OPPOSITION No B 2 726 340

Joma Sport, S.A., Ramón y Cajal, 112, 45512 Portillo de Toledo (Toledo), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Jopa Racing Products B.V., Veldegge 8, 7468 DJ Enter, Netherlands (applicant), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative).

On 21/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 726 340 is partially upheld, namely for the following contested goods and services:

Class 9: Gloves for protection against accidents; Head protection and Head protection; Motocross googles; Motorcycle goggles.

Class 12: Panniers for motorcycles; Saddle covers for bicycles or motorcycles; Covers for motor vehicles; Stands for motorcycles.

Class 25: Footwear, gloves and headgear solely for motorcycles, racing motorcycles and motor racing.

Class 28: Knee guards, elbow guards and neck protectors for motorcyclists.

Class 35: Retailing and wholesaling of helmets, spectacles, parts and spare parts for motorcycles.

2. European Union trade mark application No 14 958 714 is refused protection for all of the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 958 714 ‘JOPA’. The opposition is based on Spanish trade mark registrations No 1 909 774, No 1 999 946, No 1 999 952 and No 2 241 817 for ‘JOMA’ and for which the opponent invoked Article 8(1)(b) EUTMR. The opposition is also based on Spanish trade mark registration No 1 909 773 ‘JOMA’ and European Union trade mark registration No 3 388 923 ‘JOMA’ for which the opponent invoked both Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier Spanish trade marks No 1 909 774, 1 999 946 and 1 999 952 was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). Indeed, the opposition is based on more earlier trade marks and the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier Spanish trade marks No 1 909 773 and 2 241 817 for which proof of use was not requested.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to Spanish trade mark No 1 909 773 ‘JOMA’, for which the opponent claimed repute in Spain.

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 will 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 for 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: 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.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, earlier Spanish trade mark No 1 909 773 has a reputation in Spain.

Reputation implies a knowledge threshold that 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.

In the present case, the contested trade mark was filed on 24/12/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 25: Ladies', men's, and children's manufactured clothing and footwear (non-orthopedic), headgear.

After limitation of the list of goods and services by the applicant, the opposition is directed against the following goods and services:

Class 9: Gloves for protection against accidents; Head protection and Head protection; Motocross googles; Motorcycle goggles.

Class 12: Panniers for motorcycles; Saddle covers for bicycles or motorcycles; Covers for motor vehicles; Stands for motorcycles.

Class 25: Footwear, gloves and headgear solely for motorcycles, racing motorcycles and motor racing.

Class 28: Knee guards, elbow guards and neck protectors for motorcyclists.

Class 35: Retailing and wholesaling of helmets, spectacles, parts and spare parts for motorcycles; Mediation in the purchase and sale of helmets, spectacles, parts and spare parts for motorcycles, lubricants and electronics.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 21/02/2017 the opponent submitted the following evidence:

• Attachment 2:

• Extract from the website www.joma-sport.com in English dated 11/07/2016 titled ‘JOMA RATED THIRD MOST IMPORTANT BRAND IN WORLD FOOTBALL’. There is a picture of a football player wearing Joma clothing . According to a study carried out by a Brazilian agency, ‘JOMA’ has been rated as the third most important brand in world football with a total of 26 clubs wearing its logo. Another extract from the same website dated 26/11/2016 is titled ‘STARS FROM PAST AND PRESENT APPEAR IN JOMA’S 50^th ANNIVERSARY SHOW’. The event went through the history of JOMA since its beginnings in 1965 and through the technological highlights.

• Extracts in English from the website www.cornedbeefhash.wordpress.com dated 04/02/2010 where famous Spanish tennis players Feliciano López and Juan Carlos Ferrero are wearing Joma’s T-shirts , . The article mentions that the Spanish clothier has added the former No 1 tennis player to their roster.

• Extract in English from the website www.soccerex.com dated 09/06/2015, titled ‘Toulouse FC sign kit deal with Spanish brand’. The article announces that Joma will kit out the Toulouse football club for the following four seasons. The contract includes official playing kits as well as replica wear and other products for the general public.

