OPPOSITION No B 2 529 181

Champion Products Europe Limited, Suite 8, Plaza 212, Blanchardstown Corporate Park 2, Blanchardstown, Dublin 15, Ireland (opponent), represented by Bugnion S.P.A., Largo Michele Novaro, 1/A, 43121 Parma, Italy (professional representative)

a g a i n s t

CYC Design Corporation, 133 West 5th Avenue, Vancouver British Columbia V5Y 1H9, Canada (applicant), represented by Withers & Rogers LLP, 4 More London Riverside, London SE1 2AU, United Kingdom (professional representative).

On 10/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 529 181 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 (in Classes 18 and 25) of European Union trade mark application No 13 695 713 (word mark:
“REIGNING CHAMP”). The opposition is based on European Union trade mark registration No 122 630 (word mark: “CHAMPION”). The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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

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 goods in Classes 18 and 25 on which the opposition is based are the following:

Class 18: Luggage, cases, bags, wallets, pouches, purses, back packs, satchels, straps; parts for the aforesaid goods.

Class 25: Articles of clothing, footwear and headgear; parts for the aforesaid goods.

The contested goods in Classes 18 and 25 are the following:

Class 18: Bags, namely duffel bags, hand-bags, tote bags and sports bags.

Class 25: Apparel, namely sweatshirts, hoodies, sweaters, t-shirts, polo shirts, jackets, shorts, pants, socks, hats, caps and shoes.

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

However, the term ‘namely’, used in the applicant’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.

Contested goods in Class 18

The contested Bags, namely duffel bags, hand-bags, tote bags and sports bags are included in the broad category of the opponent’s bags. Therefore, they are identical.

Contested goods in Class 25

Apparel, namely shoes are identically contained in both lists of goods (including synonyms).

The contested Apparel, namely sweatshirts, hoodies, sweaters, t-shirts, polo shirts, jackets, shorts, pants, socks are included in the broad category of the opponent’s Articles of clothing. Therefore, they are identical.

The contested Apparel, namely hats, caps are included in the broad category of the opponent’s Articles of headgear. Therefore, they are identical.

2. 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 are directed at the public at large. The degree of attention is average.

3. The signs

CHAMPION	REIGNING CHAMP
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 23).

Both signs are word marks, which are protected in any typeface.

The elements ‘CHAMPION’ and ‘CHAMP’ will be associated by a part of the public with ‘a person who has surpassed all rivals in a sporting contest or other competition’ (Oxford English Dictionary). Bearing in mind that the relevant goods are clothing articles and bags, these elements are weak for these goods, because of their positive connotations; they are laudatory.

Neither of the signs has any elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the earlier trade mark is a single-word mark, whereas the contested sign contains two words. The lengths of the signs are also clearly different: the earlier trade mark has 8 letters, whereas the contested sign has 13 letters. The word ‘REIGNING’ is present at the beginning of the contested sign. This first part of the contested sign is, therefore, clearly different from the beginning of the earlier trade mark. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Although the second part of the contested sign, ‘CHAMP’, coincides with a part of the earlier trade mark, the ending of the earlier trade mark, ‘ION’, is different. Therefore, the signs are similar to only a low degree. The degree of similarity is not higher when the meaning of the words ‘CHAMPION’ and ‘CHAMP’ is understood by the relevant consumers because of the weak character of these words.

Aurally, the signs will be pronounced according to the different rules of the languages in the European Union. The contested sign is clearly longer than the earlier trade mark. The word ‘REIGNING’ is present at the beginning of the contested sign. Although the element ‘CHAMP’ in both signs could be pronounced in some places with the same syllables, the ending ‘ION’ is only part of the earlier trade mark. Therefore, the signs have different pronunciations, rhythms and sounds, which result in a low degree of aural similarity. The degree of similarity is not higher if the words ‘CHAMPION’ and ‘CHAMP’ are understood by the relevant consumers because of the weak character of these words.

Conceptually, the word ‘REIGNING’ of the contested sign will be understood by the English-speaking public as ‘occupying the throne; ruling’ (Oxford Dictionary). Since there is no corresponding meaning associated with the earlier trade mark, the signs are conceptually not similar for this public. For the part of the public that will not understand the meaning of this word, it has no impact on the conceptual comparison. If the words ‘CHAMPION’ and ‘CHAMP’ are understood in the sense described above, they have the same meaning. However, since these elements are weak, they have no meaningful significance for the outcome of the comparison. If they are perceived as meaningless, the outcome of the conceptual comparison is not affected.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

Class 18:

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of a part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal. For another part of the public, the distinctiveness of the earlier mark is below average because of its weak character (see above).

Class 25:

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection for the goods. 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 an enhanced degree of distinctiveness.

5. Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

The contested goods are identical.

The signs are visually and aurally similar to a low degree and have no relevant conceptual similarities, because the words ‘CHAMPION’ and ‘CHAMP’ either are weak or will not be understood (depending on the public). The overall impressions created by the signs are different. No individual elements of the signs are the same.

Taking into account the relevant visual and aural differences between the signs, the lack of conceptual similarities between the distinctive elements, the different beginning of the contested sign and the average degree of attention of the consumers, there is – even for identical goods and assuming an enhanced degree of distinctiveness of the earlier trade mark for goods in Class 25 – no likelihood of confusion. This is particularly relevant when the degree of distinctiveness is normal/below average as it is for the goods in Class 18.

Contrary to the opponent’s arguments, the differences between the signs are sufficient to avoid a likelihood of confusion. The public would not consider that the signs come from the same undertaking or economically linked undertakings.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198). The previous decisions are not comparable. Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, because the signs and the relevant goods and services are not comparable.

Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, 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) EUTMR 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) EUTMR (16/12/2010, T 345/08, & T 357/08, Botolist / Botocyl, EU:T:2010:529, § 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.

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

As seen above, the earlier mark is (assumed) reputed and the signs are only marginal similar. 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) EUTMR but has been confirmed in the judgments of 23/10/2003, C 408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C 252/07, Intel, EU:C:2008:655, § 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 (27/11/2008, C 252/07, Intel, EU:C:2008:655, § 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 similarities between the signs concern only weak elements, namely ‘CHAMPION’ and ‘CHAMP’, or will not be understood; therefore, there is no link between them. This does not mean that the relevant public is likely to establish a link between them. When consideration is given to the goods in question, it is clear that the similarities between the signs in dispute relate to elements which are weak for a part of the public, as they are laudatory (see above). Therefore, in view of the feeble distinctive character of the elements in question, the similarities between the contested trade mark and the earlier trade mark are unlikely to bring the earlier trade mark to the mind of the average consumer.

Therefore, taking into account and weighing up all the relevant factors of the present case, 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) EUTMR and must be rejected.

COSTS

According to Article 85(1) EUTMR, 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 Rule 94(7)(d)(ii) EUTMIR, 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

Beatrix STELTER

Peter QUAY

Claudia MARTINI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.