB ZERO’ refer to temperatures below freezing point.
However, 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In the absence of any evidence to the contrary, the Opposition Division does not consider that the meaning of the English expression ‘SUB ZERO’ as referring to temperatures below freezing point will be understood by the relevant public in the whole of the European Union, especially as the meaning of the word ‘SUB’ itself, which is not a very basic English word, is unlikely to be understood throughout the Union, in particular by the part of the public in territories where Slavic or Baltic languages, such as Polish or Lithuanian are spoken.
For the sake of clarity, the opponent claimed that ‘SUB ZERO’ is ‘sub nulis’ in Lithuanian. However, this is incorrect as ‘sub zero’ translates into ‘žemiau nulio’ in this language.
As a result and although part of the public in the relevant territory will perceive the contested sign, ‘SUB ZERO’, as referring to temperatures below zero, and thus as having a different concept to that of the earlier mark, part of the public will not perceive this meaning in the contested sign but will rather see the word ‘SUB’ as having no particular meaning at all. For this part of the public, the word ‘SUB’ will be considered fanciful and, therefore, distinctive. In any event, the contested sign will have no elements that could be considered clearly more distinctive than other elements for any part of the public in the relevant territory.
In view of the above, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in territories where Slavic or Baltic languages are spoken such as Poland and Lithuania.
Visually, the signs are similar to the extent that the earlier mark, which is distinctive, is fully included in the contested sign. However, they differ in the additional first word ‘SUB’ in the contested sign, which is also distinctive, and the stylisation of the word ‘ZERO’ in the earlier mark. On the other hand, as mentioned above, in the case of word marks, the word as such is protected and not its written form. Therefore, it is irrelevant that the contested sign is represented in uppercase letters whereas the earlier mark is depicted in lowercase letters.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‛ZERO’, present identically in both signs. The pronunciation differs in the sound of the additional letters ‛SUB’ in the first word of the contested sign, which has no counterpart in the earlier mark.
Therefore, the signs are aurally similar to an average degree.
Conceptually, the word ‘ZERO’ will be associated by the public in the relevant territories with the semantic content referred to above. Consequently, both signs will be associated with the same concept evoked by the word ‘ZERO’ and the additional word ‘SUB’ in the contested sign will have no meaning. Therefore, the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- 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).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
In the present case, the relevant goods are identical or dissimilar and the degree of attention of the relevant public is average. The earlier mark has a normal distinctiveness and the signs are visually and aurally similar to an average degree and conceptually highly similar.
It should also be borne in mind that although the first word ‘SUB’ in the contested sign is distinctive for the relevant part of the public, it is not more dominant or distinctive than the second word ‘ZERO’ of which the earlier mark also consists. Therefore, taking into account that the signs are visually and aurally similar to an average degree and conceptually highly similar, even if the coinciding distinctive element of the marks is placed at the end of the contested sign, it is still likely that consumers that encountered the conflicting identical products in Class 25 bearing the contested sign, would believe that they are a new line of products originating from the opponent, in particular when taking into account that it is common in the clothing sector for the same mark to be configured in various different ways according to the type of product which it designates and that it is also common for the same clothing manufacturer to use sub-brands in order to distinguish its various lines from one another (women’s, men’s, youth) (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public in Poland and Lithuania. 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 partially well founded on the basis of the opponent’s European Union trade mark registration No 5 345 798. It follows that the contested trade mark must be rejected for the contested goods found to be identical.
The rest of the contested goods 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.
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
Anunciata SEVA MICO
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.