• Extracts in English from the website www.joma-sport.com, undated, titled ‘Swansea City AFC’. A football player from the Swansea city is wearing Joma clothing . Another undated extract from this website, titled ‘Royal Spanish athletics federation’ shows T-shirts and shorts of the Spanish athletics federation for sale on their website , . According to the information available, JOMA dressed the Spanish athletes for all national and international championships including the 2016 Rio de Janeiro Olympic Games. A further extract from the same website dated 13/12/2016 is titled ‘Joma TSV Herrsching shirt voted best in the world’. The volleyball website ‘World of Volley’ carried out a survey among both men’s and women’s professional teams competing at the international volleyball championships and the Joma’s technical teamwear worn by the German team TSV Herrsching was chosen as the most attractive in the world .

• An extract in English from www.insideworldfootball.com dated 29/05/2014, titled ‘Joma signs first national team deal, replacing Kappa in Bulgaria’. The article announces that Joma will kit out all Bulgaria’s national teams.

• An extract in English from www.soccer365.com dated 28/05/2015, titled ‘Romania sign Joma as technical sponsor’ in which it is announced that a 4-year partnership with Joma between the Romanian Football Federation (RFR) and Joma was signed and that Joma will provide the match jersey and training gear for the RFR national teams.

• An extract in English from www.footyheadlines.com dated 08/04/2015 announcing the three-year Joma kit deal with the Italian Serie A club Sampdoria.

• A further extract from the Joma website titled ‘Spanish Olympic Committee’ in which it is announced that Joma has been selected by the Executive Committee of the Spanish Olympic Committee in 2015 to be the exclusive sponsor and sportswear supplier for every competition in which COE teams take part, from the Baku European Games of 2015 to the Tokyo 2020 Olympic Games . Official equipment is also for sale on the website.

• Another extract from the Joma website dated 24/01/2017 titled ‘Joma among top football brands in Europe’, according to which an annual study on sponsorship ranked the brand as the sixth most active with the title of ‘technical sponsor’. No further information is provided about the study. A further extract shows the picture of a Valencia CF football player wearing a Joma T-shirt.

• An extract in English dated 04/07/2014 from www.palermocalcio.it, titled ‘Palermo and Joma together for three seasons’ in which it is mentioned that ‘in the year of Palermo’s return to the Serie A, the rosanero club has chosen the Spanish company, an international industry leader, to manage technical and sports apparel for their teams’.

• An extract in English dated 27/06/2012 from www.sportspromedia.com announcing the three-year kit deal between the Italian Serie A side Fiorentina and Joma.

• An extract in English from www.tt.tennis-warehouse.com dated 08/06/2016 showing famous tennis players, such as Rafael Nadal among others, wearing Joma’s jackets.

• An extract in English from the Joma website dated 05/08/2016 about the opening ceremony of the 31^st Olympic Games where it is mentioned that ‘the Spanish Olympic Committee will be lead by one of world’s most famous tennis players, Rafa Nadal, wearing the iconic Spanish sportswear brand. Nine other national Olympic committees will be on parade wearing Joma too including Mexico and Portugal. Joma will be strongly represented in the handball competition as Croatia aim to land the men’s title while the Honduran football team will be competing once again wearing their famous blue and white Joma kits’.

• An extract in English from www.villarealcf.es dated 01/07/2016 shows that the club will wear the sports brand Joma.

• An extract in English from the Joma website dated 22/09/2015 according to which ‘Joma Sport’ is placed in the top five of the sports brands with more presence in the world. Still according to this extract, ‘in the 2013-2014 season Joma Sport only had the 3% of the market share, the company sponsored to 11 soccer teams. In the 2014-15, it climbed to the 4.64% sponsoring 16 to teams. Nowadays, Joma Sport has the 6% of the market share, just half a point below Puma, which has the 6.22%’.

• An extract in English dated 2016 from www.theluxonomist.es titled ‘Joma supports the Spanish Sport’ according to which Joma will be responsible for preparing the clothes of the Spanish delegation in Rio.

• Further extracts from www.joma-sport.com, www.walesonline.co.uk, www.pfai.ie, www.insidespanishfootball.com, www.dailyrecord.co.uk dated between 29/09/2011 and 01/07/2016 showing that Joma will provide official kits to different football team such as to the CD Leganés, the Granada CF, Livingston FC, PFA Ireland and tennis players of the Davis cup team and world’s elite paddle player will also wear Joma equipment.

