OPPOSITION No B 2 528 969

Golf Tech Golfartikelvertriebs Gesellschaft mit beschränkter Haftung, Carlbergergasse 66, 1230, Wien, Austria (opponent), represented by Isabella Hödl, Schmiedgasse 29, 8010, Graz, Austria (professional representative)

a g a i n s t

Callaway Golf Company, 2180 Rutherford Road, 92008-7328, Carlsbad, California, United States of America (applicant), represented by DLA Piper UK LLP, 160 Aldersgate Street, EC1A 4HT, London, United Kingdom (professional representative).

On 26/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 528 969 is upheld for all the contested goods.

2. European Union trade mark application No 13 762 001 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 13 762 001 ‘Aqua Dry’. The opposition is based on European Union trade mark registration No 11 692 977 ‘AQUA I DRY’. The opponent invoked Article 8(1)(a) and (b) 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 28: Golf bags with or without wheels; golf clubs; travel covers for golf bags; protective hoods for golf clubs; golf gloves.

The contested goods are the following:

Class 28: Golf bags.

The contested golf bags are de facto identical with the opponent’s golf bags with or without wheels.

b) 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 considered to be average.

c) The signs

AQUA I DRY	Aqua Dry
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 and it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper- or lower-case characters, or in a combination thereof.

The signs in comparison identically contain the verbal elements ‘Aqua’ and ‘Dry’. ‘Aqua’ is a Latin word and will be understood as meaning ‘water’ throughout the relevant territory as has been established in consistent case-law (see, for example, 28/01/2015, T-123/14, AquaPerfect, ECLI:EU:T:2015:52, § 34). The word ‘Dry’ will be understood by the English speaking public and is meaningless to the remaining public. The earlier mark additionally contains the element ‘I’ which will be understood by the English speaking public as first person singular pronoun. In both cases, that is, when all or some of the elements composing the signs are understood and when none of the elements are, the contested sign and the elements of the earlier mark possess an average degree of distinctiveness since even if they are meaningful, they do not describe or directly relate to the goods in question.

Visually and aurally, the signs coincide in ‘AQUA’ and ‘DRY’ and differ in the additional ‘I’ in the middle of the earlier sign. Given the shortness and position of this differing element, it can do little to offset the significant visual and aural impact of the coincidence of two verbal elements representing a total of seven common letters. Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Accordingly, the signs coincide in the concept evoked by ‘aqua’ throughout the territory and also in the concept ‘dry’ in the English-speaking part thereof. Overall, it must be concluded that the signs are at least similar to the public which does not speak English and are highly similar to the English-speaking public.

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

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark as a whole must be seen as normal.

e) Global assessment, other arguments and conclusion

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods are identical and the signs are similar or even highly similar to the English speaking public. The similarities derive from the fact that the contested sign de facto reproduces the earlier mark with the exception of a letter ‘I’. This difference is not capable of counteracting the impact of the coinciding elements, therefore, consumers would clearly be led to believe that the relevant goods come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark invoked.

It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

According to Article 109(1) EUTMR, 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Irina SOTIROVA

Ferenc GAZDA

Erkki MÜNTER

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.