OPPOSITION No B 2 353 723

Basic Trademark S.A., 42-44 Avenue de la Gare, 1610 Luxembourg, Luxembourg (opponent), represented by Buzzi, Notaro & Antonielli d’Oulx, Via Maria Vittoria, 18, 10123 Torino, Italy (professional representative)

a g a i n s t

Sergio Pernia Sanchez, C/ Uruguay, Local 12. Edif. Corona, 41930 Bormujos, Sevilla, Spain (applicant), represented by Rodolfo de la Torre S.L., C/ San Pablo, nº15-3º, 41001 Sevilla, Spain (professional representative).

On 13/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 353 723 is partially upheld, namely for the following contested goods:

Class 25: Headgear; clothing; footwear; and parts and fittings for all the aforesaid goods, included in this class.

Class 28: Sporting articles and equipment; toys, games and playthings; and parts and fittings for all the aforesaid goods, included in this class; gymnastic and sports articles.

2. Community trade mark application No 12 472 321 is rejected for all the above goods. It may proceed for the remaining goods in Class 28. It may also proceed for the services in Class 41, which were not contested.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 12 472 321, namely against all the goods in Classes 25 and 28. The opposition is based on Italian trade mark registration No 1 582 239. 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

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.

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

Class 25: Technical apparel for the practice of sports, namely, shirts, team and competition jerseys and team and competition uniforms, polo shirts, tracksuits, warm-up suits, shorts, pants, socks, tights; underwear, namely, underpants, long underpants, tank tops, long and short sleeve undershirts.

Class 28: Skis; protective padding for the practice of sports, namely, shin guards, knee pads, elbow pads; gloves for sports, namely, for football, soccer, hockey, rugby and golf.

The contested goods are the following:

Class 25: Headgear; clothing; footwear; and parts and fittings for all the aforesaid goods, included in this class.

Class 28: Sporting articles and equipment; fairground and playground apparatus; toys, games and playthings; and parts and fittings for all the aforesaid goods, included in this class; gymnastic and sports articles.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods 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 Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s underwear, namely, underpants, long underpants, tank tops, long and short sleeve undershirts. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested headgear and footwear are similar to the opponent’s technical apparel for the practice of sports, namely, shirts, team and competition jerseys and team and competition uniforms, polo shirts, tracksuits, warm-up suits, shorts, pants, socks, tights. These goods serve the same purpose, since they are all used to cover and protect various parts of the human body against the elements. They are also articles of fashion and are often found in the same retail outlets. Consumers, when seeking to purchase polo shirts, tracksuits and shorts, will expect to find footwear and headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items.

The contested parts and fittings for all the aforesaid goods, included in this class are considered similar to the opponent’s goods in Class 25, which consist of clothing articles for the practice of sports and underwear. This is because parts and fittings are often produced and/or sold by the same undertaking that manufactures the final goods and target the same purchasing public. Depending on the goods concerned, the public may also expect the component to be produced by, or under the control of, the “original” manufacturer, which is a factor that suggests that the goods are similar. Furthermore, they may coincide partially in their ultimate purpose.

Contested goods in Class 28

The contested sporting articles and equipment and gymnastic and sports articles include, as broader categories, the opponent’s protective padding for the practice of sports, namely, shin guards, knee pads, elbow pads in Class 28. It is impossible for the Opposition Division to filter these goods from the abovementioned categories. Since the Opposition Division cannot dissect ex officio the broad categories of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested toys, games and playthings are considered similar to the opponent’s goods in Class 28, which consist of sporting articles and equipment. These goods coincide partially in their nature and purpose. In addition, they may have a similar method of use and target the same users. Furthermore, their sales channels may coincide since many outlets that sell toys and playthings also include departments catering for outdoor activities, where gymnastic and sporting articles may be found. The same occurs in department stores, where it is frequent that the leisure goods – such as the contested games and playthings – are displayed in the same sections as the goods for performing physical exercise – such as the opponent’s sporting articles (see Decision of 11 December 2014 of the Board of Appeal, Case R 730/2014-1, ‘Quiero Mimitos (Figurative Mark) / Bebé Mimittos (Figurative Mark)’, paragraphs 31 to 36).

