­OPPOSITION No B 2 909 763

Brooks Sports, Inc., 3400 Stone Way North, 98103 Seattle, United States of America (opponent), represented by Heuking Kühn Lüer Wojtek - Partnerschaft von Rechtsanwälten und Steuerberatern mbB, Neuer Wall 63, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Sheng Yan Kang, Via Case Rosse 23, 00131 Rome, Italy (applicant).

On 23/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 909 763 is upheld for all the contested goods.

2. European Union trade mark application No 16 471 724 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 471 724 for the word mark ‘ABROOKS’. The opposition is based on, inter alia, international trade mark registration designating the European Union No 1 195 143 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 international trade mark registration No 1 195 143 designating the European Union.

1. The goods

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

Class 25: Footwear; shoes; athletic clothing, namely, gloves, mittens, hats, headbands, jackets, jogging suits, pants, shirts, shorts, socks, t-shirts, tank tops, tights, track suits, visors, warm up suits, waterproof jackets and pants, wind resistant jackets.

The contested goods are the following:

Class 25: Clothing; footwear; headgear.

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

The term ‘namely’ used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Footwear is identically contained in both lists of goods (including synonyms).

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

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

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

	ABROOKS
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The word element ‘BROOKS’ is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public such as the German- and Spanish- speaking consumers for whom the verbal elements of the signs are meaningless.

The earlier mark is a figurative mark consisting of the verbal element ‘BROOKS’ depicted in black fancy upper case letters. Before the verbal element on the left there is a figurative element which will not evoke any concept and is devoid of meaning.

As stated above, the verbal element ‘BROOKS’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive. The same is valid for the figurative element of the earlier mark, which being meaningless is distinctive.

The contested sign is a word mark consisting of the word ‘ABROOKS’. The word ‘ABROOKS’ has no meaning for the relevant public and is, therefore, distinctive.

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

Also as regards the earlier mark, 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 are similar to the extent that they coincide in the string of letters ‘BROOKS’, which is the sole word element in the earlier mark. The marks differ, however, in the first letter ‘A’ of the contested sign, as well as in the figurative element of the earlier consisting of a stylized chevron, which have no counterpart in the contested mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BROOKS’, present identically in both signs. The pronunciation differs in the first letter ‘A’ of the contested sign, which has no counterpart in the contested sign.

Therefore, the signs are aurally similar to a high degree.

Conceptually, 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.

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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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 contested goods in Class 25 covered by the trade marks in dispute have been found identical. The goods are directed at the public at large with an average degree of attention. Furthermore, the earlier mark is considered to enjoy an average degree of distinctiveness.

The signs are visually similar to an average degree and aurally highly similar because the contested sign fully reproduces the sole word element of the earlier mark. The figurative element of the earlier mark is not particularly eye-catching. Also, account must be taken of the fact that when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. Furthermore, the conceptual aspect does not influence the present comparison since the signs have no meaning for the public in the relevant territory.

Also, the importance of certain visual dissimilarities may be diminished by 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).

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 covered are from the same or economically linked undertakings

Therefore, it is likely to expect that the relevant public could believe that the goods concerned offered under the signs in dispute originate from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

In view of all the foregoing, the Opposition Division deems that there is a likelihood of confusion on the part of the German- and Spanish- speaking part of the public, which will not attribute any meaning to the almost identical verbal element ‘BROOKS’. 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.

As the earlier international trade mark registration No 1 195 143 designating European Union 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

Riccardo RAPONI

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.