OPPOSITION No B 2 822 388

Quebra-Onda-Sociedade de Exportação e Importação de Artigos Desportivos, Lda., Rua do Comendador Manuel Gonçalves, n.° 25, 4770-583 São Cosme Vale, Portugal (opponent), represented by Pedro Gil Da Silva Pelayo de Sousa Henriques and Rui Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 -6°.Dt°., 4000-432 Porto, Portugal (professional representative)

a g a i n s t

Premium Design Group AG, Seestattstrasse 18, 8852 Altendorf, Switzerland (applicant), represented by Patrade A/S, Ceresbyen 75, 8000 Aarhus C, Denmark (professional representative).

On 16/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 822 388 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 809 701 for the figurative mark , namely against all the goods and services in Classes 18, 25 and 35.

The opposition is based on the following earlier marks:



• Portuguese trade mark registrations No 243 237 and No 343 970 for the word mark ‘LIGHTNING BOLT’;

• Portuguese trade mark registration No 348 147 for the word mark ‘BOLT’;

• Portuguese trade mark registration No 243 238 for the figurative mark

;

• Portuguese trade mark registration No 344 080 for the figurative mark ;

• European Union trade mark registration No 4 767 208 for the figurative mark

;

• Portuguese trade mark registration No 344 196 for the figurative mark .

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. Opposition based on earlier Portuguese trade mark registrations No 243 237, No 343 970 and No 348 147

1. The signs

1. Portuguese trade mark registrations No 243 237 and No 343 970 LIGHTNING BOLT 2. Portuguese trade mark registration No 348 147 BOLT
Earlier trade marks	Contested sign

The relevant territory is Portugal.

The earlier marks are word marks. The contested sign is a figurative mark composed of the letters ‘SJ’ and ‘OS’ separated by a black lightning bolt.

Neither the elements ‘LIGHTNING’ and ‘BOLT’ of the earlier marks nor the element ‘SJ*OS’ of the contested sign have a meaning for the relevant public and they are all therefore distinctive.

The device in the form of a lightning bolt in the contested sign will be perceived as such by the relevant public. In the absence of any immediate link between a lightning bolt and the relevant goods and services in Classes 18, 25 and 35, the depiction of a lightning bolt is distinctive for those goods and services.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the letter ‘O’ but differ in all of their other elements. The coincidence in one letter is not particularly significant for the relevant public, because this letter does not play an independent distinctive role in the overall impressions created by the marks; instead, it is a part of the words. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually and aurally similar.

Conceptually, the contested sign will be perceived as conveying the concept of a ‘lightning bolt’ by the relevant public. The earlier marks are composed of English words that lack any meaning in Portugal. Since the earlier marks will not be associated with any meaning, the signs are not conceptually similar.

Considering the absence of any commonalities between the signs, it is concluded that they are dissimilar.

2. Conclusion

Article 8(1)(b) EUTMR states that ‘the trade mark applied for shall not be registered: if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’ (emphasis added).

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 clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled and the opposition must be rejected insofar as it is based on earlier Portuguese trade mark registrations No 243 237, No 343 970 and No 348 147.

The Opposition Division will now proceed with the examination of the opposition in relation to earlier Portuguese trade mark registrations No 243 238, No 344 080 and No 344 196 and European Union trade mark registration No 4 767 208.

2. Opposition based on earlier Portuguese trade mark registrations No 243 238, No 344 080 and No 344 196 and European Union trade mark registration No 4 767 208

1. The goods and services

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

Portuguese trade mark registration No 243 238

Class 25: Clothing, footwear, headgear.

Portuguese trade mark registration No 344 080

Class 14: Watches and watch bands.

Class 18: Handbags; beach bags; rucksacks; travelling bags; garment bags (for travel); document holders; purses not of precious metal; purses; pocket (wallets); briefcases; student bags; valises; rucksacks and leatherwear and imitation leather not included in other classes.

Class 24: Individual towels of textile; towels of textile; bath linen (except clothing); beach towels; face towels of textile and articles of textile not included in other classes.

Class 25: Clothing, in particular for sports; footwear, in particular for sports; headgear, in particular for sports.

Portuguese trade mark registration No 344 196

Class 14: Watches and watch bands.

