OPPOSITION No B 2 968 157

Tecnica Group S.p.A., Via Fante d'Italia, 56, 31040 Giavera del Montello (Treviso), Italy (opponent), represented by Interpatent, Via Caboto, 35, 10129 Torino, Italy (professional representative)

a g a i n s t

First Food Production s.r.o., Vajnorská 100/A, 83104 Bratislava, Slovak Republic (applicant), represented by Barger Prekop s.r.o., Mostová 2, 85101 Bratislava, Slovak Republic (professional representative).

On 22/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 968 157 is upheld for all the contested goods, namely

Class 25: Sportswear; Leggings [leg warmers]; Leggings [trousers]; Sweatpants; Tracksuit tops; Tee-shirts; Hooded sweatshirts; Hooded tops; Hooded pullovers; Jogging tops; Long sleeved vests; Yoga pants; Yoga shirts; Stuff jackets [clothing]; Thermally insulated clothing; Caps with visors; Sports caps; Moisture-wicking sports shirts; Moisture-wicking sports pants.

2. European Union trade mark application No 16 858 102 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against part of the goods of European Union trade mark application No 16 858 102 (figurative), namely against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 5 956 032 ‘NORDICA’ (word). The opponent invoked Article 8(1)(b) and (5) 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.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the date of filing of the contested application, namely 13/06/2017. Nevertheless, the Opposition Division finds it appropriate to first examine the submitted proof in relation to European Union trade mark registration No 5 956 032 and to analyse the evidence in relation to the remaining rights only if deemed necessary in view of the findings reached on the use of said right.

The opponent was required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 13/06/2012 to 12/06/2017 inclusive.

The evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 25: Walking boots, after-ski boots, ski gaiters, hockey shoes, boots, shoes, slippers, sportswear, headgear, classic clothing and leisurewear, special footwear for sporting activities and in particular footwear for resistance sports.

Class 28: Ski-racks, ski poles, rackets, ski bindings, skis, sleds, gymnastic and sporting equipment and fittings therefor.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 05/07/2018 in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 10/09/2018 to submit evidence of use of the earlier trade mark. This deadline was further extended until 10/11/2018. On 07/11/2018, within the time limit, the opponent submitted evidence of use.

It is acknowledged that on 06/04/2018, within the time limit to submit further facts, evidence and arguments in support of the opposition, the opponent submitted evidence to substantiate its reputation claim, inter alia, in relation to European Union trade mark registration No 5 956 032. Since these materials were submitted prior to the expiry of the time limit to prove use of its earlier rights, they are considered relevant and will also be taken into consideration for the purposes of assessing the use of the opponent’s signs.

Overall, the opponent presented a huge volume of materials, as in fact a part of them only is considered sufficient for proving use of its mark. Therefore, the Opposition Division will limit its assessment on the evidence of use to the following materials:

 Catalogues: Catalogues for the years 2016/2017 and 2017/2018, submitted on 06/04/2018 as part of Attachment 7. The catalogues show on their last pages ski gloves bearing the sign ‘Nordica’. The catalogue numbers, as mentioned in the catalogues of some of the offered ski gloves, are as follows: OW260100, OW260200 and OW260300.

 Invoices: A significant number of invoices, submitted by the opponent on 06/04/2018 as Attachment 17 and on 07/11/2018 as Enclosure 3. The invoices relate to sales of various goods to clients in Italy, Germany, Austria, France, Poland, Spain and Sweden in the years from 2012 to 2017 inclusive. Among the goods sold and mentioned in the invoices are ski gloves in varying quantities. Even though the invoices are not in the language of the proceedings, the goods sold could be easily identified based on the product codes (catalogue numbers), which correspond to the codes as provided in the submitted catalogues, namely OW260100, OW260200 and OW260300. By way of example, within the relevant period in the years 2016 and 2017, ski gloves are sold and mentioned in the following invoices: (i) to clients in Italy – 2016/5/02009, 2016/5/02054, 2016/5/03688, 2016/5/03855, 2016/5/03892, 2016/5/03914, 2016/5/09539, 2016/5/10904, 2016/5/10912, 2016/5/25899, 2016/5/26004, 2016/5/26281; in Spain – 2017/5/04553; in Sweden - 2016/5/04313; in Austria - 2016/5/21916, 2017/5/03872, in France - 2017/5/04767, in Germany - 2016/5/24386, 2016/5/26670, 2017/5/07916; in Poland - 2016/5/01580.

