OPPOSITION No B 2 851 106

Nike Innovate C.V., One Bowerman Drive, 97005-6453 Beaverton, United States of America (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, CB24 9ZR Cambridge, United Kingdom (professional representative)

a g a i n s t

Ze Xiao Xu, Calle Azor 58, 28230 Las Rozas de Madrid, Spain (applicant).

On 13/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 851 106 is rejected in its entirety.

2. The opponent bears the 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 of European Union trade mark application No 16 026 701 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 4 288 486 for the figurative mark . The opponent invoked Article 8(1)(b) and (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 European Union trade mark registration No 4 288 486, since it differs less than the remaining earlier rights and/or covers a broader scope of relevant goods.

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).

The distinctiveness of the marks’ elements will be assessed in relation to the goods in Classes 9, 14, 18, 25 and 28, in relation to which the opposition is based, and the contested goods in Classes 14, 18 and 25.

The earlier mark is a purely figurative sign consisting of a single stroke with a long section descending and broadening at a slight oblique angle and terminating upwards to the right in the form of a curved ‘tick’ that gradually gets thinner. The curved part points downwards and both ends of the stroke taper to a long sharp point. The sign either has no meaning for the relevant public or it will be associated with a stylised tick with no particular meaning in relation to the relevant goods. Therefore, it is distinctive.

The contested sign, in contrast, is made up of the words ‘SWING SENSE’, in slightly stylised bold italic lettering. These verbal elements as a whole will be understood by the English-speaking part of the public as describing a feeling when moving, or the ability to move, without interruption backwards and forwards or from one side to the other, especially from a fixed point. For at least part of the non-English-speaking public, the English term, ‘swing’ will be associated with a kind of rhythm, dance, music, or a movement in, for example golf, tennis, cricket or boxing, while the term ‘sense’ is very similar to equivalent words in, for example, French (‘sense’), Italian (‘senso’) or Rumanian (‘sens’) and may, therefore, be understood as ‘the faculty by which the body perceives an external stimulus; one of the faculties of sight, smell, hearing, taste, and touch’. Above the verbal elements ‘SWING SENSE’ there is a figurative element consisting of a stick with a curved part pointing upwards and a black circle on top. The inner arch of the curved part contains a white stripe with a black edge, giving the appearance of a 3D depiction. The figure gradually gets thinner at both ends with a rounded form. The figurative element as a whole is reminiscent of a person jumping or diving diagonally upwards, with the arms behind the body and straight legs and it will be perceived as such at least by part of the public. Since the various components of the contested sign have no meaning related to the goods at hand (if they have any meaning at all), they are distinctive.

The contested sign has no element that could be considered clearly more dominant (visually eye-catching) than other elements. The opponent claims that the swoosh-like element of the contested sign is the dominant element because the verbal elements are dwarfed by the figurative ones. However, the Opposition Division is of the opinion that the contested sign has no element which is particularly eye-catching due to its size or position and, therefore, the opponent’s argument should be dismissed.

In comparing the conflicting marks visually, the contested sign looks markedly more complex than the earlier mark which appears as a single ‘tick’.

The Opposition Division notes that according to well established case-law, consumers tend to perceive a sign as a whole, and would not dissect it in its component parts. As a result, signs must be compared as a whole, taking into account in particular their more distinctive and dominant elements (if any) and not by dissecting them and comparing their individual components. In the present case, it cannot be seriously disputed that the contested mark has no dominant element. Therefore, in the absence of any particular reason to the contrary, consumers will tend to perceive it as a whole and would not split it into its component parts. Furthermore, the opponent has not given any conclusive argument to support its contention that, contrary to the general principle according to which the marks should be compared as a whole, in this case the relevant consumers would break down the contested mark into individual components.

In this regard, even though the ‘body’ of the figurative element of the contested sign may have a similar outline as the only element of the earlier mark, it will be perceived overall as different by the relevant public. In particular, their different position and structure, mainly the fact that the figurative element in the contested sign is positioned diagonally upwards and contains a circle on top and a 3D layout, will create a different overall perception on the consumer. In addition, the contested sign contains the verbal element ‘SWING SENSE’ that cannot be overlooked visually.

Indeed, 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).

Even regarding the part of the goods in relation to which 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), in particular apparel articles, as pointed out by the opponent, the considerable visual differences between the signs explained before are particularly relevant.

