OPPOSITION No B 2 618 372

Storm Products, Inc., 165 South 8th West, Brigham City, Utah 84302, United States (opponent), represented by Maguire Boss, 24 East Street, St. Ives, PE27 5PD, United Kingdom (professional representative)

a g a i n s t

FMTM Distribution Ltd, 3A and 3B Isle of Man Freeport, Ballasalla, IM9 2AP, Isle of Man (applicant), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative).

On 19/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 618 372 is partially upheld, namely for the following contested goods:

Class 18: Bags made of leather; sports bags; bags.

2. European Union trade mark application No 14 414 023 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 414 023 ‘STORM’, namely against all the goods in Class 18. Following the final decision rendered on 11/09/2017 in opposition No B 2 615 584, the contested application has been partially refused and consequently the opposition is currently directed against all the remaining goods. The opposition is based on European Union trade mark registration No 2 846 665 ‘STORM’ for goods in Classes 25 and 28. The opponent invoked Article 8(1)(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.

1. The goods

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

Class 25: Bowling shoes.

Class 28: Sporting equipment, namely bowling balls, bowling bags and bowling gloves.

The contested goods are the following:

Class 18: Leather straps; leather shoulder belts; pocket wallets; notecases; key cases; credit card cases; travelling sets (leather ware); travelling sets; luggage; travelling trunks; travelling bags; garment bags for travel; envelopes, of leather, for packaging; furniture (leather trimmings for -); trimmings of leather for furniture; umbrellas; parasols; purses; leather cases; attaché cases; briefcases; suitcases; vanity cases (not fitted); make-up cases; credit card holders; bags made of leather; handbags; shopping bags; make-up bags; beach bags; sports bags; luggage tags; furniture coverings of leather; bags; pouches; leather or leather-board boxes; cases, of leather or leather board.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

The contested sports bags are used to carry sports clothing or equipment, while the opponent’s sporting equipment, namely bowling bags consists of specially designed bags adapted for bowling equipment. Although these goods differ in their specific nature and purpose, they may have the same distribution channels, end users and producers. Therefore, they are similar.

The same reasoning applies to the broad category of the contested bags, which includes the previously compared sports bags, and the contested bags made of leather, given that sports bags can be made of leather. Consequently, these goods are also similar to the opponent’s sporting equipment, namely bowling bags, because they meet the same criteria for similarity.

The contested leather straps; leather shoulder belts; pocket wallets; notecases; key cases; credit card cases; travelling sets (leather ware); travelling sets; luggage; travelling trunks; travelling bags; garment bags for travel; envelopes, of leather, for packaging; furniture (leather trimmings for -); trimmings of leather for furniture; umbrellas; parasols; purses; leather cases; attaché cases; briefcases; suitcases; vanity cases (not fitted); make-up cases; credit card holders; handbags; shopping bags; make-up bags; beach bags; luggage tags; furniture coverings of leather; pouches; leather or leather-board boxes; cases, of leather or leatherboard are dissimilar to all the goods covered by the earlier right because, while the opponent’s goods are sports equipment and shoes for bowling, the contested goods are goods used for travelling, carrying documents, money or beauty products and related accessories, items for protecting against the rain or the sun or for protecting furniture and related accessories. These goods differ in their nature, intended purpose, methods of use and distribution channels, are neither complementary nor in competition and are usually produced by different companies.

2. The signs

STORM	STORM
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

Some of the contested goods are similar to those covered by the earlier mark. Given the identity between the signs, there is a likelihood of confusion for the relevant public within the meaning of Article 8(1)(b) EUTMR.

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 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). In the case at issue, the identity between the signs offsets any lesser degree of similarity between some of the goods.

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 partly well founded on the basis of the opponent’s European Union trade mark registration No 2 846 665.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As identity or similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Zuzanna STOJKOWICZ

Paloma PERTUSA MARTÍNEZ

Francesca DRAGOSTIN

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.