OPPOSITION No B 2 980 145

YoungGo, Im Branden 37, 88634 Herdwangen-Schönach, Germany (opponent), represented by Jan Stütz, Unter den Linden 10, 10117 Berlin, Germany (professional representative)

a g a i n s t

Shenzhen Kean Digital Co. Ltd., Floor 4, Ru Jun Building, No.105 Zhongxin Road, Bantian Street, Longgang District, 518129 Shenzhen, Guangdong Province, People’s Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 26/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 980 145 is partially upheld, namely for the following contested goods:

Class 18:	Bags for climbers; bags for sports; bags for campers.
Class 28:	Nets for sports; climbers' harness; shin guards [sports articles].

2. European Union trade mark application No 16 841 017 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 841 017 ‘ ’, namely against all the goods in Class 18 and some of the goods in Class 28. The opposition is based on European Union trade mark registration No 12 925 665 ‘YoungGo’, the German and Austrian non-registered trade mark ‘YoungGo’ and the German company name ‘YoungGo’. The opponent invoked Article 8(1)(b) and Article 8(4) 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.

a) The goods and services

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

Class 5:	Albuminous foodstuffs for medical purposes; nutritional supplements; enzyme dietary supplements; glucose dietary supplements; protein dietary supplements; trace elements (preparations of -) for human and animal use; vitamin preparations.
Class 28:	Chest expanders [exercisers]; fitness exercise machines; gymnastic articles; dumb-bells.
Class 41:	Coaching [training]; recreation facilities (providing -); provision of tuition; gymnastic instruction; advisory services relating to education; organization of sports competitions; arranging and conducting of seminars; rental of sports equipment, except vehicles.

The contested goods are the following:

Class 18:	Mountaineering sticks; alpenstocks; leather leads; umbrella or parasol ribs; leather laces; straps for skates; umbrellas; bags for climbers; travelling sets [leatherware]; haversacks; garment bags for travel; bags for sports; harness fittings; luggage tags; bags for campers.
Class 28:	Archery implements; balls for games; toys; playing balls; nets for sports; swimming pools [play articles]; spinning tops [toys]; skis; except illumination articles and confectionery; climbers' harness; drones [toys]; shin guards [sports articles].

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

The contested bags for sports is a broad category that can contain specific items such as bags for gymnastic articles. Also, the contested bags for climbers and bags for campers have some commonalities with the opponent’s goods. They are similar to a low degree to the earlier gymnastic articles in Class 28 because they can coincide in distribution channels and target the same end user. They can also originate from the same producer and can be used in combination with the earlier goods.

The contested mountaineering sticks; alpenstocks; leather leads; umbrella or parasol ribs; leather laces; straps for skates; umbrellas; travelling sets [leatherware]; haversacks; garment bags for travel; harness fittings; luggage tags have nothing in common with the earlier goods and services.

Some of these contested are specific items destined to the practice of outdoor activities like, for instance, trekking or climbing. The earlier goods in Class 28 (gymnastic and fitness articles) are intended to train the body through physical exercise. Notwithstanding the fact that, by their nature, some of the contested goods and earlier goods are meant to entertain the public, they also serve other more specific purposes.

With respect to whether or not these goods have the same distribution channels, like all types of other goods, all the goods at issue can now be found in large retail stores. However, in such sales points, the opponent’s gymnastic articles and the contested goods are sold in specialised sections which, despite possibly being close to each other, are nonetheless separate. Therefore, they are dissimilar to all goods covered by the earlier right in Classes 5 (nutritional supplements and preparations) and 28 (gymnastic articles and fitness apparatus) because they are of a different nature and purpose. They do not follow the same method of use. They are not complementary or in competition. They do not generally share the same distribution channels and do not target the same end user. Furthermore, they are generally produced by different companies. These contested goods are also dissimilar to all services covered by the earlier right in Class 41 (tuition, training, organising sport competitions and rental of sport equipment). First of all, by their nature goods are generally dissimilar to services. Apart from being different in nature, as pointed out above, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.

Contested goods in Class 28

The contested nets for sports can be used in gyms as dividers of different spaces or for the practice of climbing or fitness routines. The contested climber’s harness has some commonalities with harnesses or specific items that exist in gyms and sports centres to practice, for instance, sled carrying for speed training or hanging dumb-bells to different parts of the body. The contested shin guards [sports articles] can be used in the practice of gym exercises such as deadlifting or for the practice of martial arts. Therefore, these contested goods are similar to the earlier gymnastic articles in Class 28 because they can coincide in distribution channels and target the same end user. They can also originate from the same producer and can be used in combination with the earlier goods.

