DECISION

of the Second Board of Appeal

of 19 November 2020

In case R 60/2018-2

Puma SE
Puma Way 1 91074 Herzogenaurach Germany	Opponent / Appellant

represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain

v

Aniloral, S.L.
C/ Camino Camarena nº 2 45512 Portillo de Toledo Toledo Spain	Applicant / Defendant

represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain

APPEAL relating to Opposition Proceedings No B 2 408 568 (European Union trade mark application No 12 902 409)

The Second Board of Appeal

composed of S. Stürmann (Chairperson and Rapporteur), H. Salmi (Member) and C. Negro (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 23 May 2014, Aniloral, S.L. (‘the applicant’) sought to register the figurative mark

for the following list of goods:

Class 18 - Gym bags;

Class 25 - Clothing, footwear, headgear.

2. The application was published on 26 June 2014.

3. On 18 September 2014, Puma SE (‘the opponent’) filed an opposition against the registration of the trade mark application for all the above goods.

4. The grounds of opposition were those laid down in Article 8(1)(b) and Article 8(5) EUTMR.

5. The opposition was based on the following earlier rights:

1. International Registration (IR) No 426 712 designating Spain, Czech Republic, Austria, Romania, Slovakia, Italy, Benelux, Croatia, Germany, France and Slovenia

filed and registered on 19 November 1976 for the following goods:

Class 25 - Footwear, in particular sports and leisure footwear.

Reputation was claimed for Belgium, Netherlands, Germany, Czech Republic, Slovenia, Italy, Croatia, Romania, Spain, Luxembourg, France, Slovakia and Austria for all the goods.

2. International Registration No 469 181 designating Austria, Italy, Benelux, Germany and France

filed and registered on 13 April 1982 for goods in Class 25; reputation was claimed for Belgium, Netherlands, Italy, Germany, France, Luxembourg and Austria, for the goods ‘footwear, specially for sports and leisure’ in Class 25.

3. International Registration No 484 788 designating Spain, Austria, Romania, Italy, Hungary, Benelux, Germany and France

filed and registered on 27 March 1984 for goods in Class 25; reputation was claimed for Belgium, Netherlands, Italy, Germany, Romania, Hungary, Spain, France, Luxembourg and Austria, for the goods ‘shoes for sports and leisure’ in Class 25.

4. International Registration No 925 647 designating the European Union

filed and registered on 2 February 2007 for the following goods:

Class 18 - Leather and imitations of leather and goods made of leather or of leather imitations, included in this class; bags (included in this class) and other cases not adapted to the product they are intended to contain as well as small articles of leather, included in this class; purses, pocket wallets, key cases; carrying bags, travelling bags, sports bags and sports pouches, included in this class, duffel bags, rucksacks, school bags, hip bags, toilet bags; trunks and travelling cases; umbrellas, parasols and walking sticks;

Class 25 - Clothing, footwear, headgear.

Reputation was claimed for the European Union for all the above goods.

5. International Registration No 1 138 941 designating the European Union

filed and registered on 6 March 2012 for the following goods:

Class 18 - Leather and imitations of leather and goods made of leather or of leather imitations, included in this class; bags (included in this class) and other cases not adapted to the product they are intended to contain as well as small articles of leather, included in this class; purses, pocket wallets, key cases; carrying bags, travelling bags, sports bags and sports pouches, included in this class, duffel bags, rucksacks, school bags, hip bags, toilet bags; trunks and travelling cases; umbrellas, parasols and walking sticks;

Class 25 – Clothing, footwear, headgear.

Reputation was claimed for the European Union for all the above goods.

6. EUTM No 3 997 616

filed on 20 August 2004, registered on 18 February 2008 for the following goods:

Class 25 – Clothing, footwear, headgear.

Reputation was claimed for the European Union for all the above goods.

7. EUTM No 3 513 694

filed on 31 October 2003, registered on 7 January 2009 for the following goods:

Class 18 - Leather and imitations of leather, and goods made of leather and imitations of leather, bags and other cases not adapted to the product they are intended to contain and small articles of leather, purses, pocket wallets, key cases; carrying bags, travelling bags, sport bags, sacks, carry-all bags, knapsacks, school bags, waist bags, toilet bags, trunks and travelling cases; umbrellas, parasols and walking sticks;

Class 25 - Clothing, footwear, headgear.

Reputation was claimed for the European Union for all the above goods.

