OPPOSITION No B 2 787 839

Clubul Sportival Armatei "Steaua Bucarești" (Military Unit 02301 Bucharest), B-dul Ghencea no. 35, sector 6, Bucharest, Romania (opponent)

a g a I n s t

Strachinescu Marian, 137 Theodor D. Sperantia street bl. 84 1st entry 4th floor suite  17 sector 3, 7700 Bucharest, Romania (applicant), represented by Crina Frisch, 54 Carol I Boulevard B entry 3rd floor suite 5, 020915 Bucharest, Romania (professional representative).

On 30/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 787 839 is upheld for all the contested goods and services.

2. European Union trade mark application No 15 296 411 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 15 296 411 for the figurative mark ‘ ’. The opposition is based on, inter alia, Romanian trade mark registration No 130 904 for the figurative mark ‘ ’. The opponent invoked Article 8(1)(b) and Article 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Romanian trade mark registration No 130 904.

1. The goods and services

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

Class 6: Common metals and their alloys; metal construction materials; movable metal constructions; metal materials for railways; metal wiring and rods (except electrical); ironware and metal hardware; metal tubes; safe deposit boxes; metal products not provided in other classes; ores.

Class 16: Paper, cardboard and products made of the same, not provided in other classes; printing products; items for bindery; photographs; stationery; adhesives (gluing substances) for stationery or housekeeping; materials for artists; paint brushes; typewriters and office items (except for items of furniture); training or educational materials (except for devices); plastic materials for packaging (not provided in other classes); play cards; printed characters; clichés.

Class 25: Clothing; shoes; head coverings.

Class 28: Games; toys; gym and sports items not provided in other classes; Christmas tree decorations.

Class 38: Telecommunications.

Class 41: Education; training; fun; sports and cultural activities.

The contested goods and services are the following:

Class 6: Signboards, key rings and trophies of common metal and, in general, common metals, unwrought or semi-unwrought, and their alloys; chains (except transmission chains for land vehicles) and goods of non- precious metal not included in other classes.

Class 16: Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.

Class 25: Ready-made clothing, footwear.

Class 28: Games and playthings; gymnastic and sporting articles (except clothing); sport gloves; hunting and fishing articles; ornaments and decorations for Christmas trees; playing cards

Class 38: Communications and, in particular, telegraph, telephone, radio, telex and television communication services; radio and/or television broadcasting; data transmission.

Class 41: Education and entertainment.

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

The term ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The Opposition Division notes that the translation of some of the goods and services of the trade mark on which the opposition is based is not completely correct. In particular, as regards the services in Class 41, it is clear that the services divertisment, as they do appear in the original list in Romanian, and which have been translated into English as fun, clearly correspond to the English entertainment. The Opposition Division will proceed on this basis.

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.

Contested goods in Class 6

Common metals, unwrought or semi-unwrought, and their alloys; goods of non- precious metal not included in other classes are identically contained in both lists of goods (including synonyms).

The contested chains (except transmission chains for land vehicles) are included in the broad category of the earlier ironware and metal hardware. Therefore, they are identical.

The contested signboards, key rings and trophies of common metal and the opponent’s metal products not provided in other classes coincide in their nature. Their purpose, in the broadest sense, may also be the same. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

Contested goods in Class 16

Instructional and teaching material (except apparatus); paper; cardboard; typewriters and office requisites (except furniture); photographs; adhesives for stationery or household purposes; artists materials; plastic materials for packaging (not included in other classes); paint brushes; stationery are identically contained in both lists of goods (including synonyms).

The contested goods bookbinding material are included in the broad category of the earlier items for bindery. Therefore, they are identical.

The contested printed matter overlap with the earlier training or educational materials (except for devices). Consequently, they are identical.

The contested printers' type; printing blocks are included in the broad category of the earlier printing products. Therefore, they are identical.

Contested goods in Class 25

The contested footwear includes, as a broader category the earlier shoes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested ready-made clothing are included in the broad category of the earlier clothing. Therefore, they are identical.

Contested goods in Class 28

Games; playthings; gymnastic and sporting articles (except clothing) are identically contained in both lists of goods (including synonyms).

The contested playing cards are included in the broad category of the opponent’s games. Therefore, they are identical.

The contested sport gloves; hunting articles; fishing articles are included in the broad category of the earlier gym and sports items not provided in other classes. Therefore, they are identical.

Ornaments and decorations for Christmas trees are identically contained in both lists of goods (including synonyms).

Contested services in Class 38

The contested communications and, in particular, telegraph, telephone, radio, telex and television communication services; radio and/or television broadcasting; data transmission are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 41

Education and entertainment are identically contained in both lists of services (including synonyms).

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 and services found to be identical or similar to a low degree are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The degree of attention is expected to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Romania.

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).

The earlier mark is a figurative mark consisting of a shield with rounded shape and a white and blue outline the upper part of which contains, on a light blue background, the words ‘STEAUA BUCURESTI’ one above the other depicted in white capital letters, being the first and the last letter of the word ‘STEAUA’ slightly larger and the letters of the word ‘BUCURESTI’ slightly smaller than the others. In the inferior part of the shield, which is crossed by five vertical stripes, being alternatively red and blue, the depiction of a stylized yellow star lies. Also, two stylized yellow stars are placed above the shield.