The invoices show that the place of use is the European Union. In particular, the goods have been sold to clients in various Member States, which is clear from the addresses, including the destination addresses of the shipments. Therefore, the evidence relates to the relevant territory.

The evidence is dated within the relevant period. As explained above, for the purposes of the present assessment some of the furnished materials have been examined, which relate to the years 2016 and 2017. It has been acknowledged by the case law that it is not necessary that use is proven within the entire relevant period and use during only part of the relevant period would suffice. In the case at hand the invoices show regular use within the entire years of 2016 and in 2017, up to 12/06/2017. Moreover, invoices have been submitted also for the rest of the year 2017. Even though such evidence relates to use outside of the relevant period, they serve to confirm the continuous use of the mark within the few months, following the relevant period.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

While the quantities of sold goods are not particularly high, it is noted that the invoices show regular sales to different Member States of the goods under analysis throughout the entire period of the years 2016 and 2017. It is noted in this respect that the purpose of the evidence of use is not to show the commercial success of the opponent. Moreover, the opponent has expressly noted that the invoices submitted are exemplary items and they are in no way exhaustive. In this respect, emphasis is made on the regularity of sales and on their geographical coverage.

Thus, even though the evidence is not particularly exhaustive, it does provide sufficient information on the extent of use of the earlier mark.

The evidence shows that the mark has been used in accordance with its function and as registered. Under Article 18(1)(a) of EUTMR, proof of genuine use of a mark also includes proof of the use of the mark in a form which differs by elements which do not affect the distinctive character of that mark in the form in which it was registered. In is noted that the catalogues show that the goods sold under the invoices bear the trademark ‘Nordica’ represented in colour and in a not particularly stylised font. In this respect, it is noted that the specific representation of a word mark is not generally of such a nature as to alter the distinctive character of that mark as registered (21/11/2013, T-524/12, RECARO, EU:T:2013:604, § 42; 23/09/2015, T-426/13, AINHOA, EU:T:2015:669, § 28, 10/10/2017, T-233/15, 1841, EU:T:2017:714, § 75). In the present case, since the earlier mark is a word mark, it may be used with different scripts and colours. Moreover, nothing in the stylisation of the mark on the shown goods prevents consumers from clearly reading the represented verbal component.

The evidence shows that the trade mark has been used for some of the goods, namely ski gloves. While from the submitted evidence it is apparent that the opponent has used the mark also for other goods, for procedural economy reasons it is not considered necessary that any and all relevant items of goods for which use is proven are analysed. Therefore, for the purposes of the present analysis it is considered that the opponent has proven use at least for the following goods:

Class 25: Ski gloves.

These goods belong to the broad category of sportswear in Class 25 of the opponent.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services. As seen from the above analysis, use is considered proven at least for ski gloves in Class 25.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 5 956 032.

a) The goods

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

Class 25: Ski gloves.

The contested goods are the following:

Class 25: Sportswear; Leggings [leg warmers]; Leggings [trousers]; Sweatpants; Tracksuit tops; Tee-shirts; Hooded sweatshirts; Hooded tops; Hooded pullovers; Jogging tops; Long sleeved vests; Yoga pants; Yoga shirts; Stuff jackets [clothing]; Thermally insulated clothing; Caps with visors; Sports caps; Moisture-wicking sports shirts; Moisture-wicking sports pants.

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.