The contested parts and fittings for all the aforesaid goods, included in this class (relating to the applicant’s sporting articles and equipment and toys, games and playthings) are considered similar to the opponent’s goods in Class 28. The contested goods are often produced and/or sold by the same undertaking that manufactures the final products and target the same purchasing public. Depending on the goods concerned, the public may also expect the component to be produced by, or under the control of, the “original” manufacturer, which is a factor that suggests that the goods are similar. Furthermore, they may coincide partially in their ultimate purpose.

The contested fairground and playground apparatus; parts and fittings for all the aforesaid goods, included in this class consist of mechanical devices and/or structures that move people to create enjoyment and that are usually found at amusement parks, playgrounds, travelling carnivals and travelling funfairs. Their nature and method of use are clearly distinct from those of the earlier goods, which consist of clothing articles for the practice of sports and underwear (in Class 25) and sporting articles and equipment (in Class 28). Furthermore, they are neither in competition nor complementary. Moreover, they do not usually coincide in manufacturer or distribution channels. Consequently, they are considered dissimilar.

2. The signs

KOMBAT
Earlier trade mark	Contested sign

The relevant territory is Italy.

The earlier mark is a word mark, formed by the verbal element ‘KOMBAT’. The contested sign is a figurative mark, which contains the verbal element ‘SUPERKOMBAT’, portrayed in white standard uppercase letters, in the centre of a circular label. The label is black below the banner bearing the verbal element and white above it. The sign also contains some stars (depicted below and above the verbal element) and a pair of wings (above the verbal element), portrayed in various yellow shades.

Visually, the signs are similar to the extent that they coincide in the string of letters ‘K-O-M-B-A-T’, which forms the earlier mark and the last six letters of the contested sign’s single verbal element. On the other hand, they differ in the first five letters of said element, ‘SUPER-’ and in the figurative elements, stylisation and colours of the contested sign, which have no counterparts in the earlier sign.

Aurally, the pronunciation of the signs coincides in the syllables ‘KOM-BAT’, which form the earlier mark and the last two syllables of the contested sign, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the first two syllables of the contested sign (‘SU-PER’), which has no counterpart in the earlier sign.

Conceptually, the public in the relevant territory will associate the earlier mark ‘KOMBAT’ with the notions of ‘fight, a fighter, to fight’ due to the considerable visual and aural similarity of this verbal element to the Italian equivalent words ‘combattimento, combattente, combattere’ (see Italian dictionary online: Treccani, l’Enciclopedia Italiana) and because of the widespread use of this common root in several expressions related to the different types of fighting sports, martial arts and fighting techniques (‘sport da combattimento’ and ‘tecniche di combattimento’).

As regards the contested sign, it must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T‑256/04, ‘RESPICUR’). The conjoined expression ‘SUPERKOMBAT’, as a whole, does not exist in common parlance. Therefore, it is reasonable to assume that the relevant consumers will perceive this expression as the mere sum of its parts, thus splitting it into the meaningful elements ‘SUPER’ and ‘KOMBAT’.

The public will associate the element ‘KOMBAT’ with the concepts explained above. The element ‘SUPER’ will be understood as a reference to something which is ‘great, outstanding, excellent’ (see Italian dictionary online: Treccani, l’Enciclopedia Italiana).

The figurative elements of the contested sign, consisting of a circular label, a banner several stars and a pair of wings, will be perceived by the public as components performing an essentially decorative function in the sign.

Consequently, to the extent that both signs will be associated with the semantic content underlying the element ‘KOMBAT’, the marks are conceptually similar.

Taking into account the abovementioned visual, aural and partial conceptual coincidences, it is considered that 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.

As explained above, the verbal element ‘SUPER’, included in the contested sign, will be perceived as referring to something ‘great, outstanding, excellent’. Consequently, this term is merely laudatory, as it indicates to consumers that the goods in question are of high or excellent quality. Therefore, it is considered that this element is non‑distinctive in relation to all the relevant goods.

As regards the figurative elements of the contested sign (circular label, stars and wings), it is considered that they are of a predominantly ornamental nature. The use of such shapes, labels and figures is a widespread commercial practice in order to bring the verbal elements of a sign to the attention of the public and to communicate desirable characteristics of the goods (such as excellence, brilliance, superiority), which are commonly suggested by symbols like stars and wings. Therefore, the inherent distinctive capacity of these elements is weak.

Consequently, the impact of the aforementioned non-distinctive and weak elements is limited when assessing the likelihood of confusion between the marks.