• According to an article published in www.mjm-sports.co.uk on 02/12/2015, ‘Joma is the leader soccer kit brand in the Spanish market and it achieved be named as Best Soccer Kit Brand 2015’.

• According to an article published in www.foot.ie on 01/01/2013, ‘Athlone Town sign multi-year agreement with Spanish sportswear giants, Joma’.

• Extracts from www.brandsofspain.com in English, undated titled ‘JOMA’ – ‘The leading Spanish brand in sport shoes and clothes’. The article states that ‘Joma Sport is a company manufacturing and distributing sports equipment focusing on football, running and tennis footwear and garments. […] The start of the company’s global expansion was in 1980 […]. Today Joma has a commercial presence in over 70 countries and in over 50 sports.’ A report published by the external consulting company Sport Panel ranks JOMA’s brand image in the third position in 2013.

• Article published by www.marcaespana.es dated 22/08/2016 titled ‘Spanish fashion shines in Rio’ about JOMA’s sponsorship of the Spanish delegation and other countries at the Rio Olympics in 2016 where it is mentioned that the Vanity Fair magazine ‘placed the uniform designed by the company from Toledo, Joma, for the Spanish athletes among the Top eight of an Olympic Games that it classifies as the best ever’.

• Attachment 3: Many articles published in Spanish media between November 2010 and November 2016. The content of the articles is rarely self-explanatory. The opponent’s did not consider it necessary to provide a full translation of the evidence alleging that the material includes elite sportsmen and world stars wearing JOMA clothing and that it is sufficient to illustrate the reputation of this brand. There is indeed a picture published in www.marca.com of the international basketball player Pau Gasol wearing a Joma jacket, however, the sportsmen in question cannot always be recognized and the trademark is not always visible on the sportsmen’s t-shirts. Furthermore, there is no sufficient information to link the translation provided of the most important headlines with the articles they are in fact supposed to be the translation of. The filing of evidence must be sufficiently clear and precise to enable the other party to exercise its right of defence and the Office to perform its examination, without reference to extraneous or supportive information. Responsibility for putting evidence in order rests with the party. Failure to do so leaves open the possibility that some evidence may not be taken into account.

• Attachment 4: A copy in Spanish of opposition decision No B 821 134 in which the opposition filed by ‘JOMA’ against ‘JOPA SPORT’ was totally upheld in classes 18, 25 and 28.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Spain.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources and by the official presence of the brand at worldwide events such as the Olympic Games. The sponsorship of Spanish and international teams in different sports such as football, tennis, paddle, athletic, volleyball or handball and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to men’s sport clothing, whereas there is no or little reference to the remaining ladies’ and children clothing, footwear (non-orthopedic), headgear and men’s footwear (non-orthopedic), headgear.

2. The signs

JOMA	JOPA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

None of the signs have any meaning in relation with the goods and services at hand and are distinctive. The applicant argues that the contested sign corresponds to the first two letters of the founder of Jopa Racing products, Johan Paus. However, this cannot be assumed as being a well-known fact to the average consumer. Therefore, this argument must be set aside.

Conceptually, neither of the signs has a 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.

Visually and aurally, the signs coincide in the letters ‘JO*A’ and in their respective sounds. The signs differ in their respective third letter/sound, namely ‘M’ in the earlier mark and ‘P’ in the contested sign.

In view of the fact that the signs coincide in 3 out of 4 of their letters, the signs are visually and aurally similar to a degree that is above average.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are 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 by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 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.

As regards the degree of similarity between the marks at issue, the more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public. However, the fact that the marks are similar is not sufficient for it to be concluded that there is a link between those marks. It is possible that the marks at issue are registered for goods or services in respect of which the relevant sections of the public do not overlap (27/11/08, C-252/07, ‘Intel Corporation’, paragraphs 44 to 46).

