OPPOSITION No B 2 408 568

Puma SE, Puma Way 1, 91074 Herzogenaurach, Germany (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Aniloral, S.L., C/ Camino Camarena nº 2, 45512 Portillo de Toledo, Toledo, Spain (applicant), represented by Elzaburu, S.L.P., Miguel Angel 21, 28010 Madrid, Spain (professional representative).

On 05/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 408 568 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 12 902 409. The opposition is based on, inter alia, Community trade mark registration No 3 997 616. The opponent invoked Article 8(1)(b) and 8(5) CTMR.

REPUTATION – ARTICLE 8(5) CTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier CTM No 3 997 616, for which the opponent claimed repute in the European Union.

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, 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) CTMR 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) CTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 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 sign. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark is a figurative mark consisting of a white, two-pronged swoosh with thin black outline. It has the appearance of a computer-generated geometrical shape. At the top right, the mark begins a single narrow band; the band becomes slightly wider as it descends gradually towards the left. At approximately the middle point of the shape, the single band diverges into two prongs (bands) which curve downwards quite steeply.  The endings of the prongs (bands) are straight.

The contested mark is a figurative mark consisting of a solid black, two-pronged swoosh. It could be hand-drawn with a thick marker pen or an artist’s brush. At the top left, the mark begins as two vertical, curved prongs (bands); the prongs descend to converge into a single horizontal band. The ending of the horizontal line is slightly narrower than the endings of the two vertical prongs. The right hand prong descends quite steeply, the left hand prong at a less acute angle. The endings of the prongs are curved in appearance whist the end of the bottom horizontal line is pointed.

Visually, both marks are figurative marks and are similar to the extent that they both contain the device element in the form of a two-pronged swoosh. However, there are many differences between the figurative elements. The swoosh in the earlier mark has a black outline, while the swoosh in the contested sign is in plain black. The earlier mark has a computer-generated appearance, while the contested sign could be hand-drawn with a marker pen or an artist’s brush. Furthermore, in the earlier mark the endings of the two prongs curve downwards to occupy the bottom left area of the device, conversely in the contested sign, the endings of the two prongs curve upwards and occupy the top left area of the device. The earlier mark starts at the top right as a single band and diverges into two prongs (bands) towards the bottom, whereas in the contested sign it begins as two vertical prongs (bands) and converges into a single band. In addition, in the earlier mark, at approximately the middle, the single band diverges into two bands, opposite to the contested sign where the two prongs diverge into one single band at the horizontal bottom part. Moreover, in the earlier mark both prongs curve downwards quite steeply, while in the contested sign only the right hand prong descends quite steeply and the left hand prong has a less acute angle. In the earlier mark the endings of the prongs are straight versus the curved and pointed endings in the contested sign. The prong of the earlier mark on the top right side is narrower than the endings of the two bands at the bottom, whereas in the contested sign the ending of the horizontal line is narrower than the endings of the bands on the top left side. The Opposition Division does not agree with the opponent’s argument, in its observations of 06/10/2014, that both marks reproduce two curved lines starting in a common trunk in an inverted position creating a very similar visual impression. This is because the Opposition Division finds that there are many differences between the two-pronged swooshes, in their ‘starting’ position, outlines, endings, steepness, kind of drawings. Consequently, the marks are visually similar to a very low degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As both marks are purely figurative, it is not possible to compare them aurally.

Conceptually, neither of the signs has a discernible 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.

Taking into account the abovementioned visual coincidences, it is considered that the signs under comparison are similar to a very low degree.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union for goods in Class 25.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

The contested trade mark was filed on 23/05/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to this date. The evidence must, furthermore, show that the reputation was acquired in respect of the goods in connection with which reputation has been claimed by the opponent.

However, for reasons of procedural economy, the evidence filed by the opponent to prove its claim will not be assessed and the Opposition Division will continue on the assumption that the earlier mark does have a reputation for all the goods on which the opposition is based.