6. Upon a request by the applicant of 13 April 2015, the Opposition Division invited the opponent to furnish proof of use of the earlier marks EUTM No 3 997 616, EUTM No 3 513 694, IR No 426 712, IR No 469 181, IR No 484 788 and IR No 925 647.

7. By letter received on 17 June 2015 the opponent provided information on the use of the aforementioned marks and submitted Annexes 1-12, also referring to its previous letter dated 3 October 2014 including Annexes 1-23 thereto.

8. By decision of 5 February 2016 (‘the first contested decision’), on the assumption of a visual similarity to a very low degree, the opposition was rejected in its entirety and the opponent was ordered to bear the costs. On 29 March 2016, the opponent filed an appeal against the contested decision.

9. By decision of 31 March 2017 (31/03/2017, R 587/2016-2, DEVICE OF A BLACK TWO-PRONGED SWOOSH (fig.) / DEVICE OF A WHITE TWO-PRONGED SWOOSH (fig.) et al. 587/2016‑2), the Second Board of Appeal held that by rejecting the opposition under Article 8(1)(b) and Article 8(5) EUTMR without examining genuine use of the earlier marks and without examining the earlier marks’ claimed reputation the Opposition Division failed to properly analyse the grounds of opposition in accordance with European Union trade mark law.

10. By decision of 13 November 2017 (‘the contested decision’), the Opposition Division again rejected the opposition entirely. It gave, in particular, the following grounds for its decision:

• In the light of the Second Board’s decision of 31 March 2017 and the fact that the case was remitted back to the Opposition Division for further examination, the new decision will assess the signs not only from a fresh perspective, but also bearing in mind the current legal framework and practice.

• The signs have to be compared as they are registered or applied for.

• Visually, the contested sign and earlier EUTM No 3 997 616 are figurative marks and contain a device element in the form of a two-pronged swoosh. The overall impression generated by the signs is sufficiently distinct and on the whole, it is concluded that the signs are visually dissimilar.

• The earlier EUTM No 3 997 616 has a faint, black outline, while the swoosh in the contested sign is depicted entirely in plain black. The earlier mark’s 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. 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.

• Aurally, purely figurative signs are not subject to a phonetic assessment.

• Conceptually, neither of the signs has a discernible meaning. A conceptual comparison is therefore not possible.

• The other earlier marks are even more dissimilar to the contested sign.

• Proof of use was not examined for reasons of procedural economy because the outcome of the decision would not change.

• Because of the dissimilarity of the signs, the Opposition Division did not examine the opponent’s claim according to Article 8(5) EUTMR.

11. On 9 January 2018, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 28 February 2018.

12. In its response received on 27 April 2018, the applicant requested that the appeal be dismissed.

Submissions and arguments of the parties

13. The arguments raised by the opponent in the statement of grounds may be summarised as follows:

• The contested sign is not a position mark but a figurative mark. Therefore, it is not far‑fetched to consider that the mark may appear on a sports shoe in a manner adjusted to the goods including an inverted manner, as represented below.

.

• For a consumer, it is not easy to remember whether a mark is oriented towards one side or the other. Both the contested sign and earlier mark No 3 997 616 coincide in a curved figure consisting of two prongs which diverge into two bands approximately in the middle.

• The earlier form-strip trade marks have acquired great renown especially in the footwear sector in the European Union. The use of the contested sign is likely to devalue the image and prestige that Puma SE has acquired among the public.

14. The arguments raised by the applicant in response may be summarised as follows:

• There is no proof of use of earlier EUTM No 3 997 616. The shoe models to which the opponent refers in this context either were used before the relevant period of use or do not make use of this mark.

• The contested sign depicts an irregular shape in the form of a path sloping gradually downwards in a curve from the upper left. It is clear that a sign consisting of two lines that run down to form a single line at the base is not the same as a sign where two strokes run up from the bottom left to form a new, gradually thinner upper line.

• In the earlier mark the ends of the lines are cut off flat. In the applicant’s mark they are rounded. Also, the degree of inclination is very different. In the earlier mark the inclination is constant and progressive. In the contested sign it occurs only towards the end of the line and is much steeper.

• The earlier mark is neither well known nor reputed.

• The earlier mark consists only of figurative elements based on stripes that are common in the relevant sector. Therefore, the earlier marks have a low level of inherent distinctive character.

• The relevant public is made up of average consumers, given that the goods are intended for consumers in general. However, sports brand consumers pay closer attention because of the emotional component and the likelihood of confusion is therefore diminished.

