OPPOSITION No B 2 916 529

Adler Modemärkte AG, Industriestr. Ost 1-7, 63808 Haibach, Germany (opponent), represented by Laura Kohm, Industriestr. Ost 1-7, 63808 Haibach, Germany (employee representative)

a g a i n s t

Golf Store Monaco, Le Blanc Castel - 17 Bd Princesse Charlotte, 98000 Monaco (applicant), represented by Office Mediterraneen De Brevets D’invention Et De Marques Cabinet Hautier, 20 rue de la Liberté, 06000 Nice, France (professional representative).

On 27/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 916 529 is partially upheld, namely for the following contested goods:

Class 18: Luggage and transport bags; umbrellas and parasols; golf umbrellas; walking sticks; sport bags, backpacks, holdalls for sports clothing, sports packs, multifunctional sportbags, bags for sports clothing.

Class 25: Clothing, footwear (except orthopaedic footwear), headgear, gloves (clothing), belts (clothing); athletics shoes; ski boots; golf footwear, golf shoe cleats, ski clothes, ski gloves, ski trousers, snow suits, ski anoraks, ski hats; bermuda shorts for golf; golf caps; golf shirts; golf trousers; golf skirts; golf trousers; golf shorts, golf shoe studs ; golf cleats; golf wear [other than gloves].

2. European Union trade mark application No 16 525 602 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 some of the goods of European Union trade mark application No 16 525 602 for the figurative trade mark , namely against all the goods in Classes 18 and 25. The opposition is based on European Union trade mark registration No 11 419 942 for the figurative trade 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.

1. The goods

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

Class 18: Goods of leather and imitations of leather, not included in other classes, namely bags and other containers not specifically designed for the objects being carried, and small leather goods, in particular purses, pocket wallets, key wallets; trunks and travelling bags; parasols, umbrellas, walking sticks.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 18: Leather and imitation leather; animal skins, hides; luggage and transport bags; umbrellas and parasols; golf umbrellas; walking sticks; whips, harness and saddlery; collars, leads and clothing for animals ; sport bags, backpacks, holdalls for sports clothing, sports packs, multifunctional sportbags, bags for sports clothing.

Class 25: Clothing, footwear (except orthopaedic footwear), headgear, gloves (clothing), belts (clothing); athletics shoes; ski boots; golf footwear, golf shoe cleats, ski clothes, ski gloves, ski trousers, snow suits, ski anoraks, ski hats; bermuda shorts for golf; golf caps; golf shirts; golf trousers; golf skirts; golf trousers; golf shorts, golf shoe studs; golf cleats; golf wear [other than gloves].

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, 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.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 18

Umbrellas and parasols; walking sticks are identically contained in both lists of goods.

The contested golf umbrellas are included in the opponent’s broader category umbrellas. Therefore, they are identical.

The contested luggage and transport bags overlap with or are included in the opponent’s broader category trunks and travelling bags. Therefore, they are identical.

The contested sport bags, backpacks, holdalls for sports clothing, sports packs, multifunctional sportbags, bags for sports clothing are included in or overlap with the opponent’s broader category (goods of leather and imitations of leather, not included in other classes, namely) bags and other containers not specifically designed for the objects being carried. Therefore, they are identical.

The contested leather and imitation leather; animal skins, hides are dissimilar to the opponent’s goods. The mere fact that leather is used in the manufacture of bags or other goods is not sufficient in itself to conclude that the goods are similar, as their natures, purposes and relevant publics are quite distinct: raw materials are intended for use in industry rather than for direct purchase by the final consumer.

The contested whips, harness and saddlery; collars, leads and clothing for animals are horse and animal supplies. They are dissimilar to all the opponent’s goods, as they do not have the same nature or purpose, are sold through different distribution channels, do not have the same producers and do not target the same consumers. Furthermore they are neither complementary nor in competition.

Contested goods in Class 25

Clothing, headgear are present identically in both lists of goods.

The contested gloves (clothing), belts (clothing); ski clothes, ski gloves, ski trousers, snow suits, ski anoraks; bermuda shorts for golf; golf shirts; golf trousers; golf skirts; golf trousers; golf shorts; golf wear [other than gloves] are included in the opponent’s broader category clothing. Therefore, they are identical.

The contested footwear (except orthopaedic footwear); athletics shoes; ski boots; golf footwear are included in the opponent’s broader category footwear. Therefore, they are identical.

The contested ski hats; golf caps are included in the opponent’s broader category headgear. Therefore, they are identical.

The contested golf shoe cleats; golf shoe studs; golf cleats are projections on the sole of a shoe, designed to prevent the wearer from losing their footing. They are complementary to the main product: golf footwear (falling within the broad category of the opponent’s footwear in Class 25). They are commonly offered for sale through the same commercial channels and target the same public. Furthermore, consumers would expect that the goods are manufactured by the same undertaking. Therefore, these goods are similar.

.

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 and similar are directed at the public at large.