It is therefore conceivable that the relevant section of the public as regards the goods for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was applied for and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks (27/11/08, C-252/07, Intel Corporation, paragraph 48). It is also possible that, notwithstanding the fact that the public is identical or overlaps to some extent, the goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. Accordingly, the nature of the goods or services for which the marks at issue must be taken into consideration for the purposes of assessing whether there is a link between those marks. It is possible that the reputation of the earlier mark is so important that it produces effects beyond the relevant public as regards the goods or services registered. For the purposes of assessing where there is a link between the marks at issue, it may therefore be necessary to take into account the strength of the earlier mark’s reputation (27/11/08, C-252/07, Intel Corporation, paragraphs 49 to 53).

Furthermore, the stronger the distinctive character of the earlier mark, the more likely it is that the public, confronted with a later identical or similar mark, will establish a link between the two marks. Accordingly, the degree of distinctive character acquired by the earlier mark must also be taken into consideration for the purposes of ascertaining whether a link may be established between the marks (27/11/08, C-252/07, Intel Corporation, paragraphs 54 to 57).

It is in the light of the above jurisprudence that the opponent’s claim must be examined.

In the present case, even if the conceptual aspect does not influence the assessment of the similarity of the signs, the signs are visually and aurally similar to a degree that is above average. The only differentiating letter between the signs, that is moreover placed in the middle of the verbal element and therefore less noticeable, does not manage to eclipse the remaining similarities.

The goods for which the opponent has proven reputation are men’s sport clothing, that essentially serve to protect and cover parts of the body, just like the goods applied for in classes 25 and 28, as well as the gloves and head protection of class 9 applied for. As for the goggles requested in class 9, they are items that, in addition to protect the eyes, are often marketed together with sport shoes and sport clothing creating thus, a close relationship between them. Furthermore, the opponent has proven to have a reputation for men’s sport clothing in high level competitions where the technical characteristics of the garment are of utmost importance since the purpose is not only to meet the basic need to cover the body, but also to get the most of the garment so that it is an ally to obtain the maximum sport performance and the best results. Such technical characteristics require of a particular technology which qualities consumers could transfer to garments and accessories in other sport activities. Indeed, contrary to the opinion of the applicant, the fact that the goods and services applied for are directly related to motorcycling and that the products for which the opponent has reputation are for men’s sport clothing, further increases the risk of association between the signs since the consumer could believe that the previous trade mark has expanded to a new sport field, that of cycling or motorcycling. Therefore, the Opposition Division considers that there is also a risk that the public makes such a mental association in relation to the accessories for cycles and motorcycles in class 12 because accessories for motorcycles/cycles and motorcycles/cycles clothing and footwear are very often sold in the same points of sales. The fact that, according to the applicant, ‘general sport brand’ do not expand into motor racing because this would imply a completely different design philosophy is an argument that cannot be upheld because general consumers do not proceed to analyse such high level commercial strategies.

Considering the above, also given the similarities between the marks, the Opposition Division concludes that, when encountering the contested mark in relation to the above-mentioned contested goods and services, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs.

However, the same risk cannot be found in respect of the remaining services in Class 35 namely, retailing and wholesaling of helmets, spectacles, parts and spare parts for motorcycles; mediation in the purchase and sale of helmets, spectacles, parts and spare parts for motorcycles, lubricants and electronics since the nature of the goods for which the reputation is proven is very different from the retailing, wholesaling and mediation services of the applicant. They have nothing in common with the opponent’s men’s sport clothing and it would require too many mental steps from the consumers to establish a relation between them. Therefore, there is no ‘link’ between these goods and services.

Therefore, the Opposition Division does not consider it plausible that the relevant consumer would make any link to the earlier mark if the contested sign were used for these services. The opponent has failed to put forward any concrete evidence or argument on the basis of which the Opposition Division could hold that the use of the contested mark in relation to such services would bring the opposing trade mark to mind. In this context it must be pointed out, that as was explained above, the high reputation of a mark alone is not sufficient to justify that all of the conditions laid down in Article 8(5) EUTMR are met.

Given that the relevant section of the public is unlikely to establish a link between the trade marks in dispute for the contested services in Class 35, the Opposition Division concludes that the use of the contested trade mark on these services cannot take advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. The opposition is, therefore, not well founded under Article 8(5) EUTMR with respect to retailing and wholesaling of helmets, spectacles, parts and spare parts for motorcycles; mediation in the purchase and sale of helmets, spectacles, parts and spare parts for motorcycles, lubricants and electronics.