3. The ‘link’ between the signs

As seen above, the earlier mark is assumed to have a reputation and the signs are visually similar to a very low degree. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) CTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, ‘Adidas’, paragraphs 29 and 31, and of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 66. It is not an additional requirement, but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The Court established in the judgment of 12/03/2009, C-320/07 P, ‘NASDAQ/NASDAQ’, paragraph 43, that the types of injury referred to in Article 8(5) CTMR, where they occur, are the consequence of a certain degree of similarity between the earlier and the later marks, by virtue of which the relevant public makes a connection between those two marks, that is to say, it establishes a link between them, although it does not confuse them. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. According to paragraph 45 of the same judgment, the existence of the link must be subject to an overall assessment taking into account all factors relevant to the circumstances of the case and, in particular, the degree of similarity between the marks at issue, the nature of the goods or services for which the mark at issue is registered, the relevant section of the public, the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character.

The opponent mentions the following in its observations: the form-strip trade marks have acquired great renown especially in the footwear sector in both the European Union and all over the world. Practically all consumers are not only familiar with the marks, but also associate them with the goods sold by the opponent. The earlier marks are well-known and identified with high-quality and attractive products, due to the opponent’s effort over the years to manufacture their goods with great care, as well as the sizeable investment made in disseminating the mark and making it known in the market place. The distinctiveness of this mark from ‘PUMA’ will be detrimentally affected, as the public will cease to associate it with a given range of high-quality products originating from a single source and starts associating it with different goods, having distinct origins. Such an association will dilute the ‘PUMA’ trade marks’ ability and is likely to diminish its capacity to stimulate the desire of the public to buy the products for which it is registered. The use of the CTM application is likely to devalue the image and prestige that ‘PUMA’ has acquired among the public, since any use out of the exclusive and high-quality ‘PUMA’ products is incompatible with the special image that ‘PUMA’ has created due to the promotional and sponsoring efforts of its owner, or which are incompatible with the special quality or image associated with the earlier trade marks. According to the opponent, the applicant will free-ride on the investment of the opponent in promoting and building-up a goodwill for its mark.

The signs have been found to be visually similar to a very low degree; aurally, as the signs are purely figurative, it is not possible to compare them, and, from a conceptual perspective, since they do not refer to any concept, a conceptual comparison is not possible and, therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

The Opposition Division is of the opinion that, notwithstanding the very low visual similarity between the signs this will not cause consumers to make a link between the two signs only because of the fact that both marks represent a two-pronged swoosh. This is because the representation of the contested sign is very different from that in the earlier mark, as has been thoroughly explained in paragraph a) The signs). The visual coincidences are not strong enough at all.

The opponent, in its observations of 06/10/2014, emphasises and very often reproduces a version of the contested sign in an inverted position, such as in the following picture , showing a device of a shoe representing a version of the contested sign in an inverted position. However, the Opposition Division makes a comparison of the marks the way they are registered or applied for, meaning that the earlier mark starts with one single band on the right top side descending towards the left bottom side and the contested sign starts from the left top side with two prongs descending towards the right bottom side and not the way the opponent reproduces a version of the contested sign. If the contested sign is depicted on a shoe in its original position, meaning the way it has been applied for, the consumer would see the real way of representing the mark. This is because shoes are worn with the sole on the bottom and the shoe will normally not be perceived upside down. The Opposition Division agrees with the applicant, where it states in its arguments of 14/09/2015, that for the purpose of comparing the two marks, the opponent has turned the device of the contested sign 180º. This entails a distortion of reality. The sign is to be used in the form in which it is registered and it should be shown just like that. The applicant refers to various decisions of the Office, where it has been held that signs should be compared without being altered in any way.

In particular, the differences are the black outline and more computer-generated drawing versus the prongs being in plain black and a more hand-made drawing; the figurative element in the earlier mark begins at the top right side as a single band descending to the left bottom part where it diverges into two prongs (bands), while in the contested sign it starts at the top left as two prongs descending to the right bottom part where it diverges into a single band. In addition, in the earlier mark the single band diverges into two bands in the middle, while in the contested sign they diverge into one single band at already the horizontal bottom part. The prongs curve downwards quite steeply in the earlier mark and in the contested sign only the right hand prong descends quite steeply and the left hand prong has a less acute angle. There is also a difference in the endings, as these are straight in the earlier mark versus curved and pointed endings in the contested sign. The endings start narrower in the earlier mark and become slightly wider towards the bottom, whereas in the contested sign it is just the opposite, the ending is narrower at the horizontal line and they are wider at the prongs on the top left.