In order to support the claim of visual similarity, the opponent argues that it sometimes uses the swoosh design in a different orientation and consumers will be used to recognising the element no matter how it is orientated. It must be borne in mind, however, that the comparison must be made between the signs as they were registered or as they appear in the application for registration (09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, §38). The actual or intended use of the sigs is not relevant for the examination. Consequently, the opponent’s claim must be set aside.

In the present case, it is also pivotal to consider that when comparing signs in conflict in terms of their figurative elements, they should be viewed as images and if they match in one, separately recognisable element or have the same or a similar contour, it is likely that some visual similarity will be found. In the case at hand, the marks do not match and they have a different contour as well. It also has to be considered that marks are not examined side by side and the mere fact that both signs include a curved stroke or stick is not indicative of similarity.

It is also important to point out that market reality shows that there are a multitude of decors and banal figurative elements such as striped lines, wings, arches, etc. on this type of goods, especially on sport shoes (see decision of 28/11/2013, R 1208/2012-2, DEVICE OF TWO PARALLEL STRIPES (other type of mark) / DEVICE OF THREE PARALLEL STRIPES (figurative mark), § 65). It is common practice for manufacturers of sports and leisure footwear to mark their goods with such patterns on the outside of the product for enhanced visibility from a distance. The average consumer is, therefore, aware that there is a large diversity of designs used as decoration or reinforcements of footwear. The relevant public, which is often brand conscious in respect of such goods is, therefore, used to differentiating between such signs on account of graphical differences. The mere fact that both signs, on an abstract level, contain a similar shape, is insufficient for the relevant public to confuse the signs or to attribute them to the same or economically linked undertakings.

As the signs only coincide in an irrelevant aspect, namely the similar shape in the contested sign, which is visually not perceptible as a separate element but diluted in the complex sign and differently positioned, the overall impression generated by the signs is sufficiently distinct and on the whole, bearing in mind the above, it is concluded that the signs are not visually similar.

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally, as correctly stated by the opponent.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning, at least by part of the relevant public, the signs are conceptually not similar.

On the other hand, although at least part of the public in the relevant territory will perceive the meaning/s of the contested sign as explained above, the other sign has no meaning in that territory for any part of the public. Since, in this case, one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Finally, in the case that 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.

The opponent claims that there are conceptual similarities between the signs, since the earlier mark evokes a sense of speed or quick movement, a concept which is evoked also in the contested sign. Contrary to the opponent’s contention, even though the contested sign evokes a meaning somehow related to movement, the earlier mark has no meaning for the relevant public or will be associated with a tick, as explained before. The opponent has not provided any argument to support it claim regarding the concept of movement evoked by the earlier mark, and the Opposition Division cannot agree with this statement.

As the signs merely coincide in an irrelevant aspect, they 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.

This finding would still be valid even if the earlier trade mark was to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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

• European Union trade mark registration No 277 632 for the figurative mark , for goods in Classes 18, 25 and 28;

• European Union trade mark registration No 277 517 for the figurative mark , for goods and services in Classes 9, 14, 18, 25, 28 and 42;

• UK trade mark registration No 2 008 517 for the figurative mark , for goods in Class 25;

• UK trade mark registration No 1 363 284 for the figurative mark , for goods in Class 25;

• UK trade mark registration No 2 386 934 for the figurative mark , for goods in Classes 9 and 14;

• UK trade mark registration No 1 035 366 for the figurative mark , for goods in Class 25;

• UK trade mark registration No 1 021 357 for the figurative mark, for goods in Class 25;

• UK trade mark registration No 1 093 758 for the figurative mark , for goods in Class 18;

• UK trade mark registration No 1 101 896 for the figurative mark , for goods in Class 18; and

• UK trade mark registration No 2 318 472 for the figurative mark , for goods in Class 18.

Since these marks are identical or less similar to the one that has been compared and cover the same or a narrower scope of relevant goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent claims reputation in the UK and throughout the European Union, inter alia, in relation to earlier European Union trade mark registration No 4 288 486 for all the goods for which it was registered.

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. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen before, the signs are visually dissimilar, it is not possible to compare them aurally, and are not conceptually similar or the conceptual aspect does not influence the assessment of the similarity of the signs. Furthermore, they give a different overall impression.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

The same criteria applies in relation to the remaining earlier marks on which the opposition is based under Article 8(5) since, as stated in the section of ‘Likelihood of confusion’, they are identical or less similar to the one that has been compared and cover the same or a narrower scope of relevant goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected.

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

The Opposition Division

Lucinda CARNEY

Eva Inés PEREZ SANTONJA

Alexandra APOSTOLAKIS

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.