OPPOSITION No B 2 692 609

Sandi Ljutić, Pobeška cesta 19, 6000 Koper, SIovenia (opponent), represented by Odvetniška Pisarna Drnovšek D.O.O., Miklošičeva 8, 1000 Ljubljana, SIovenia (professional representative)

a g a i n s t

Surf Technicians Llc, 5825 Avenida Encinas, Suite 104, 92008 Carlsbad, California, United States of America (applicant), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray's Inn Road, WC1X 8BT London, United Kingdom (professional representative).

On 27/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 692 609 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. 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 in Classes 25 and 28 of European Union trade mark application No 14 987 821 . The opposition is based Classes 12, 22, 25, and 28 of the European Union trade mark registration No 6 394 845 . 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.

1. The signs

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 figurative.

The earlier mark contains two black curved shapes with one curved thick edge and two thin sharp edges. The shapes are placed vertically and their larger edges form nearly straight horizontal lines. The shapes are not interlocked. It cannot be excluded, that the mark is perceived as depicting a letter ‘S’ by part of the public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The contested sign contains two black curved shapes, with one angular thicker edge and two sharp edges. The shapes are placed in a tilted manner, nearly interlocked in the middle. Their larger edges are triangular shaped. The elements in the mark have no meaning for the relevant public and are, therefore, distinctive.

The marks have no dominant element.

Visually, as the signs only coincide to the extent that curved elements are involved in both, none of which coincide in any aspect, it is concluded that the signs are not visually similar.

Aurally, the purely figurative signs are not subject to a phonetic assessment. Although it cannot be excluded, that part of the public might perceive the earlier sign as representing a highly stylised letter ‘S’, the contested sign is being purely figurative, and therefore it is not possible to compare them aurally.

Conceptually, neither of the signs has a meaning as such for part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

It cannot be excluded, however, that a part of the public might perceive the earlier sign as representing a highly stylised letter ‘S, while the other sign lacks any meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar to the part of the public that will perceived the earlier sign as being a representation of the letter ‘S’.

The signs only coincide to the extent that they both contain curved and twisting elements of design. The marks, taken as wholes, hit the eye entirely differently and they are not visually similar. From the aural and conceptual point of view there is no similarity either. It is therefore concluded that the signs are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

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.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

José Antonio GARRIDO OTAOLA

Erkki Münter

Marine DARTEYRE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.