It is significant, in the opinion of the Opposition Division, that the marks have so many visual differences. Given this important consideration, it becomes quite a leap to reach a finding that says that consumers will be likely to associate the contested sign with the earlier mark. When the marks are placed side by side, the initial reaction is to wonder where any similarity is supposed to reside, such are the visual contrasts between the marks. In these circumstances, it is unlikely that the opponent’s mark would come to the consumers’ minds when they see the contested sign.

It shall be observed from the outset that the market reality shows that there are a multitude of decors and banal figurative elements such as striped lines, wings, arches, etc. on this type of goods, especially on sport shoes (see decision of 28/11/2013, R 1208/2012-2, DEVICE OF TWO PARALLEL STRIPES (other type of mark) / DEVICE OF THREE PARALLEL STRIPES (figurative mark) et al., paragraph 65). It is common practice for manufacturers of sports and leisure footwear to mark their goods with such patterns on the outside of the product for enhanced visibility from a distance. The average consumer is therefore aware that there is a large diversity of designs used as decoration or reinforcements of footwear. The relevant public, which is often brand conscious in respect of such goods, is therefore used to differentiating between such signs on account of graphical differences.

Reputation is a requirement for succeeding in an opposition based on Article 8(5) CTMR, but it is not enough on its own. Even the most famous of brands must submit to the additional requirement that the marks in question be sufficiently similar that consumers are likely to make a connection between the younger mark and the older, reputed mark. Owing to the significant differences between the marks on the visual level, the Opposition Division is not persuaded that consumers will make the necessary connection in this case.

Therefore, taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) CTMR and must be rejected. Likewise it is not necessary to examine the evidence of reputation and the evidence of use. It is not relevant that the earlier mark may possess reputation, the fact that no link will be made between the marks, as explained in much detail above, cannot be offset by the eventual reputation of the earlier mark.

The opponent has also claimed reputation for the remaining earlier trade marks, namely

1. International trade mark registration No 426 712 for the figurative mark for goods in Class 25.

2. International trade mark registration No 469 181 for the figurative mark for goods in Class 25.

3. International trade mark registration No 484 788 for the figurative mark for goods in Class 25.

4. International trade mark registration No 925 647 for the figurative mark

for goods in Classes 18 and 25.

5. International trade mark registration No 1 138 941 for the figurative mark

for goods in Classes 18 and 25.

6. Community trade mark registration No 3 513 694 for the figurative mark

for goods in Classes 18 and 25.

However, since Article 8(5) CTMR fails for earlier Community trade mark registration No 3 997 616 for the figurative mark ‘ ’, it cannot apply to the other earlier trade marks of the opponent, even though they are assumed to have a reputation, since they are even more dissimilar to the contested sign than the one which has been examined for the following reasons: All these earlier marks are divided into three sections by two, either dashed or continuous lines. The shape is shaded in the case of earlier marks 1) and 2) and placed on a shoe shape; earlier marks 1), 2), 3) and 6) have dotted inner lines and earlier mark 3) also a dotted outer line and is placed on a shoe shape. All the earlier marks show a steep and wide ending at the bottom part which is much broader than the ending on the top. Earlier marks 4) and 5) are much more curved to the right than the other earlier marks. All these differences have no counterparts in the contested sign.

The opponent refers in its observations to many previous national decisions to support its arguments of similarity. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the Community trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399). Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings. The following decisions are mentioned:

• A decision of the Polish Intellectual Property Office, dated 31/12/2008, between the earlier marks versus ; a decision of the Czech Intellectual Property Office, dated 28/04/2008, between the earlier marks versus ; two decisions of the Czech Intellectual Property Office, one dated 21/10/2008 and the other 22/10/2008, between the earlier marks versus and ; a decision, dated 15/02/2012, in invalidity proceedings No 8482, between the earlier marks versus ; a decision of the Romanian Intellectual Property Office, dated 27/04/2006, between the earlier marks versus ; a decision of the Spanish Patent and Trade Mark Office, dated 28/07/2006, between the earlier marks versus ; a decision of the Spanish Patent and Trade Mark Office, dated 04/05/2006, between the earlier marks versus ; a decision of the Spanish Patent and Trade Mark Office, dated 14/05/2004, between the opponent’s earlier marks and , the decision was confirmed by the Board of Appeal of the Spanish Trade Mark Office on 16/06/2005. These cases are not comparable to the case at hand. When taking from the earlier marks the same mark that has been examined, namely CTM No 3 997 616, all the marks start from the top side as one single band and diverge into two prongs on the bottom side. The endings are also straight in these cases. Therefore, the marks are much more similar than in the case at hand and not comparable.