The contested sign is also figurative. It consists of a shield with a more regular shape and a blue outline, also crossed by five vertical stripes, although in this case of darker red and blue colour. The upper part, which contains a yellow internal line partly following the perimeter of the shield, is also blue but instead of being divided by a clear line, its colour shades downwards. On the upper part of the shield the word ‘STEAUA’ lies, depicted using light grey capital letters. Under this verbal element, and also under a horizontal line, the two words ‘NOUA GENERATIE’ are placed, in smaller light capital letters. Below these elements, one can find the depiction of four stylized grey stars jointed by a circular line. Also, in the inferior part of the shield, the numbers ‘2015’ are depicted in quite small size. This latter element can be considered negligible. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. The numbers ‘2015’ are barely perceptible. As these are likely to be disregarded by the relevant public, they will not be taken into consideration. Finally, the contested sign also displays two stylized yellow stars on the right above the two superior corners of the shield.

As regards their semantic content, the signs both displays the word ‘STEAUA’, which in Romanian means ‘star’ and the depiction of stars. These elements do not make reference to any of the goods and services. Therefore, they are distinctive.

However, as regards the word ‘BUCURESTI’ of the earlier mark, it must be noted that it corresponds to the Romanian name of the city of Bucharest. Since this element can be seen as the place of origin of the goods and services, it is deemed to be non-distinctive for all the goods and services.

As concerns the expression ‘NOUA GENERATIE’ of the contested sign, it will be understood by the Romanian consumers as the equivalent of the English expression ‘new generation’. As this expression possesses an evident laudatory meaning (the goods and services are of a new kind or type), this whole element is weak for all the goods and services.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The element ‘STEAUA’ and the depiction of the joined stars in the contested sign are co-dominant elements as they are the most eye-catching by virtue of their size and position with respect of the elements ‘NOUA GENERATIE’ and the negligible element ‘2015’.

Also, account must be taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the distinctive word ‘STEAUA’ and in their overall figurative structure, consisting of a shield crossed by red and blue vertical line characterized by the presence of stars, both within it and above it. However, they differ in some details of their graphic representation, such as the shape of the shields, the outline, the shape of the stars, the shade of the red and blue colours. Also, they differ in their additional verbal elements, although account must be taken of the fact that one is non-distinctive, namely the word ‘BUCURESTI’, and the others are together weak, namely the words ‘NOUA GENERATIE’ of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters of the distinctive word ‛STEAUA’, present identically in both signs- The pronunciation differs in in the sound of the letters of the weak and non-distinctive elements of the signs, respectively ’ NOUA GENERATIE’ and ‘BUCURESTI’.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning as regards the word ‘STEAUA’, the depiction of stars and the presence of a shield, the signs are conceptually highly similar, also considering that the remaining elements which constitute a conceptual difference between the signs are weak or non-distinctive.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. 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’).

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 and 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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services in Classes 6, 16, 25, 28, 38 and 41 covered by the trade marks in dispute have been found partly identical and partly similar to a low degree. They are directed at the public at large and also at business customers with specific professional knowledge or expertise. The degree of attention is expected to be average.

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).

Also, 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).

The signs display both an aural and conceptual high degree of similarity and an average degree of visual similarity. This is due to the presence of some common element, namely the word ‘STEAUA’, the depiction of stars placed almost in the same position and an overall highly similar depiction of a shield.

If account is taken of the fact that what differentiate the signs are mainly the details of their graphic representation and elements which are non-distinctive or weak, it is clear that that likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in both signs.

It is not difficult to imagine that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49) or possibly even as a simple modernization or a new stylization of the same mark, in particular considering the presence of the expression ‘NOUA GENERATIE’, which correspond to the English ‘new generation’.

Considering all the above, there is a likelihood of confusion on the part of the public. This is valid also for the goods in Class 6 that have been found only similar to a low degree considering the aforementioned interdependence principle and the finding of aural and conceptual high degree of similarity between the signs.

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 130 904. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Romanian trade mark registration No 130 904 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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(5) EUTMR.

For the sake of completeness, it must be addressed the argument submitted by the applicant in his observations of 07/11/2017 concerning the lack of admissibility of the opposition. The applicant claims that the opponent did not properly indicate the ground on which the opposition is based.

The Opposition Division notes that according to Rule 15(2)(c) EUTMIR (in the version in force at the time of filing of the opposition), the notice of opposition must contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4) and (5) EUTMR are fulfilled.

In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is checked or if they are indicated in any of its annexes or supporting documents. The grounds are also considered to be properly indicated if the earlier marks are identified and it is possible to unequivocally identify the grounds and the opposition as based on Article 8(1) EUTMR.

According to Rule 17(2) EUTMIR (in the version in force at the time of filing of the opposition), if the notice of opposition does not contain grounds for opposition in accordance with Rule 15(2)(c) EUTMIR (in the version in force at the time of filing of the opposition), and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

In the present case, the Opposition Division finds that the grounds are to be considered as properly indicated, since they can be inferred from the opponent’s arguments filed within the opposition period.

Contrarily to what has been claimed by the applicant in this regard, the opponent clearly indicates in its observations of 06/10/2016, filed together with the opposition, the grounds on which the opposition is based, namely Article 8(1) EUTMR and Article 8(5) EUTMR, also partially quoting their texts.

In view of all the above, the applicant’s claim must be dismissed as unfounded.

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, he 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Francesca CANGERI SERRANO

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

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.