For the same reasons explained above in the comparison of the contested goods in Class 18, archery implements; skis have no connection points with the earlier goods and services. These are very specific items intended first and foremost to entertain their users through the specific practice of sports, namely archery and skiing. The earlier goods in Class 28 (gymnastic and fitness articles) are intended to train the body through physical exercise. Notwithstanding the fact that, by their nature, some of the contested goods and earlier goods are meant to entertain the public, they also serve other more specific purposes. Therefore, they are dissimilar to all goods covered by the earlier right in Classes 5 (nutritional supplements and preparations) and 28 (gymnastic articles and fitness apparatus) because they are of a different nature. They are of a different purpose. They do not follow the same method of use. They are not complementary or in competition. They do not generally share the same distribution channels and do not target the same end user. Furthermore, they are generally produced by different companies. These contested goods are also dissimilar to all services covered by the earlier right in Class 41 (tuition, training, organising sport competitions and rental of sport equipment). In addition, the target public for the opponent’s services in Class 41 will not expect these goods to be manufactured by the same undertaking that organises and provides the activities, even for the earlier services of rental of sports equipment, except vehicles as it is not common in the archery or skiing marketplace that a manufacturer or such items offers them for rent.

The contested balls for games; toys; playing balls; swimming pools [play articles]; spinning tops [toys]; except illumination articles and confectionery; drones [toys] are dissimilar to all the opponent’s goods and services as there are substantial differences between them (04/06/2013, T-514/11, Betwin, EU:T:2013:291, § 36-39). According to said judgment, even if certain gymnastic or sporting articles can be used for games and certain toys or games can also be sporting or gymnastic articles, in the absence of precise information as to the specific goods concerned and as regards the manner in which those goods might be affected, such an assumption does not call in question the fact that the intended purpose of those two categories of goods is essentially different. Even if, by their nature, those two categories of goods are meant to entertain the public, they also serve other purposes. In addition, the target public for the opponent’s services in Class 41 will not expect these goods to be manufactured by the same undertaking that organises and provides the activities. Therefore, taking into account all the findings about the opponent’s goods and services in Classes 5, 28 and 41, the contested balls for games; toys; playing balls; swimming pools [play articles]; spinning tops [toys]; except illumination articles and confectionery; drones [toys] are considered dissimilar to all the opponent’s goods and services.

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 found to be similar are directed at the public at large. The degree of attention is considered to be average.

c) The signs

YoungGo
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 the word ‘YoungGo’. According to the case law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T353/04, Curon, EU:T:2007:47, § 74). The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters or a combination of them.

The contested sign consists in the words ‘YOUNG’ and ‘GO’ written in bold uppercase letters in white colour with a thick black shadow or border. The words are depicted slightly inclined using a stylised font more standard in the case of the word ‘YOUNG’ and more irregular in the case of ‘GO’, whose size is also slightly bigger.

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 element ‘YOUNG’ and ‘GO’ are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non English‑speaking part of the public such as, for instance, Spain.

The elements ‘YOUNG’ and ‘GO’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The earlier mark ‘YOUNGGO’ has no meaning for the relevant public and is also distinctive. For the part of the public who could split the earlier mark because of the use of a capital letter in ‘Go’, reference is made to what is set out before in the previous paragraph regarding the contested sign.

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 coincide in all their letters ‘Y‑O‑U‑N‑G’ and ‘G‑O’ and in the same position. The signs only differ in their structure which is clearly two words in the case of the contested sign. They also differ in the stylisation of the contested sign.

Considering all the above, the signs are visually similar to a very high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs are identical.

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.

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. 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.

e) 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.

The signs are visually similar to a very high degree and aurally identical. The conceptual aspect does not influence the assessment of the similarity of the signs. The earlier mark has a normal degree of distinctiveness.

The goods are partly similar to various degrees and partly dissimilar; they are directed at the general public that will have an average degree of attention when selecting or purchasing them.

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).

Account is also 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).

Considering all the above, and especially the interdependence and imperfect recollection principles, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English‑speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 925 665 ‘YoungGo’. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar even to a low degree to those of the earlier trade mark, because there are practically no differences between both signs.

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.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent has also based its opposition on the German and Austrian non-registered trade mark ‘YoungGo’ and German company name ‘YoungGo’.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case, the notice of opposition was not accompanied by any valid evidence of use of the earlier signs in the course of trade.

On 27/10/2017 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 01/03/2018.

The opponent did not submit any valid evidence of use in the course of trade of the earlier signs on which the opposition is based, namely the German company name ‘YoungGo’ and the German and Austrian non-registered trade mark ‘YoungGo’. The opponent simple stated that the trade mark is heavily used and provided 4 hyperlinks to different websites.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Ana MUÑIZ RODRIGUEZ

Fabian GARCIA QUINTO

Loreto URRACA LUQUE

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.