• A decision of the Czech Intellectual Property Office, dated 22/10/2008, between the earlier marks versus ; a decision of the Romanian State Office for Inventions and Trade Marks, dated 27/04/2007, between the earlier marks and ; a decision of the Portuguese Intellectual Property Office, dated 23/01/2008, between the earlier mark versus ; a decision of the Spanish Patent and Trade Mark Office, dated 25/10/2006, between the earlier marks versus ; a decision of the Spanish Patent and Trade Mark Office, dated 17/09/2007, between the earlier marks versus ; a decision of the Spanish Patent and Trade Mark Office, dated 09/03/2004, between the earlier mark versus ; a decision of the Court of Justice of Valencia, Spain, dated 20/10/2009, between the earlier marks versus ; a decision of the Spanish Patent and Trade Mark Office, dated 09/03/2004, between the earlier mark versus ; a decision of the Spanish Patent and Trade Mark Office, dated 25/06/2007, between the earlier marks versus ; a decision of the Spanish Patent and Trade Mark Office, dated 17/09/2007, between the earlier marks versus ; These cases are not comparable to the case at hand. When taking from the earlier marks or the earlier mark, those that start from the top and are divided into three sections or three prongs, they are much more similar than this case; they all have three prongs that curve gradually towards the bottom and they end into three prongs that have wider endings. Therefore, since the marks are much more similar than in the case at hand, they are not comparable.

• A decision of the Romanian State Office for Inventions and Trade Marks, dated 09/04/2009, between the earlier marks versus ; a decision of the Spanish Patent and Trade Mark Office, dated 14/03/2008, between the earlier marks versus . These cases are not comparable to the case at hand. When taking from the earlier marks, those that start from the top consisting of only one band, they are much more similar to each other, as they both consist of one single prong that starts at the top, being narrower, and descends towards the bottom having a wider, and also straight, ending.

• A decision of the Romanian State Office for Inventions and Trade marks, dated 09/02/2010, between the earlier marks versus ; a decision of the Portuguese Intellectual Property Office, dated 11/02/2009, between the earlier mark versus ; a decision of the Romanian Intellectual Property Office, dated 09/02/2010, between the earlier marks versus ; a decision of the Spanish Patent and Trade Mark Office, dated 13/05/2009, between the earlier marks versus ; a decision of the Spanish Patent and Trade Mark Office, dated 12/05/2014, where the sign was unable to co-exist with the opponent’s mark.

Regarding the cases that are mentioned under the last point, the Opposition Division points out the following: While it is true that the Office has a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect for legality. It must also be emphasised that examination must be undertaken in each individual case. The outcome of a particular case depends on specific particular criteria, which are applicable in the factual circumstances of that particular case, including, for example, the parties’ assertions, arguments and submissions. This is also applicable for the National Offices of the Member States. Finally, it must be pointed out that a party before the Office cannot rely, to its advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else.  It follows that even if it is acknowledged that the previous decisions submitted before the Opposition Division presents some factual similarities to the case dealt with in the present proceedings, they cannot secure, considering the above mentioned principles, the same outcome.

Regarding Community trade mark registration No 3 997 616, it has been found above that the degree of similarity between the signs is not sufficient at all for the relevant consumer to establish a link between them, as required under Article 8(5) CTMR.

Given that the opposition is not well founded under Article 8(5) CTMR, it is unnecessary to examine the evidence filed by the opponent to prove reputation, as the outcome would be the same and the opposition has to be rejected.

As the opposition has to be rejected as far as it is based on Article 8(5) CTMR, the Opposition Division will now examine the opposition on the ground of 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.

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier CTM No 3 997 616.

1. The goods

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 18: Gym bags.

Class 25: Clothing, footwear, headgear.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

2. The signs

The signs have already been compared above under the grounds of Article 8(5) CTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) CTMR.

The marks are only visually similar to a very low degree.

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 marks under comparison have no elements which could be considered clearly 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

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 assumed to be identical are directed at the public at large. The level of attention is average.

6. Global assessment, other arguments and conclusion

The goods are assumed to be identical and the attention of the public is average.

