OPPOSITION No B 2 476 466

Les Mills International Limited, 22 Centre Street, Auckland 1010, New Zealand (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Pump Sports GmbH, Mühlweg 24, 8073 Feldkirchen bei Graz, Austria (applicant).

On 19/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 476 466 is upheld for all the contested goods and services, namely

Class 25: Suits; Baseball uniforms; Ballet suits; Clothing for martial arts; Blazers; Replica football kits; Football jerseys; Golf trousers; Gilets; Waist belts; Belts [clothing]; Men's suits; Denim jeans; Denim jackets; Martial arts uniforms; Combative sports uniforms.

Class 41: Club [discotheque] services; Club recreation facilities (Provision of -); Fan club organisation; Adventure playground services; Providing theme park services; Dance studios; Provision of facilities for dancing; Recreational services.

2. Community trade mark application No 12 792 115 is rejected for all the contested goods and services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 12 792 115 namely against all the goods and services in Classes 25, 41. The opposition is based on Community trade mark registration No 4 010 435 and Community trade mark registration No 4 845 533. 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 and services on which the opposition is based are the following:

Community trade mark registration No 4 010 435

Class 25: Clothing, footwear, headgear.

Class 28: Gymnastic and sporting articles not included in other classes; bar-bells; body-building apparatus; body training apparatus; boxing gloves; exercise bicycles and equipment; games and playthings.

Class 35: Business management and organization consultancy; business management assistance; professional business consultancy; advertising including on-line advertising; publicity; business research; business appraisals; provision of all of the above services over the Internet.

Community trade mark registration No 4 845 533

Class 9: Audio recordings, video recordings and audio-visual recordings, including cassette tapes, compact discs, phonograph records, audio and video tapes, and CD-ROM; information, data, recordings and publications in electronic form supplied online from databases, from the internet (including web-sites), from intranets or from extranets; computer software and computer games; CDs and DVDs.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs, stationery; adhesive for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; instructional and training manuals, posters, calendars, plastic/vinyl banners and mousepads.

Class 41: Recreation and training services; sporting activities; education services; producing and conducting exercise to music classes and programmes; gymnasium services; health club services; sports club services; fitness club services; exercise instruction, advisory and training services; provision of exercise facilities; sports tuition, coaching and instruction; rental of sports or exercise equipment; producing and conducting personal training programmes and services; information, advisory and consultancy services relating to any or all of the aforesaid.

The contested goods and services are the following:

Class 25: Suits; Baseball uniforms; Ballet suits; Clothing for martial arts; Blazers; Replica football kits; Football jerseys; Golf trousers; Gilets; Waist belts; Belts [clothing]; Men's suits; Denim jeans; Denim jackets; Martial arts uniforms; Combative sports uniforms.

Class 41: Club [discotheque] services; Club recreation facilities (Provision of -); Fan club organisation; Adventure playground services; Providing theme park services; Dance studios; Provision of facilities for dancing; Recreational services.

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 goods in this class are all clothing items and are included in the broad category of the opponent’s clothing. Therefore, they are considered identical.

Contested services in Class 41

Recreational services are identically contained in both lists of goods and services (including synonyms).

The contested Club [discotheque] services; Club recreation facilities (Provision of -); Fan club organisation; Adventure playground services; Providing theme park services; Dance studios; Provision of facilities for dancing are all various types of recreational services, and therefore are included in the broad category of the opponent’s Recreation services. Therefore, they are considered identical.

2. The signs

BODYPUMP	PUMP!
Earlier trade marks	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-speaking part of the relevant public.

Visually, the signs are similar to the extent that they coincide in the letter sequence PUMP. However, they differ in the letter sequence BODY in the earlier mark and in the exclamation mark in the contested sign.

Aurally, the pronunciation of the signs coincides in the syllable PUMP present identically in both signs, which also forms the entire contested mark, and to that extent the signs are aurally similar. The pronunciation differs in the syllables BOD-Y of the earlier sign, which have no counterparts in the contested mark.

Conceptually, the public in the relevant territory will perceive the earlier sign as a whole with no meaning. However, it can not be excluded, that the sign is dissected into words BODY and PUMP, both of which do have a meaning. Body means the entire physical structure of a human being, as well as: a woman's close-fitting one-piece garment for the torso. The word PUMP, present in both signs, is perceived as any device for compressing, driving, raising, or reducing the pressure of a fluid, to supply in large amounts (Collins English Dictionary online). The exclamation mark in the contested sign is perceived.

Since the signs coincide in the element PUMP the signs are conceptually similar to that extent.

Taking into account the abovementioned 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 contested sign has no element that could be clearly considered more distinctive than other elements.

The element BODY of the earlier marks will be associated with the entire physical structure of a human being, or with a woman's close-fitting one-piece garment for the torso.

Bearing in mind that the relevant goods and services are clothing items, gymnastic articles, business services, audio and video recordings, paper goods and sporting and recreation services it is considered that this element is allusive for a part of these goods and services, namely for all goods in class 25 and also for sporting activities in class 41. The part of the relevant public who understands the meaning of that element will not pay as much attention to this element as to the other more distinctive elements of the mark. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue.

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of an allusive element in the mark as stated above in section c) of this decision.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is average.

6. Global assessment, other arguments and conclusion

The goods and services have been found to be identical. The similarities and dissimilarities between the signs have been established.

Even though the public, as a general rule, tends to pay particular attention to the first part of trade marks it is considered that the differing beginnings of the marks do not decisively distinguish them in the present case. On the contrary, there are factors which will tend to bring the two marks together in the consumers’ minds. The signs have been found to be similar to the extent that they share the letter sequence PUMP which will be clearly picked out as a word in the earlier marks by the English speaking public. The word BODY, in the earlier marks, could be seen as allusive by part of the public in respect of some goods and services. The word PUMP also constitutes the entirety of the contested mark, notwithstanding the exclamation mark which is generally ignored as a mere punctuation mark, and forms nearly a half part of the earlier mark. The additional differentiating elements, namely the word BODY and the exclamation mark are not sufficient in themselves to counteract this similarity taken together with the high aural similarity and the conceptual identity arising in respect of the word PUMP.

Although signs cannot be artificially dissected, it must be taken into account that when a sign contains sequences of letters that constitute words, prefixes or suffixes that are known by the public perceiving it, it is likely that they will mentally divide the mark into the recognized terms or familiar parts forming it (e.g. prefixes or suffixes). Furthermore, in the present case, the elements BODY and PUMP are clearly distinguishable as separate elements, as explained in the earlier comparison.

It should be noted that consumers tend to remember the similarities rather than the dissimilarities between signs. In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’).

In view of the foregoing and taking into account all the relevant circumstances of the case, as well as the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services and vice versa, given the identity between the goods and services in question, the Opposition Division concludes that the signs are sufficiently similar to cause a likelihood of confusion for the English speaking 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 reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s earlier Community trade mark registrations. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Richard THEWLIS

Erkki Münter

Liina PUU

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. 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.