Reasons

15. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

16. The admissible appeal is well founded.

Article 8(1)(b) EUTMR - earlier EUTM No 3 997 616

17. According to Article 8(1)(b) EUTMR, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, an earlier trade mark, and the identity or similarity of the goods or services covered by the two 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.

18. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that Article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

19. Likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

Relevant public

20. The territory in question is the European Union.

21. The relevant goods of Classes 18 (‘Gym bags’) and 25 (‘Clothing, footwear, headgear’) are mass-consumption goods which are frequently purchased and used by the public at large, in particular recreational sportsmen and women (23/10/2015, T‑714/14, ATHEIST / ATHÉ, EU:T:2015:802, § 17).

22. The degree of attention is not higher than average in relation to the relevant goods, since they are not costly or rare, their acquisition and use do not require specific knowledge and they do not have a serious impact on the health, budget or life of consumers (15/02/2017, T-568/15, 2 START 2S (fig.) / ONE STAR (fig.) et al., EU:T:2017:78, § 29; 23/10/2015, T‑714/14, ATHEIST / ATHÉ, EU:T:2015:802, § 17; 07/07/2015, T‑521/13, A ASTER / A-STARS, EU:T:2015:474, § 19).

23. It may be that certain specimens within the product categories are of particular nature or worth, such as shoes or clothing that are relevant for professional use or handmade. However, where goods and services are perceived with different levels of attention depending on their specific characteristics, the group with the lowest level of attention must be taken into account for the assessment of the likelihood of confusion (10/10/2019, T-700/18, Dungeons / Dungeons & dragons et al., EU:T:2019:739, § 32-44). Even if it were correct, as the applicant submits, that consumers of sports clothing and shoes are particularly brand-conscious, that would be true at most for part of the public. Furthermore, the application is not limited to sportswear and footwear.

24. Therefore, at least a significant part of the relevant public does not show a degree of attention higher than average for the goods in question.

Similarity of the signs

25. Regarding the comparison between the signs, the assessment of the signs must be based on the overall impression created by them (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 37; 20/05/2014, T-247/12, Aris, EU:T:2014:258, § 43).

26. The signs to be compared are:

    Earlier EUTM	Contested sign

27. In that comparison, the Opposition Division correctly referred to the contested mark in the form applied for (07/05/2009, T‑185/07, CK Creaciones Kennya, EU:T:2009:147, § 48).

28. Contrary to the assessment of the Opposition Division, from a visual point of view, the conflicting signs are similar, at least to a low degree, without there being a very low degree of similarity, as the Opposition Division held in the first contested decision.

29. Both the contested sign and the earlier mark consist of two bended lines which, seen from left to right, run next to each other diagonally to the right. At about the middle of the overall width, in both devices, the two lines merge into a horizontal line or, in the earlier mark, a line with a slight curve.

30. On the other hand, there are several differences between the signs. The applicant rightly points out in particular that the bended lines in the contested sign start from the top and run to the bottom right, whereas in the earlier mark they start from the bottom and run to the top right.

31. Furthermore, unlike the earlier sign, the lines of the contested sign are not of uniform thickness. They are not completely parallel in the two-part area and have no flattened ends. In addition, the design of the lines is also different. While the contested sign consists of continuous black bands, the lines of the earlier mark are represented by their outer contours.

32. As has been pointed out, in the case at hand the comparison of the signs must be based on the perception of an average consumer with an average level of attention. It is also important to bear in mind that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his/her trust in the imperfect picture of them that he/she has kept in mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik Meyer, EU:C:1999:323, § 26; 21/05/2015, T-145/14, Device of two Parallel stripes (posit.) / Device of three Parallel stripes et al., EU:T:2015:303, § 18). The consumer who comes across a labelled product is more likely to recognise another brand if she or he remembers it vaguely and not in full detail (15/06/2005, T‑7/04, Limoncello, EU:T:2005:222, § 58).

33. In the present case, it will stick in the mind of that target public that the shape of the signs, consisting of two lines joined together to form a line after a bend, is essentially the same. These basic features make up the structure of both signs.

34. It is true that the differences between the signs also affect their overall impression. In particular the different course of the signs from top to bottom in the contested sign and from bottom to top in the earlier mark have a certain significance in that regard. However, from the imperfect memory of an average consumer, this difference does not fundamentally alter the overall impression of the contested sign in comparison with the earlier mark and does not preclude a meaningful similarity between the signs.

