OPPOSITION No B 2 154 493

Stadium AB, Norra Promenaden 63, Norrköping, Sweden (opponent), represented by Nihlmark & Zacharoff Advokatbyrå AB, Regeringsgatan 67 4 TR, Stockholm, Sweden (professional representative)

a g a i n s t

Lunna y Arianna Women Sport Revolution S.L., C/ Pio Baroja, Nº 1 - 1ºA, 48001 Bilbao (Vizcaya), Spain (applicant), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative).

On 30/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 154 493 is partially upheld, namely for the following contested goods and services:

Class 25: Clothing; Footwear; Headgear for wear; None of the aforesaid goods being clothing, headgear and footwear for cyclists and/or protective clothing, headgear and footwear for cyclists.

Class 28: Gymnastic and sporting articles not included in other classes.

Class 35: Selling via global computer networks of clothing and accessories; Wholesaling in shops of clothing and accessories; None of the aforesaid goods being clothing, headgear and footwear for cyclists and/or protective clothing, headgear and footwear for cyclists;

2. Community trade mark application No 11 512 902 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 11 512 902. The opposition is based on Community trade mark registration No 3 779 022. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 and services

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

Class 9: Protecting helmets for sports purposes.

Class 18: Bags, rucksacks, umbrellas.

Class 25: Clothing, footwear, headgear.

Class 28: Gymnastic and sporting articles not included in other classes; gloves for sports purposes; ice skates; snowboards; skateboards; wakeboards; inlines; safety equipment for sports purposes not included in other classes; golf products; balls.

The contested goods and services, after limitation, are the following:

Class 25: Clothing; Footwear; Headgear for wear; None of the aforesaid goods being clothing, headgear and footwear for cyclists and/or protective clothing, headgear and footwear for cyclists.

Class 28: Gymnastic and sporting articles not included in other classes.

Class 35: Selling via global computer networks of clothing and accessories; Wholesaling in shops of clothing and accessories; None of the aforesaid goods being clothing, headgear and footwear for cyclists and/or protective clothing, headgear and footwear for cyclists; Publicity agencies; Distribution of samples; Organisation of trade fairs for commercial or advertising purposes; Sales promotion for others.

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

Clothing; footwear; headgear for wear; none of the aforesaid goods being clothing, headgear and footwear for cyclists and/or protective clothing, headgear and footwear for cyclists are included in the broad categories of the opponent’s clothing, footwear, headgear, respectively. Therefore, they are considered identical.

Contested goods in Class 28

Gymnastic and sporting articles not included in other classes are identically included in both lists of goods and services.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these 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. The same logic applies to services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods.

Therefore, the contested selling via global computer networks of clothing; wholesaling in shops of clothing; none of the aforesaid goods being clothing, headgear and footwear for cyclists and/or protective clothing, headgear and footwear for cyclists are similar to a low degree to the opponent’s clothing in Class 25, and selling via global computer networks of accessories; wholesaling in shops of accessories; none of the aforesaid goods being clothing, headgear and footwear for cyclists and/or protective clothing, headgear and footwear for cyclists are similar to a low degree to the opponent’s bags in Class 18.

The services of publicity agencies consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.

The nature and purpose of the services of publicity agencies are fundamentally different from the manufacture of goods or from the provision of many other services. The mere fact that some goods or services may appear in advertisements is insufficient for finding a similarity. Therefore, the contested publicity agencies are dissimilar to the goods or services being advertised.

Following the same logic, the remaining contested distribution of samples; organisation of trade fairs for commercial or advertising purposes; sales promotion for others are also considered dissimilar to all the opponent’s goods, as they all relate to the advertisement of goods and services.

2. The signs

REVOLUTION
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 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 present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English- and German-speaking parts of the relevant public.

The earlier sign is a word mark, ‘REVOLUTION’. The contested mark is composed of the word ‘REVOLUTION’, in a large typeface, at the bottom of the sign with the smaller words ‘WOMEN’ and ‘SPORT’ above it and separated by a pink star. These verbal elements are in standard upper case characters. The upper part of the sign is a pink and blue figurative element composed of a letter ‘W’ with ‘arms’ extended to the sides.

Visually, the signs are similar to the extent that they coincide in ‘REVOLUTION’. However, they differ in the additional verbal elements ‛WOMEN’ and ‘SPORT’ and the figurative elements in the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛REVOLUTION’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the words ‛WOMEN’ and ‘SPORT’ of the contested mark, which have no counterparts in the earlier sign. It is reasonable to assume that the letter ‘W’ will not be pronounced by the relevant public.

Conceptually, the public in the relevant territory will perceive the word ‘REVOLUTION’, present in both signs, as referring, inter alia, to a change in the way a country is governed. The word ‘SPORT’ will be perceived by the relevant public as all forms of, usually competitive, physical activity or games. The word ‘WOMEN’, as a basic English word that will be understood in Germany, will be perceived as the plural form of a noun referring to the adult female human being. The letter ‘W’ of the contested sign will be perceived as the 23rd letter of the Latin alphabet. The star in the contested sign will be perceived as such.

Since the signs will be associated with a similar meaning, on account of the word ‘REVOLUTION’, the signs are conceptually similar.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be clearly considered more distinctive or more dominant (visually eye‑catching) than other elements.

The element ‘WOMEN’ of the contested sign will be associated with an adult female human being. Bearing in mind that the relevant goods and services relate to clothing, accessories and gymnastic and sporting articles and the sale of these goods, it is considered that this element is weak for these goods and services, as the relevant public will assume that the goods are intended for women. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘SPORT’ of the contested sign will be associated with all forms of, usually competitive, physical activity or games. Bearing in mind that the relevant goods and services relate to clothing, accessories and gymnastic and sporting articles and the sale of these goods, it is considered that this element is weak for these goods and services, namely the relevant goods in Classes 25 and 28 and services in Class 35. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The figurative element depicting the letter ‘W’ and the word ‘REVOLUTION’ in the contested sign are the dominant elements of the sign, as they are the most eye‑catching elements of the mark.

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. 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 identical and similar to a low degree are directed at the public at large. The degree of attention will be average.

6. Global assessment, other arguments and conclusion

The relevant goods and services are partly identical and partly similar to a low degree, and they target the public at large. Some of the contested services are dissimilar to the opponent’s goods.

The marks are visually, aurally and conceptually similar on account of the word ‘REVOLUTION’. The signs differ in the additional verbal and figurative elements of the contested sign, some of which, as mentioned above in section c) of this decision, are weak for the relevant public.

The concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that the identical or similar goods come from the same undertaking or at least from economically linked undertakings. It is very common for fashion companies to use various sub-brands derived from a principal mark for different product lines. In the present case, the Opposition Division considers that the differences between the earlier mark and the contested sign are not sufficient to exclude a likelihood of confusion. Part of the public might believe that the goods and services that are identical and similar to a low degree come from the same undertaking or at least from economically linked undertakings, since the earlier mark is fully reproduced as a co-dominant element of the contested sign.

In view of the foregoing, and especially the fact that the marks coincide in their distinctive verbal elements and differ in the figurative and mostly weak verbal elements of the contested sign, the Opposition Division is of the opinion that the similarities cannot be counteracted by the dissimilarities, and that the public would believe that the goods and services that are identical and similar to a low degree come from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English- and German-speaking parts of the public. As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to partially reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark.

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

COSTS

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

Agueda MAS PASTOR

Katarzyna ZANIECKA

Ioana MOISESCU

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.