Class 18: Handbags; beach bags; rucksacks; travelling bags; garment bags (for travel); document holders; purses not of precious metal; purses; pocket (wallets); briefcases; student bags; valises; rucksacks and leatherwear and imitation leather not included in other classes.

Class 24: Individual towels of textile; towels of textile; bath linen (except clothing); beach towels; face towels of textile and articles of textile not included in other classes.

Class 25: Clothing, in particular for sports; footwear, in particular for sports; headgear, in particular for sports.

European Union trade mark registration No 4 767 208

Class 9: Spectacles (optics); Sunglasses; Swimming jackets; Life jackets; Marking buoys; Life buoys; Signalling buoys; Diving suits; Gloves for divers; Divers’ masks; Earplugs for divers; Protective helmets.

Class 14: Watches and watch straps.

Class 18: Suitcases; Travelling bags; Garment bags for travel.

Class 24: Textile place mats; Towels of textile; Bath linen (except clothing); Beach towels; Face towels of textile and Textile goods not included in other classes.

The contested goods and services are the following:

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas; canvas bags; clutch-bags; cases of imitation leather; business card cases; handbags, purses and wallets; gentlemen’s handbags; bags; toiletry bags.

Class 25: Clothing, footwear, headgear.

Class 35: Retailing, wholesaling and online sale of clothing, footwear, headgear; Retailing, wholesaling and online sale of leather and imitations of leather, animal skins, hides, trunks and travelling bags, umbrellas, canvas bags, clutch-bags, cases of imitation leather, business card cases, handbags, purses and wallets, gentlemen’s handbags, bags, toiletry bags.

Some of the contested goods and services are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of their purchase and their price.

3. The signs

Portuguese trade mark registration No 243 238 Portuguese trade mark registration No 344 080 European Union trade mark registration No 4 767 208 Portuguese trade mark registration No 344 196
Earlier trade marks	Contested sign

The relevant territories are Portugal (earlier marks 1, 2 and 4) and the European Union (earlier mark 3).

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).

Earlier mark 1 is a figurative mark composed of the words ‘Lightning Bolt’ in a highly stylised handwriting-style typeface in white with a black outline. The letter ‘o’ contains a black lightning bolt and all the elements are set within a white rectangle outlined in black. Earlier marks 2 and 3 are figurative marks composed of the words ‘Lightning Bolt’ in a highly stylised calligraphic typeface in black with a grey shadow. The letter ‘o’ contains a grey or black lightning bolt. Earlier mark 2 is depicted against a light-grey rectangular background. Earlier mark 4 is a purely figurative mark composed of a grey lightning bolt.

The device in the form of a lightning bolt in the earlier marks will be perceived as such by the relevant public. In the absence of any immediate link between a lightning bolt and the relevant goods, the depiction of a lightning bolt is distinctive to an average degree for those goods.

The verbal element ‘LIGHTNING BOLT’ will be understood as ‘a discharge of lightning’ by the English-speaking part of the public in relation to earlier mark 3 and will not be understood by the Portuguese-speaking part of the public in relation to earlier marks 1 and 2. In any case, this element is distinctive for the relevant goods.

Earlier marks 1 and 2 are composed of a distinctive verbal element, ‘LIGHTNING BOLT’, combined with the depiction of a lightning bolt, and a less distinctive figurative element of a purely decorative nature, namely a frame in earlier mark 1 and a grey rectangular background in earlier mark 2. Therefore, the verbal elements, including the lightning bolt, are more distinctive than these figurative elements.

The words ‘Lightning Bolt’ in earlier marks 1, 2 and 3 are the dominant elements, because they are larger than the device depicting a lightning bolt and they are the most eye-catching.

The contested sign has no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, earlier marks 1, 2 and 3 and the contested mark coincide in the depiction of a lightning bolt and in the letter ‘O’. However, they have some differences. In the earlier marks, the lightning bolt is long and it extends through a letter, namely the letter ‘o’, which is lower case and almost circular. In the contested sign, the lightning bolt is short and is an independent element in the middle of the sign’s four letters and the letter ‘O’ is upper case and oval. The signs differ in all of their other elements, namely the letters ‘LIGHTNING B*LT’ of the earlier marks, the frame of earlier mark 1 and the background of earlier mark 2, and the letters ‘SJ*S’ of the contested mark.