The degree of attention is 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 coinciding element, ‘EAGLE’, is meaningful in certain territories, for example in those countries where English is understood. The English-speaking public would understand it as ‘a large bird that lives by eating small animals’; therefore, it is distinctive to an average degree in relation to the relevant goods. However, as pointed out by the applicant, part of the relevant public, including the English-speaking public, that is familiar with golf will associate it with ‘a score of two strokes under par for a hole’ (information extracted from Collins English Dictionary on 26/06/2018 at https://www.collinsdictionary.com/dictionary/english/eagle). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which ‘EAGLE’ would be associated with golf. Therefore, for this part of the public, the word ‘EAGLE’ — in relation to the relevant goods — would be perceived as indicating that the clothing and accessories are specially adapted for golf activities, and therefore it has lower than average distinctiveness in relation to the relevant goods. Although the distinctive character of the signs is lower for this part of the public, the Opposition Division will focus on it particularly because of this concept.

The earlier trade mark is a figurative mark consisting of the word ‘Eagle’, in a black italic typeface resembling handwriting, set in the centre of a thin black rectangular frame. The latter is a simple geometrical shape which is commonly used in trade to highlight the information contained within it. Therefore, consumers do not usually attribute any trade mark significance to such shapes (15/12/2009, T‑476/08, Best Buy, EU:T:2009:508, § 27). Consequently, the rectangular frame is considered decorative. The word ‘Eagle’ is mildly stylised in italic and thus has, at most, a low degree of distinctiveness.

The contested mark is a figurative mark composed of the word element ‘ONE’, depicted vertically in black upper case letters, followed by the word ‘EAGLE’. The letters ‘E*GLE’ are bold and black. The letter ‘A’ is white and is pierced by a red triangle pointing downwards. This triangle is a simple geometrical shape and, as mentioned above, will therefore be seen as merely decorative. The applicant argues that the red triangle of the contested mark depicts a golf tee. However, a golf tee is a long piece of wood or plastic that is positioned in the ground to support a golf ball and looks like a cone with a flat top. The Opposition Division finds that the shape of the red triangle is not sufficiently original and figuratively precise to be associated with a golf tee by the relevant public. Furthermore, the two stems of the letter ‘A’ protruding from either side of the triangle differentiate it even more from the shape of a golf tee. Therefore, this argument must be set aside.

The word element ‘ONE’, as it is a basic English word, will be understood by the relevant public as allusive of the positive characteristics of the goods, such as their quality, indicating that they are the best or ranked first in comparison with others. It therefore has a lower than average degree of distinctive character (08/12/2014, R 2188/2013-4, SF STREET FIT (fig.) / STREET ONE (fig.) et al., § 25). The contested mark could, however, also be seen by part of the public as composed of the expression ‘ONE EAGLE’, as pointed out by the applicant, meaning ‘a hole in one’. If understood as such, in relation to the relevant goods, the expression will also be seen as weak.

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word element ‘EAGLE’, which constitutes the only word element of the earlier mark. They differ in the weak word element ‘ONE’ of the contested sign and in the figurative elements of both marks, which are, however, of a merely decorative nature.

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).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛EAGLE’, present identically in both signs. The pronunciation differs in the sound of the weak element ‘ONE’, which has no counterpart in the earlier sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Having said that, for the relevant public, the signs will be associated with the same meaning relating to golf due to the coinciding element, despite its weakness, and in view of the additional concept — the word ‘one’ (which is of limited distinctiveness) — in the contested sign; therefore, the signs are also considered conceptually similar to an average degree.

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

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 are from the same or economically linked undertakings.

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).

In the present case, the identical, similar and dissimilar goods are directed at the public at large with an average degree of attention. The distinctiveness of the earlier mark is average.

It has also been concluded that the signs are visually similar, aurally similar to a high degree and conceptually similar to an average degree due to the coinciding word element ‘EAGLE’, which constitutes the entire earlier mark and has limited distinctiveness. They differ in their figurative features, namely the decorative black frame and the stylisation of the letters of the earlier mark, which has a low degree of distinctiveness, and the red triangle and stylisation of the letters of the contested sign.

A coincidence in an element with a low degree of distinctiveness will not in itself normally own lead to likelihood of confusion. However, there may be a likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or have insignificant visual impact, and the overall impressions of the marks are similar. There may also be likelihood of confusion if the overall impressions of the marks are highly similar or identical. For the relevant public, although both signs have additional figurative elements, as described above, no particular concept is embodied in the figurative element of the earlier mark, and its overall impact on the sign is rather limited. In the contested sign, the triangular shape is considered decorative and therefore has a limited impact on the overall perception of the sign. Furthermore, 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).

Therefore, given that the relevant consumer will most probably refer to the conflicting signs using the verbal element ‘EAGLE’, even though this element is considered to have somewhat limited distinctiveness in itself, and taking into account that the different stylisation and figurative elements do not convey any distinctive concepts as a whole that might help the public distinguish between them and make a reasoned purchase decision, a risk of confusion cannot be ruled out in the present case for the relevant public.

Considering all the above, there is a likelihood of confusion on the part of the public that will understand the word ‘EAGLE’ as being related to golf. 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 partially well founded on the basis of the opponent’s European Union trade mark registration No 16 525 602. It follows that the contested trade mark must be rejected for the contested goods that are identical and similar to the opponent’s goods.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DRAGOSTIN

Cristina CRESPO MOLTÓ

Cynthia DEN DEKKER

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.