Therefore, taking into account and weighing up all the relevant factors of the present case, namely the degree of similarity between the signs, the connection between the goods and services, the relative strength of the earlier mark’s reputation, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs in relation to goods in Classes 9, 12, 25 and 28. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following:

The JOMA trademark is associated by consumers with values and concepts such as

reliability, creativity, design, leadership, elite athletes, quality, and so forth.

The JOMA trademark has also been extended to a number of sporting disciplines, including football, basketball, athletics, tennis, cycling and paddle tennis.

Consequently, in those sporting disciplines where the JOMA trademark is not yet present, consumers are perfectly likely to associate a confusingly similar trademark used in those fields with the JOMA trademark, assuming that the use and presence of the JOMA trademark extends to those new fields. This extension to new sporting disciplines would be perfectly in keeping with the expansion strategy followed by JOMA for many years.

It is clear that there is a connection between the sporting fields in which the JOMA trademark is reputed and those to which the goods and services of the trademark under application belong. In this regard we refer to (cited simply as particularly clear examples illustrating this point) goods such as sunglasses, motocross goggles, motorcycle goggles, cases for glasses, glasses/goggles for sports, stands for motorcycles, footwear for racing motorcycles and motor racing, knee guards, elbow guards and neck protectors for motorcyclists and sales services for this type of goods.

Thus, consumers could think that the well-known and reputed JOMA trademark is being extended to the field of motorcycling. This potential mental association between the JOPA mark applied to those goods and the well-known JOMA mark would place the applicant in an advantageous position when entering the marketplace. Indirectly, consumers could associate said mark with qualities such as success, quality, fame, reliability, and so forth, because said mark will call to mind the JOMA mark.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

In order to better define the risk referred to in Article 8(5) EUTMR, it should be pointed out that the primary function of a mark is unquestionably that of an ‘indication of origin’. The fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as luxury, lifestyle, exclusivity, adventure and youth. To that effect, the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages in question which are conveyed, inter alia, by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor (22/03/07, T-215/03, VIPS, paragraph 35).

According to the opponent, there is a risk that consumers make a mental association between the ‘JOPA’ mark applied for and the well-known ‘JOMA’ mark which would place the applicant in an advantageous position when entering the marketplace since consumers would transfer the qualities of ‘JOMA’ to ‘JOPA’.

The Opposition Division considers that when consumers are faced to goods having a connection with the goods of the opponent’s for which reputation has been proven, there is indeed a risk that they make such a mental association, especially taking into consideration the reputation acquired by the earlier mark along the years in this area, that the signs coincide in three out of four letters, all of them placed in the same position, that there is no additional element in the contested sign that could detract the attention away from the verbal element ‘JOPA’ and that the goods applied for could well result from a natural brand extension.

Therefore and as already mentioned, taking into account the reputation of the previous trademark, the use without due cause of the sign applied for the contested goods and services would allow the applicant, by using a so similar sign, to take advantage of the attractiveness of the earlier mark and its advertising value. This will lead to unacceptable situations of commercial parasitism, in which the applicant would take profit from the investment made by the opponent in the creation and promotion of his earlier trade mark.

Therefore, the Opposition Division considers that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark with regard to part of the contested goods and services.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. insofar as it is directed against the following goods and services:

Class 9: Gloves for protection against accidents; Head protection and Head protection; Motocross googles; Motorcycle goggles.

Class 12: Panniers for motorcycles; Saddle covers for bicycles or motorcycles; Covers for motor vehicles; Stands for motorcycles.

Class 25: Footwear, gloves and headgear solely for motorcycles, racing motorcycles and motor racing.

Class 28: Knee guards, elbow guards and neck protectors for motorcyclists.

The opposition is not successful under Article 8(5) as far as the services in Class 35 are concerned.

The opponent has also based its opposition under Article 8(5) EUTMR on earlier European Union trade mark registration No 3 388 923 ‘JOMA’.

The evidence regarding this earlier trade mark is the same as the one already listed above and is equally valid in relation to earlier European Union trade mark registration No 3 388 923 ‘JOMA’ since Spain is a Member State and that it is sufficient if reputation exists in a substantial part of the territory. Therefore, the outcome cannot be different with respect to the services in Class 35 for which the opposition has already been rejected under Article 8(5) EUTMR.