As regards the element ‘KOMBAT’ of the contested sign, its distinctiveness is also lower than average in relation to the relevant goods, as it may be perceived as an allusion that they are somehow adapted to, or inspired by, martial arts and fighting sports. Nonetheless, the relevant public will not fail to observe instantly the incorrect spelling of this element (namely, the initial letter ‘K’), as this word does not exist as such in Italian. Therefore, despite its suggestive semantic content, which determines a lower than average inherent distinctiveness for the relevant goods, the element ‘KOMBAT’ is still the most distinctive element within the contested sign.

The findings regarding the suggestive character of the element ‘KOMBAT’ are equally applicable to the earlier mark. However, as this is the only element of the earlier mark, it must be concluded that the earlier mark has no element that could be clearly considered more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average in relation to the relevant goods.

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 found to be identical or similar are directed mainly at the public at large. The degree of attention is deemed to be average.

6. Global assessment, other arguments and conclusion

The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods. The signs are visually, aurally and conceptually similar on account of the element that they have in common, ‘KOMBAT’.

The signs differ in the additional verbal element of the contested sign, ‘SUPER’, and in its colours and figurative elements. Although these elements determine a noticeable difference in the graphical representation of the marks, they are not sufficient to outweigh the similarities between them, for the reasons explained hereunder.

Regarding the stylisation of the verbal element of the contested sign, it must be noted that it is rather basic, since the element ‘SUPERKOMBAT’ is written in fairly customary upper case letters which do not possess any unusual or memorable characteristics. This stylisation, the circular label within which this verbal element is depicted, the banner, the colours and additional symbols used in the mark will be perceived by the public as standard graphical means of bringing the element ‘SUPERKOMBAT’ to their attention. Therefore, the relevant public will pay little attention to these features of the contested sign.

Furthermore, as explained above in section c) of this decision, the impact of the figurative elements of the contested sign when assessing the likelihood of confusion is limited, owing to their essentially decorative nature and because the use of such symbols (stars and wings) and labels is a commonplace commercial practice.

In addition, account must be taken of the general principle according to which, when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (judgment of 14/07/2005, T‑312/03, ‘Selenium-Ace’, paragraph 37). In the present case, consumers will undoubtedly refer to the signs as ‘KOMBAT’ and ‘SUPERKOMBAT’. Therefore, the contested sign’s verbal element fully incorporates and reproduces identically the earlier mark.

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C‑251/95, Sabèl, paragraph 22 et seq.).

The relevant public will perceive the contested sign’s verbal element as a conjunction of the meaningful elements ‘SUPER’ and ‘KOMBAT’. The public will promptly grasp the meaning of the word ‘SUPER’, since it will be perceived as a direct indication of the excellent quality and great value of the goods. Therefore, the public will not pay great attention to this element, which is non-distinctive in relation to all the relevant goods.

As a result, the relevant consumers are likely to focus their attention on the element ‘KOMBAT’ of the contested sign because, despite its inherent suggestiveness in relation to the characteristics of the goods, as explained above in section c) of this decision, it is still the most distinctive element contained therein.

The finding that the earlier trade mark, considered as a whole, has a weaker than average distinctive character in relation to the relevant goods, in view of the aforementioned suggestive semantic content of the element ‘KOMBAT’, does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in cases involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of similarity between the signs and between the goods or services covered (judgment of 13/12/2007, T‑134/06, ‘Pagesjaunes.com’, paragraph 70).

Furthermore, the coinciding element ‘KOMBAT’ will also establish a conceptual link between the signs, thus also contributing to the finding of similarity between the marks under comparison.

Therefore, bearing in mind that consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their minds, the Opposition Division considers that the similarities between the marks are sufficient to lead to a likelihood of confusion on the part of the public, as the consumers might believe that the identical and similar goods at issue come from the same undertaking or from economically linked undertakings.

Article 8(1)(b) CTMR states that, upon opposition, a CTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested figurative trade mark is an updated, stylised version, or a brand extension, of the earlier mark, or a new commercial line of ‘KOMBAT’ goods, of superior quality and value. In other words, consumers may confuse the origins of the conflicting goods.

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 partially well founded on the basis of the opponent’s Italian trade mark registration No 1 582 239. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

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) CTMR, the opposition based on this article and directed at these goods 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Deirdre QUINN	Gueorgui IVANOV	Ewelina ŚLIWIŃSKA

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.