Earlier mark 4 and the contested mark coincide in the depiction of the lightning bolt and differ in the additional letters ‘SJ*OS’ of the contested sign. The marks also differ in their size and structure. Earlier mark 4 is made up of a single figurative element, while the contested sign is composed of a lightning bolt in the middle of four letters.

Therefore, the signs are visually similar to a low degree.

Aurally, the sole commonality between earlier marks 1, 2 and 3 and the contested mark, namely in the sound of the letter ‘O’, cannot lead to the conclusion that there is any aural similarity between the signs, since the signs as a whole have different sounds, lengths, rhythms and intonations.

Purely figurative marks are not subject to a phonetic assessment. As earlier mark 4 is purely figurative, it is not possible to compare it aurally with the contested sign.

Conceptually, the earlier marks are similar to the contested mark to the extent they all contain the distinctive concept of a lightning bolt. Furthermore, the verbal element ‘Lightning Bolt’ of earlier marks 1, 2 and 3 will not convey any meaning for the Portuguese-speaking public (as regards earlier marks 1 and 2) or for the non-English-speaking part of the public in the European Union (as regards earlier mark 3) and, for the English-speaking part of the public, this element in earlier mark 3 will convey no additional meaning, as it simply reinforces the concept of the figurative element.

As the signs will be associated with similar meanings, the signs are conceptually similar to an average degree.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The conflicting goods and services have been assumed to be identical. The relevant public is the public at large and a professional public; the degree of attention will vary from average to high. The earlier marks have an inherently normal degree of distinctiveness.

The signs are visually similar to a low degree. Aurally, earlier marks 1, 2 and 3 and the contested sign are not similar and earlier mark 4 cannot be compared with the contested sign. Conceptually, the signs are similar to an average degree.

Some of the goods, which are assumed to be identical, are clothing, footwear and headgear. Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs, which are caused by their specific graphical depictions and the additional verbal elements present in some of them, are particularly relevant when assessing the likelihood of confusion between them.

The differences between earlier marks 1, 2 and 3 and the contested sign are striking. The figurative element of the lightning bolt constitutes a rather small part of each of the earlier marks, which are long and complex fanciful signs. The verbal elements of the earlier marks are dominant and diminish the perceptibility of the figurative depiction of the lightning bolt, which extends from the letter ‘o’. Even the depiction of the lightning bolt per se differs between the earlier marks and the contested sign.

As regards earlier mark 4, the Court has stated that a complex mark and another mark which is identical or similar to one of the components of the complex mark can be considered to be similar only if that component forms the dominant element within the overall impression created by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 33; 13/04/2005, T‑286/03, Right Guard Xtreme Sport, EU:T:2005:126, § 60, 73-74; and 07/07/2005, T‑385/03, Biker Miles, EU:T:2005:276, § 39).

As the contested sign has no element that could be considered so much more eye-catching or more distinctive than the other elements of the sign that it would overshadow the other elements and result in them being considered negligible, the assessment of similarity between earlier mark 4 and the contested sign cannot be limited to the comparison of only one element of the contested, compound, mark, namely the lightning bolt, with the earlier, purely figurative, mark. Therefore, the contested, compound, mark must be assessed globally, taking into account all of its various elements, namely both the figurative and the verbal elements.

The similarities between the signs are limited to the fact that they all contain the depiction of a lightning bolt. However, the differing verbal elements are clearly perceptible and are considered sufficient to outweigh the similarities, enabling the relevant public, even the part with an average degree of attention, to safely distinguish between the signs. For these reasons, it is also unlikely that the relevant consumer will perceive the contested mark as a sub-brand, a variation, of the earlier marks.

Finally, as regards figurative signs, the Court has stated that ‘it is not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public. However, where the earlier mark is not especially well known to the public and consists of an image with little imaginative content, the mere fact that the two marks are conceptually similar is not sufficient to give rise to a likelihood of confusion. The mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusion’ (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24, 25, 26).

Therefore, the mere conceptual association between two figurative elements is not enough to find a likelihood of confusion. The signs must have visual similarities. In this case, the signs have substantial visual differences, and having in common the concept of a lightning bolt is not sufficient to cause the public to be confused.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 (formerly 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

Chantal VAN RIEL

Richard BIANCHI

Eva Inés PÉREZ SANTONJA

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.