OPPOSITION No B 2 919 820

Supremo Shoes + Boots Handels GmbH, Blocksbergstr. 174, 66955, Pirmasens, Germany (opponent), represented by Wagner Webvocat^® Rechtsanwaltsgesellschaft mbH, Großherzog-Friedrich-Str. 40, 66111 Saarbrücken, Germany (professional representative)

a g a i n s t

Rokaler Sport SL, Elche Parque Empresarial, C/ Germán Bernácer, 5, 03203 Elche Spain (applicant), represented by Ascensio Manzanares Andreu, Blas Valero, 117, Entlo. 3201 Elche, Spain (professional representative).

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

DECISION:

1. Opposition No B 2 919 820 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 16 495 509 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 784 637 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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 784 637.

a) The goods

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

Class 25: Footwear.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; shoulder belts; shoulder belts [straps] of leather; toiletry bags sold empty; leather laces; leather twist; cases of leather or leatherboard; handbags made of leather; labels of leather; girths of leather; briefcases [leather goods]; attache cases made of leather; leather wallets; travelling sets [leatherware]; leather credit card wallets; credit card holders made of leather; credit card holders made of imitation leather.

Class 25: Headgear; footwear; clothing.

Class 28: Sporting articles and equipment.

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 mark which, for the opponent, is the best light in which the opposition can be examined.

b) 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 considered to be identical are directed at the public at large. The degree of attention is average.

c) 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 earlier mark is a figurative mark consisting of the verbal element ‘BE MEGA’, depicted as a label and written in slightly stylised gold characters against a black background.

The contested sign is a black and white figurative mark made up of the verbal element ‘MEGA’, written in standard upper case letters (with the first and last letters being larger than the middle two) inside an irregular-shaped border. This element is underneath a circle containing an arrow pointing upwards and the number ‘1994’, and above the verbal element ‘FOOTWEAR’ in standard white upper case letters against a black rectangular background.

The element ‘MEGA’, included in both signs, will be understood by the average consumer in the EU as referring to something extremely big, good or successful. ‘MEGA’ comes originally from Greek, in which ‘mégas’ means ‘big’, and has been adopted into all European languages. This element is therefore considered extremely weak in all the territories of the European Union.

The element ‘FOOTWEAR’ in the contested sign will be understood by part of the relevant public in the EU, for example by the English- and German-speaking parts of the relevant public, as referring to ‘anything worn to cover the feet’ (information extracted from Collins English Dictionary on 02/10/2018 at https://www.collinsdictionary.com/dictionary/english/footwear). For another part of the public, it will not be associated with any meaning. The Opposition Division will first examine the opposition in relation to the part of the public that understands ‘FOOTWEAR’, such as English- and German-speaking consumers. For these consumers, the word has a descriptive meaning for at least some of the goods. This is the best-case scenario for the opponent, because descriptive elements are given less weight in the comparison of the signs.

Although the arrow device at the top of the contested sign is simple, its distinctiveness is considered average, as it is not descriptive or allusive with respect to the relevant goods. However, the relevant public will perceive ‘1994’ as indicating, for example, the year in which the company manufacturing the goods was established or the year in which the products in question were launched. Consequently, this element is considered weak in relation to the relevant goods.

The letters ‘BE’ at the beginning of the earlier mark would be perceived by part of the public as a form of the English verb ‘to be’ and by another part of the public as two letters without any particular meaning.

It has to be taken into account that, in principle, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Because of their sizes and positions, the word ‘MEGA’ and the arrow device are the co-dominant elements in the contested sign. The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘MEGA’, present in both signs. However, they differ in the letters ‘BE’ preceding it in the earlier mark, and in the figurative device and the elements ‘1994’ and ‘FOOTWEAR’ in the contested sign. Although these last two elements are weak and non-distinctive, respectively, for the relevant public, the arrow is eye-catching and co-dominant in the contested sign and, therefore, it cannot be disregarded. In addition, the structures of the signs as a whole are strikingly different, with the contested sign arranged over three levels and the earlier mark having a more linear structure.

Therefore, in spite of the coinciding element ‘MEGA’, the signs are visually similar only to a very 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 ‛MEGA’, present identically in both signs. The pronunciation differs in the sound of the first letters, ‛BE’, of the earlier sign, which will be clearly audible and will not go unnoticed, especially because they are at the beginning of the mark. The element ‘1994’ in the contested sign is weak, but cannot be completely disregarded, while the additional word ‘FOOTWEAR’ is descriptive for the relevant goods and therefore has a limited impact on the comparison.

Therefore, the signs are aurally similar to a very low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the relevant public that perceives ‘BE’ at the beginning of the earlier mark as the imperative form of the verb ‘to be’, the mark contains a slogan or an invitation to be great and successful, while the contested sign makes reference to big shoes. Therefore, the signs are not conceptually similar for this part of the public.

For the part of the public that does not recognise ‘BE’ as a form of the verb ‘to be’, both signs, through the element ‘MEGA’, allude to the meaning explained above. As the commonality lies in a weak element, the signs are conceptually similar to a very low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all the goods in question, namely footwear in Class 25.

e) 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 goods under comparison have been assumed to be identical. They target the public at large, which has an average degree of attention. The distinctiveness of the earlier mark is lower than average.

The marks are visually and aurally similar only to a very low degree, as they coincide in an extremely weak element, as explained above. Conceptually, they are not similar for part of the public and similar only to a very low degree for another part.

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). For goods in Classes 18 and 28 also, it is expected that a visual inspection will take place prior to purchase. Therefore, the considerable visual differences between the signs caused by the additional, differing verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them.

The opponent refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the opponent’s submission containing the national decision is marked as confidential, so the Office will not describe it in detail. It is sufficient to say that the previous case referred to by the opponent is not relevant to the present proceedings because the contested sign in that decision is not the same as the one at issue in the present proceedings.

Considering all the above, even assuming that the goods are identical, the Opposition Division considers that the signs in question have striking visual differences that will enable the relevant consumers to safely distinguish between them. Although the signs coincide in the element ‘MEGA’, there is no likelihood of confusion because that element is extremely weak in all the territories of the European Union. Therefore, the opposition must be rejected.

This absence of likelihood of confusion is even more obvious for that part of the public for which the element ‘FOOTWEAR’ is not descriptive. This is because, as a result of this differing distinctive element, that part of the public will perceive the signs as even less similar.

The opponent has also based its opposition on German trade mark registration No 304 049 204 for the figurative mark , registered for footwear in Class 25.

Since this mark is identical to the one that has been compared and covers the same scope of 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.

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 (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.

The Opposition Division

Michele M. BENEDETTI-ALOISI

Riccardo RAPONI

María Clara IBÁÑEZ FIORILLO

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.