OPPOSITION No B 2 898 685

Wind sportswear GmbH, Allerbeeksring 53-55, 21266 Jesteburg, Germany (opponent), represented by Hauck Patentanwaltspartnerschaft mbB, Kaiser-Wilhelm-Straße 79-87, 20355 Hamburg, Germany (professional representative)

a g a i n s t

Adrien Swink, rue des vignes 1, 78920 Ecquevilly, France, and Swink, Chemin des ancolies 27, 1292 Chambesy, Switzerland (applicants), represented by Blandine Poidevin, rue Esquermoise 104, 59000 Lille, France (professional representative).

On 28/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 898 685 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 of European Union trade mark application No 16 358 103 for the word mark ‘swink’. The opposition is based on, inter alia, European Union trade mark registrations No 7 332 455 and No 11 901 162 for the word mark ‘wind’. 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. For reasons that will become apparent from the circumstances set out below (see ‘Global assessment’) and bearing in mind the principle of procedural economy, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 7 332 455 and No 11 901 162.

1. The goods

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

1. European Union trade mark registration No 7 332 455

Class 25: T-shirts, sweatshirts, jumpers, shirts, polo-shirts, blouses.

2. European Union trade mark registration No 11 901 162

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols, and walking sticks; whips, harness and saddlery; briefcases; slings for carrying infants; beach bags; clothing for pets; alpenstocks; harness fittings; pocket wallets; bags for campers; chamois leather, other than for cleaning purposes; kid; attaché cases; boxes of leather or leather board; boxes of vulcanised fibre; net bags for shopping; shopping bags; casings, of leather, for springs; sleeves, of leather, for springs; coverings of skins [furs]; umbrella or parasol ribs; nose bags [feed bags]; bits for animals [harness]; walking sticks; purses; harness for animals; goldbeaters’ skin; parts of rubber for stirrups; collars for animals; valises; suitcases; suitcase handles; handbags; handbag frames; cattle skins; curried skins; horseshoes; waist pouches; dog collars; dog leads; hat boxes of leather; game bags [hunting accessories]; card cases [notecases]; cases, of leather or leatherboard; chain mesh purses; sling bags for carrying infants; chin straps, of leather; garment bags for travel; cat o’ nine tails; knee-pads for horses; luggage boxes; leather leashes; vanity cases, not fitted; toiletry kits; imitation leather; leather, unworked or semi-worked; leather twist; girths of leather; imitation leather; leatherboard; straps of leather (saddlery); leather straps; leather laces; valves of leather; straps for soldiers’ equipment; muzzles; leather trimmings for furniture; furniture coverings of leather; moleskin [imitation of leather]; music cases; whips; fur; horse blankets; halters; horse collars; umbrellas; umbrella handles; travelling trunks; trunks [luggage]; travelling sets [leatherware]; travelling bags; butts [parts of hides]; backpacks; bags for climbers; riding saddles; saddle trees; covers for horse-saddles; fastenings for saddles; saddlery; boxes of leather or leather board; blinders [harness]; umbrella covers; frames for umbrellas or parasols; umbrella rings; umbrella sticks; straps for skates; key cases [leatherware]; school bags, satchels; bandoliers; walking stick seats; parasols; bags for sports; stirrups; stirrup leathers; canes; walking cane handles; wheeled shopping bags; bags; pelts; haversacks; bridoons; shoulder belts; pads for horse saddles; pouches, of leather, for packaging; hiking poles; tool bags of leather, empty; gut for making sausages; harness straps; reins; bridles [harness]; traces [harness].

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; saddlery, whips and apparel for animals; umbrellas and parasols; walking sticks; saddlery, whips and animal apparel.

Class 25: Headgear; clothing; footwear.

Some of the contested goods 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 listed above. The examination of the opposition will proceed as if all the contested goods 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 assumed to be identical are directed at the public at large. The degree of attention is expected to be average.

3. The signs

wind	swink
Earlier trade marks	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 earlier marks and the contested sign are word marks, each composed of a single verbal element: ‘wind’ (the earlier marks) and ‘swink’ (the contested sign).

The word ‘wind’ of the earlier marks refers to a ‘current of air that is moving across the earth’s surface’ and will be perceived as such by part of the relevant public, in particular the English- and German-speaking parts of the public; however, it will be seen as meaningless, and therefore as a fanciful word, by another part of the relevant public, for instance a significant part of the Bulgarian-, Hungarian- and Spanish-speaking parts of the public. Although there exists an item of clothing called a windcheater, namely a wind-resistant jacket to protect against the wind, no category of clothing exists that is specifically intended for windy conditions, unlike, for instance, snow clothing or mountain clothing. Therefore, this word is distinctive to an average degree, since it does not describe or allude to any characteristics of the relevant goods.