The following contested goods are different types of clothing: Sportswear; Leggings [leg warmers]; Leggings [trousers]; Sweatpants; Tracksuit tops; Tee-shirts; Hooded sweatshirts; Hooded tops; Hooded pullovers; Jogging tops; Long sleeved vests; Yoga pants; Yoga shirts; Stuff jackets [clothing]; Thermally insulated clothing; Moisture-wicking sports shirts; Moisture-wicking sports pants. All these goods are, or could be, inter alia, used while exercising different kinds of sports. The opponent’s goods are items of clothing used when exercising a particular sport, namely skiing. To that end, these contested goods are considered at least similar to the opponent’s goods, because they may have the same nature of clothing for exercising sports and they have also the purpose to cover and protect different parts of the human body. Furthermore, they may come from the same manufacturers (e.g. of sports clothing), have the same sales points (stores for sports clothing and equipment or the respective sections in bigger stores) and the same relevant public.

As for the remaining contested goods, namely caps with visors; sports caps, these are items of headgear, which are or could be, inter alia, designated to be worn while skiing. They serve the same purpose as the opponent’s goods, in particular as they are both designed to give protection against the elements and target the same public. Moreover, the opponent’s goods and the contested ones may originate from the same companies, because it is common that manufacturers of sports clothing also produce headgear and vice versa. They would also coincide in distribution channels. Therefore, these goods are found to be similar.

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 (at least) similar are directed at the public at large, showing an average degree of attention upon purchase. The Opposition Division does not agree with the applicant that the opponent’s goods at issue are particularly expensive goods, which will lead to a high degree of attention upon purchase. The applicant has not furnished any evidence to support its position in this respect. Furthermore, the invoices reviewed for the purposes of the proof of use analysis and the prices mentioned therein also confirm the finding of the Opposition Division that the goods under consideration are reasonably priced.

c) The signs

NORDICA
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).

It is acknowledged that in relation to part of the public, such as the consumers from the countries with Latin-based languages, such as Spanish and Italian, but also, for example English, the coinciding part of the marks ‘NORDIC’ might be perceived as related to the goods at issue, since Nordic in English and words with the same root in other languages refer, inter alia, to a specific type of skiing. However, for other consumers, such as the Greek- and Bulgarian-speaking part of the public, ‘NORDIC’ is meaningless. Therefore, the Opposition Division finds it appropriate to focus the analysis of the signs to the perception of the part of the Greek and Bulgarian public.

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 word ‘NORDICA’ of the earlier mark is meaningless for the public in focus and, therefore, it is normally distinctive. Since this is a meaningless letter-combination, there are no reasons for the public in focus to perceive this element as composed of sub-elements. Similarly, the verbal element ‘NORDIC’ in the contested sign will not evoke any meaning and is also normally distinctive. As for the verbal element ‘ACTIVE’ in the contested sign, this is an English word, meaning ‘characterised by busy or lively activity; engaging or ready to engage in physically energetic pursuits’ (information extracted from Oxford English Dictionary on 19/11/2019, at www.oed.com). Due to the existence of words in the languages of the consumers in focus, which are very close to this word (‘активен’ [ac(k)tiven] in Bulgarian) and/or due to the broad usage of the word in everyday life, it is likely that a significant part of the public sees the explained meaning in it. Considering the fact that the goods at issue are or may relate to sporting activities, this element is of a reduced degree of distinctiveness for this part of the public. For those who do not see a meaning in it, the word is of normal distinctiveness.

The Opposition Division does not share the opinions of the parties that the stylisation of the letter ‘O’ in ‘NORDIC’ of the contested sign will be seen as a power button or a pointing arrow. On the contrary, it is likely that the public perceives it as nothing more than a stylized letter ‘O’. Consumers naturally look for words in signs they can pronounce, and it is unlikely that they disregard , first because it is positioned in between the string of letters ‘N*RDIC’ in (almost) the same size and in the same line as the remaining letters and also because otherwise the two consonants before and after it would be a non-pronouncable letter combination. Moreover, the stylisation of the letter is not particularly original and eye-catching. In conclusion, it is considered that the consumers will clearly see the word ‘NORDIC’ as the first word of the conetsted sign, with the letter ‘O’ being a bit more stylised than the remaing letters.

