OPPOSITION No B 2 903 444

Sorel Corporation, 14375 NW Science Park Drive, Portland, Oregon 97229, United States of America (opponent), represented by Elzaburu S.L.P., Miguel Angel 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Tianjin Golden Mountain Trade Co. Ltd., 104 Road, Huang Zhuang Area, Wuqing Economic Zone, Tianjin, People’s Republic of China (applicant), represented by Colbert Innovation Toulouse, 2Ter Rue Gustave de Clausade BP 30, 81800 Rabastens, France (professional representative).

On 18/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 903 444 is upheld for all the contested goods.

2. European Union trade mark application No 16 341 901 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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 of European Union trade mark application No 16 341 901 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 4 756 458 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.

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 4 756 458.

1. The goods

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

Class 18: Leather and imitation of leather and article made in these materials; umbrellas, parasols, sport and leisure bags, travelling bags, back packs, tote bags, school bags, belt bags, hand bags, beach bags, suit cases, vanity case (empty), key cases, suit carriers, wallets, purses, brief-cases.

Class 25: Clothing, underwear, footwear, head wear, belts, gloves, scarves.

The contested goods are the following:

Class 25: Clothing; knitwear (clothing); hiking shoes; shoes; down jackets; headgear for wear; jackets (clothing); sports shoes; waterproof clothing; cyclists’ clothing.

Contested goods in Class 25

Clothing; headgear for wear are identically contained in both lists of goods (including synonyms).

The contested knitwear (clothing); down jackets; jackets (clothing); waterproof clothing; cyclists’ clothing are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested hiking shoes; shoes; sports shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

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 found to be identical are directed at the public at large.

The degree of attention is considered average.

3. 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the contested sign, ‘northern Sun’, are meaningful in countries where English is understood. The semantic content conveyed by these verbal elements means that the signs are conceptually similar to a certain extent. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a figurative mark depicting a polar bear on a darker semicircular background. The bear appears to be walking to the right against the setting or rising sun. These elements are on a black rectangular background.

The element depicting a polar bear on a semicircle resembling the sun does not refer to or evoke the goods in Class 25 or any of their characteristics and its distinctiveness is therefore normal. The black rectangle is a merely decorative background and consequently of limited distinctiveness.

The contested sign is a figurative mark composed of two verbal elements, ‘northern Sun’, in bold, slightly stylised letters and a figurative element depicting a polar bear walking to the right.

The verbal element ‘northern’ will be understood as ‘in or from the north part of an area’, and ‘Sun’ as ‘the star that provides light and heat for the earth and around which the earth moves’. As these meanings are not directly related to the relevant goods, the verbal elements ‘northern’ and ‘Sun’ are of average distinctiveness.

As in the case of the earlier mark, the device of the polar bear does not refer to or evoke the goods in Class 25 or any of their characteristics and its distinctiveness is, therefore, normal.

Neither the earlier mark nor the contested sign has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in very similar depictions of polar bears walking to the right, which are, moreover, distinctive elements in both signs. However, they differ in the distinctive verbal elements of the contested sign, ‘northern Sun’, and in the additional figurative elements of the earlier mark (the semicircle resembling the sun and the black rectangle). The rectangle has, nevertheless, a limited degree of distinctiveness.

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

Purely figurative signs are not subject to an aural assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, both marks depict similar polar bears in similar positions. The concept conveyed by the verbal element ‘Sun’ in the contested sign is also present in the earlier mark, as conveyed by its figurative element. Furthermore, the concept of ‘north’ does not introduce a conceptual difference between the signs because the public will naturally associate polar bears with the north because their natural habitat is the Arctic Circle in the north of the world.

Therefore, the signs are conceptually highly similar.

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.

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 goods in question from the perspective of the analysed public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered come from the same or economically linked undertakings.

The goods are identical. The degree of attention of the relevant public is average. The signs are visually similar to an average degree and conceptually highly similar, and an aural comparison is not possible in the present case. The earlier mark is, as a whole, inherently distinctive to an average degree, which affords it a normal scope of protection.

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).

Moreover, 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). Taking into account that the goods are identical, this principle is clearly applicable to the present case.

Another relevant factor is the prevalence, for the relevant goods, of the visual aspect of similarity over the aural aspect. 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). Consequently, visual similarity resulting from the very similar outlines of polar bears is particularly relevant when assessing the likelihood of confusion between the signs at issue.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 756 458. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 4 756 458 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

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, it 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.

The Opposition Division

Catherine MEDINA

Anna ZIOLKOWSKA

Begoña URIARTE VALIENTE

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.