The word constituting the contested sign, ‘swink’, is an archaic English word meaning ‘to toil or drudge’ and it is also (despite being rather unusual) a surname in some countries. However, in the Opposition Division’s opinion, this word will be perceived by the majority of the relevant public as arbitrary and meaningless and therefore it has an average degree of inherent distinctiveness. However, even if it was assumed that the word ‘swink’ would be understood, it would only help to differentiate between the signs further, as it would create a conceptual difference between them.

Visually, the signs coincide in the string of letters ‘win’. However, they differ in the additional letter ‘s’ at the beginning of the contested sign and in their endings, namely the letter ‘d’ in the earlier marks and the letter ‘k’ in the contested sign, which are strikingly different. The signs also differ in their number of letters, namely four versus five.

It must be taken into account that the signs at issue are relatively short and, in short signs, every single letter and feature has a significant weight in the perception of the signs by the public.

Regarding the coincidence in the abovementioned letters, 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 share some of them. Therefore, the fact that the contested sign includes a substantial part (i.e. ‘win’) of the earlier marks, as the opponent states, is not decisive in the present case, particularly considering that, in the contested sign, these letters are in the middle of the word, preceded and followed by the letters ‘s’ and ‘k’ (respectively), which makes that they get blurred, or may go unnoticed as such, within the overall impression of the sign.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘win’. However, they differ in the sound of the letter /D/ at the end of the earlier marks and in the sounds of the first and final letters of the contested sign, namely /S/ and /K/, respectively. These differences are clearly audible (with the letter /K/ creating a particularly striking difference) and will not go unnoticed, especially since the signs are rather short.

Therefore, taking into account, in particular, the impact of the consonant sounds at the beginning and end of the contested sign, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs.

Part of the public may perceive the meaning of the earlier marks, ‘wind’, as explained above, while the contested sign has no meaning for the relevant public. Since the contested sign will not be associated with any meaning, the signs are not conceptually similar.

For another part of the public, none of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for that part of the public.

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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, §22).

The contested goods in Classes 18 and 25 are presumed to be identical to the goods covered by the earlier marks. They target the public at large and the degree of attention is average. The degree of distinctiveness of the earlier marks is average.

The signs are visually and aurally similar to a low degree and are conceptually not similar or the conceptual aspect does not influence the assessment of the similarity between the signs. Although the signs have the string of letters ‘win’ in common, these letters are arranged differently in the signs and this coincidence is clearly outweighed by the signs’ striking differences, which will be easily perceived given that the signs are relatively short. Moreover, signs must always be compared as a whole; therefore, it can be affirmed that the differences between the signs are clearly perceptible and so are sufficient to distinguish between the signs and, most importantly, to lead to the signs creating different overall impressions.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

The cases referred to by the opponent (i.e. 11/07/2013, R 1167/2011-1, WINK / Wind sportswear (BILDMARKE) et al.; and 29/05/2012, B 1 787 574), involve the sign ‘wind’ (i.e. the same as the earlier marks) against the signs ‘wink’ and ‘swind’, respectively, which differ in only one letter. In the first case, the signs differ in only their final letters and, in the second case, the earlier mark is entirely included in the contested sign, differing in the additional first letter of the latter. In the present case, by contrast, the signs differ in both their beginnings and their endings, which, as a whole, lead to the signs creating different overall impressions.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of public for the conceptual aspect does not influence the assessment of the similarity between the signs and for which the signs are visually and aurally similar to a low degree. This absence of a likelihood of confusion also applies, a fortiori, to the part of the public that will perceive a meaning in the earlier marks, ‘wind’, and so will perceive a conceptual difference between the signs, since this renders the signs even less similar and the likelihood of confusion even less likely.

Therefore, the opposition must be rejected insofar as it is based on European Union trade mark registrations No 7 332 455 and No 11 901 162, both for the word mark ‘wind’.

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

1. European Union trade mark registration No 4 854 147 for the figurative mark ;

2. European Union trade mark registration No 4 855 193 for the figurative mark .

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain additional figurative elements and additional words, namely ‘sportswear’ and ‘surfer’, that are not present in the contested sign. Moreover, they cover a very similar scope of goods to the earlier marks already compared. Therefore, the outcome cannot be different with respect to goods (presumed to be identical) for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

As a final remark, the Opposition Division notes that earlier European Union trade marks No 7 332 455 and No 4 855 193 are the subject of cancellation proceedings. Nevertheless, since the opposition is not successful, it is not necessary to suspend the opposition proceedings until a final decision is taken.

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 applicants 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 applicants are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Andrea VALISA

Birgit FILTENBORG

Riccardo RAPONI

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.