The contested sign also includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of the comparison.

In the light of the size and position of the elements of the contested sign, it is considered that none of them is more eye-catching than the others.

Visually, the signs coincide in ‘NORDIC’, where the first element of the contested sign is entirely contained in the earlier mark, being the first six out of seven letters in total. Moreover, consumers usually pay more attention to the beginning of signs (they read from left to right or from top to bottom) and the additional, last letter ‘A’ of the earlier mark may easily be overlooked for that reason. The signs further differ in the stylisation of the contested sign – the use of green, white and blue colours, the typeface and the stylisation of the letter ‘O’. All these additional elements, however, are mainly decorative, since there is nothing peculiar in the used colour combination and/or fonts. As said above, the stylisation of the letter ‘O’, even though noticeable, will not be perceived as something going beyond a representation of a carrier of the letter ‘O’. Finally, the additional letter ‘A’ in the earlier mark is at the end of a meaningless word, and as such, might even be easily overlooked.

In the light of the foregoing, the signs are considered visually similar to an average degree. Even for those who do not see a meaning in ‘active’ and thus, this word is of normal distinctiveness, the fact that the first of the two word elements of the sign is almost identical to the earlier mark, would lead to the identified degree of visual similarity.

Aurally, the pronunciation of the signs coincides in the letters ‘NORDIC(*)A’. In fact, all seven letters in the earlier mark are contained in the same order in the contested one. It is acknowledged, however, that because the letter ‘A’ in the contested sign is the first letter of the second word, it is likely that there is a brief pause between ‘NORDIC' and ‘A’, which pause is unlikely to be made when pronouncing the earlier sign. The signs differ in the sound of the letters ‘CTIVE’ in the contested sign.

Considering the above coincidence, the signs are found to be aurally similar to at least to an average degree. It is noted that given the different levels of distinctiveness of the differing element ‘active’, the coincidence might result in an aural similarity that is above average for part of the public.

Conceptually, a part of the relevant public will perceive a meaning in the differing element of the contested sign, as explained above, while the earlier mark will not evoke any meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public. For the rest of the consumers a conceptual comparison will not be possible to make.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

e) 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).

It has been established above that the goods are (at least) similar and that they target the general public, which shows an average degree of attention upon purchase. The signs are visually similar to an average degree, aurally similar to at least an average degree, while for a part of the public conceptually they are not similar and for another part a conceptual comparison is not possible. The earlier mark has a normal degree of inherent distinctiveness.

As seen from the above comparison, the first element of the contested sign, namely ‘NORDIC’ is entirely contained in the earlier mark, as in fact it represents the first six out of seven letters of the single element this mark is composed of. Since this difference is in the last letter of a meaningless string of letters, and moreover consumers usually pay more attention on the beginning of signs (they read from left to right), the additional ‘A’ of the earlier mark may easily be overlooked. The additional word element of the contested sign in the second place may not counteract this similarity in a way to safely exclude the likelihood of confusion. Firstly, as noted above, this element is weakly distinctive for part of the public in focus. It should be recalled that if the likelihood of confusion were to exist only for part of the relevant public, such a finding would be sufficient, inasmuch as it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (10/11/2011, T-22/10, (Representation of a letter on a pocket), EU:T:2011:651, § 120 and the case-law cited).

Moreover, even for the consumers who do not see any meaning in ‘ACTIVE’, the fact remains that the first element of the contested sign that consumers will encounter when perceiving the mark, represents exactly the same string of letters as the first six letters of the earlier mark, where the additional ‘A’ in the earlier mark might be easily overlooked. In this respect, 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).

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. In this case, the contested sign might be perceived as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian- and Greek-speaking part of the public. 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 well founded on the basis of the opponent’s European Union trade mark registration No 5 956 032. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 5 956 032 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), as well as the evidence on use with respect to these earlier rights.

Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Chantal VAN RIEL

Teodora Valentinova TSENOVA-PETROVA

Vita VORONECKAITE

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.