35. Furthermore, the differences mentioned above in paragraph 31 have only a limited effect on the basic shape of the figures. In particular, as regards figurative signs relating to the goods at issue in this case, in particular sports clothing and footwear, the average consumer tends to look primarily at the shape of a sign. The graphic representation of a figurative sign, such as the choice of colour or other design of the lines, if there are no special circumstances, is of minor relevance as they usually vary depending on the colour of the products (see the compilation of sports shoes carrying the sign applied for in the letter of the applicant dated 27 April 2018, page 13). These differences mainly concern the representation of the same basic shape. From mere memory, they are therefore of secondary importance in the overall impression.

36. As regards the existence of an essentially identical basic shape, a similarity of an at least low degree cannot be denied in an overall assessment, despite the weight and number of differences found.

37. In conclusion, contrary to the Opposition Division’s finding, there is a visual similarity of at least a low degree. Since the signs in comparison are purely figurative and abstract in their appearance, an aural comparison cannot be made.

38. Conceptually, neither of the graphic forms of the signs has a discernible meaning. Nor has the opponent been able to indicate what meaning the signs are intended to symbolise. Therefore, the conceptual comparison remains neutral.

Distinctiveness of the earlier mark

39. In the contested decision, the Opposition Division assumed that the earlier EUTM No 3 997 616 has an average degree of inherent distinctiveness. In the view of the applicant, the earlier mark has only a low degree of distinctiveness.

40. It is true that basic shapes in particular are devoid of distinctive character. The applicant is also correct to point out that the public may be accustomed to the use of stripes, especially for sports clothing and sports shoes (13/06/2014, T‑85/13, Trainer with 5 stripes, EU:T:2014:509, § 26-33).

41. However, the earlier mark at issue does not consist only of a basic shape or other very simple design. Nor should the requirements in this context be overstretched. Especially signs with a certain conciseness will stick in the memory of the public as an indication of origin. In this respect, the earlier EUTM cannot be denied a normal distinctive character. The convergence of two curved lines clearly does not show a basic very simple figure; nor is it evident that comparable representations are used extensively.

42. The opponent has claimed that earlier EUTM No 3 997 616 is well known because of extensive use. This would also result in an enhanced degree of distinctiveness of the earlier mark. This needs to be examined by the Opposition Division.

Likelihood of confusion

43. In assessing whether there is a likelihood of confusion under Article 8(1)(b) EUTMR, account must be taken of the interdependence of the relevant circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18-19). A lesser degree of similarity between the marks may be offset by a greater degree of similarity or identity between the goods or services, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

44. From the above assessment, it is clear that the signs are similar to at least a low degree. The distinctiveness of the earlier mark is at least normal.

45. In order to decide whether or not there is a likelihood of confusion, the Opposition Division must assess for which goods the earlier mark was used, compare those goods with the ones applied for and it must assess if the earlier mark enjoys enhanced distinctiveness.

Article 71(1) EUTMR

46. According to Article 71(1) EUTMR, the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

47. The Board will use its discretion to remit the case to the Opposition Division for a reassessment of the case, in particular with regard to the genuine use and, should the latter be proven, the distinctiveness of earlier EUTM No 3 997 616 by virtue of its use. Those aspects, which may affect the outcome of the assessment of the likelihood of confusion, have not yet been examined by the Opposition Division, as stated above.

48. In addition, the Opposition Division may have to re-examine the opposition on the basis of earlier EUTM No 3 997 616 pursuant to Article 8(5) EUTMR. Nor can that claim of the opponent be rejected on the ground of lack of similarity between the signs.

49. With regard to the other earlier marks raised in the opposition, the Opposition Division considered that the contested mark was even more distant from them than from EUTM No 3 997 616. Since it is not true that there is no similarity to this trade mark, the Opposition Division may have to reassess the relationship to those earlier marks as well.

50. Therefore, in accordance with Article 71(1) EUTMR, the Board annuls the contested decision and remits the case to the Opposition Division for further prosecution.

Costs

51. Since a new decision must be taken within the opposition proceedings, for reasons of equity, each party shall bear its own costs in the present appeal proceedings, in accordance with Article 109(3) EUTMR.

52. The costs of the opposition proceedings must be determined by the new decision of the Opposition Division.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Remits the case to the Opposition Division for further prosecution;

3. Orders each party to bear its own costs in the present appeal proceedings.

Signed S. Stürmann

Signed H. Salmi

Signed C. Negro

Registrar: Signed H.Dijkema