The examination of the present opposition will therefore continue for the remaining contested services on the grounds of Article 8(1)(b) EUTMR, also invoked by the opponent.

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.

The opposition is based on more than one earlier trade mark. For reasons of procedural economy the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark No 2 241 817 ‘JOMA’.

a) The services

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

Class 35: Retail store services relating to clothing, footwear and sporting goods.

The remaining contested services are the following:

Class 35: Retailing and wholesaling of helmets, spectacles, parts and spare parts for motorcycles; mediation in the purchase and sale of helmets, spectacles, parts and spare parts for motorcycles, lubricants and electronics.

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 retailing of helmets, spectacles, parts and spare parts for motorcycles are considered similar to the opponent’s retail services related to clothing, footwear and sporting goods. The services at issue have the same nature since they all revolve around the actual sale of goods, they share the same purpose of allowing consumers to conveniently satisfy different shopping needs and the same method of use. Furthermore, since some motorcycles spare parts and motorcycles clothing are also sometimes sold through the same points of sales, they can coincide in relevant public and distribution channels in which case they must be considered highly similar.

The contested wholesaling of helmets, spectacles, parts and spare parts for motorcycles is the selling of goods to other undertakings (retailers) which then sell the goods to end consumers. These services are similar to the opponent’s retail services related to clothing, footwear and sporting goods. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. Furthermore, depending on whether the goods in question are commonly retailed in the same outlets, they may coincide in relevant public and distribution channels, in which case they must be considered highly similar.

However, the contested mediation in the purchase and sale of helmets, spectacles, parts and spare parts for motorcycles, lubricants and electronics is a negotiation process that is provided by specialized companies and that is not addressed to the end consumers as opposed to the retail services of goods. Therefore, these services are dissimilar to the opponent’s retail services relating to clothing, footwear and sporting goods since they have a different nature, purpose and method of use. They are neither complementary or in competition with each other. Furthermore, they are not provided through the same undertakings and they are addressed to a different public.

b) Relevant public — degree of attention

The average consumer of the category of goods and services 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, services found to be similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise whose degree of attentiveness is likely to vary from average to high depending on the price or terms and conditions of the services purchased.

c) The signs

The comparison of the signs was undertaken above under section a) concerning Article 8(5). Since the present assessment under Article 8(1)(b) EUTMR is carried out in relation to an earlier trade mark also registered in Spain, all the findings made above under section a) concerning Article 8(5) shall apply accordingly as Spain was also the relevant territory in the previous examination above.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The signs are visually and aurally similar to a degree that is above average and the conceptual aspect does not influence the assessment of the similarity of the signs. The services are partly similar to varying degrees and partly dissimilar. The degree of attention of the public runs from average to high and the earlier mark has a degree of distinctiveness that is average.

The only difference between the signs is not able to counteract the remaining similarities between them. 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark No 2 241 817.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to varying degrees.

The rest of the contested services are dissimilar. As 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

(1) Spanish trade mark No 1 909 774

Class 28: Games and playthings; dolls; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

(2) Spanish trade mark No 1 999 946

Class 12: Vehicles; apparatus for locomotion by land, air or water; motors and engines for land vehicles.

(3) Spanish trade mark No 1 999 952

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines and data processing equipment; fire-extinguishing apparatus.

(4) Spanish trade mark No 1 909 773

Class 25: Ladies', men's, and children's manufactured clothing and footwear (non-orthopedic), headgear.

(5) European Union trade mark No 3 388 923

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

The contested mediation in the purchase and sale of helmets, spectacles, parts and spare parts for motorcycles, lubricants and electronics found to be dissimilar are also dissimilar to the goods covered by earlier trade marks (1) to (5). Indeed, these goods and services are different in nature since goods are tangible while services are intangible. They serve different purposes and have different methods of use. They are neither complementary nor in competition with each other. Furthermore, they are not provided through the same undertakings and are addressed to a different public.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent in relation to earlier trade mark (1), (2) and (3).

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark (5) in relation to dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Benoit VLEMINCQ

Sandra IBAÑEZ

Justyna GBYL

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.