The signs have been found to be visually similar to a very low degree; aurally and conceptually, it is not possible to compare them. There is, therefore, only a very low similarity from a visual perspective.

When the signs only consist of purely figurative elements, being considered as images, it is only likely that some visual similarity will be found if these images match in one separately recognisable element or if they have the same or a similar contour.

However, in the present case, the Opposition Division is of the opinion that, notwithstanding the very low visual similarity, it is not enough to lead, in any case, to a likelihood of confusion. This is because the visual coincidences are not strong enough. Although both signs are composed of the device of a swoosh with two prongs diverging into one, these devices contain significant visual differences, as has been explained in paragraphs a) the signs, and c) the ‘link’, under the ground of Article 8(5) CTMR.

The devices in each of the marks are quite different and the minor visual similarities consisting only in a swoosh with two prongs diverging into one are not strong enough to induce the public to believe that the goods that are sold under the signs come from the same or from economically- linked companies, even taking into account an average level of attention of the relevant public.

In the present case, the outcome is no likelihood of confusion, even considering the assumed identity of the goods. In addition, the Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. 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 (see judgment of 29/09/1998, C-39/97, ‘Canon’, paragraph 18). However, even taking the aforementioned into account, the fact that the marks only coincide to a very low degree from a visual point of view is insufficient to find a likelihood of confusion based on all the previous arguments, explained more in detail under the ground of Article 8(5) CTMR. On balance, the differing elements are clearly perceptible and are sufficient to distinguish the marks on the market.

Considering all of the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public, including a likelihood of association. Therefore, the opposition must be rejected as far as based on Article 8(1)(b) CTMR.

The opponent has also based its opposition on some earlier marks; these are mentioned in paragraph c) The ‘link’ under the ground of Article 8(5) CTMR and the same is applicable here, since the other earlier marks are less similar to the contested sign than the earlier CTM that has been examined.

Given that the opposition is not well founded under Article 8(1)(b) CTMR, it is unnecessary to examine the evidence of use and the evidence to prove an eventual enhanced distinctiveness filed by the opponent, as the outcome would be the same and the opposition has to be rejected. It is, therefore, also not necessary to enter into the arguments of the applicant regarding the evidence of use filed by the opponent.

The opponent claims to have a family of form-strip trade marks and that the trade mark applied for is very similar to this family of marks. The consumer that is confronted with the contested sign could perceive it as a new member of the ‘PUMA’ form-strip family. This family of trade marks covers a variety of form-strips whose common characteristic is the stripe flowing upwards and becoming narrower at the end.

When an opposition to a CTM application is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. The Courts have given clear indications on the two cumulative conditions that have to be satisfied (judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 123-127, confirmed by judgment of 13/09/2007, C-234/06 P, Bainbridge, EU:C:2007:514, § 63).

• Firstly, the proprietor of a series of earlier marks must submit proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’ (i.e. at least three).

• Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but must also display characteristics capable of associating it with the series. Association must lead the public to believe that the contested trade mark is also part of the series, that is to say, that the goods and services could originate from the same or connected undertakings. This may not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.

In the case that a contested sign is associated with the earlier marks forming part of the series, a likelihood of confusion might be created. However, for this to be applicable, the trade mark applied for must not only be similar to the marks belonging to the family, but it must also display some characteristics that are capable of associating it with the series and it must give the public the impression that it is confronted with a trade mark that forms part of this family. However, as can be deduced from the very detailed explanation of the differences between the marks, and taking into account that the consumers when seeing the contested sign, the earlier mark will not come to their minds, the Opposition Division comes to the conclusion that this argument of the opponent has to be set aside. The consumer would not make any association of the contested sign with the trade marks belonging to the family of marks. The applicant rightly states the following in this respect: ‘The creation of a family of marks forges a strong link between consumers and the common elements of those marks. Thus, consumers are able to identify the ‘PUMA’ goods swiftly because they incorporate those elements. In view of that connection between the ‘PUMA’ family of marks and consumers, the likelihood of confusion in the case of marks which do not contain the elements common to the family of marks is so much the less. The mark applied for in this case contains none of those elements. Consumers will therefore readily appreciate that it is not a ‘PUMA’ mark and there will be no likelihood of confusion’.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Julia SCHRADER

Chantal VAN RIEL

Saida CRABBE

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.