OPPOSITION No B 2 985 250

Shell Brands International AG, Baarermatte, 6340 Baar, Switzerland (opponent), represented by Carlos Polo & Asociados, Profesor Waksman 10, 28036 Madrid, Spain (professional representative)

a g a i n s t

OTCF S.A., ul. Grottgera 30, 32-020 Wieliczka, Poland (applicant), represented by Merx Patentes y Marcas S.L.P., Calle Pinar 5, 28006 Madrid, Spain (professional representative).

On 23/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 985 250 is upheld for all the contested goods.

2. European Union trade mark application No 16 889 412 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 16 889 412 for the figurative mark . The opposition is based on European trade mark registration No 11 693 959 for the word mark ‘SHELL’. The opponent invoked Article 8(1)(b) and Article 8(5) 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, inter alia, the following:

Class 25: Clothing; footwear; headgear;

The contested goods are the following:

Class 25: Clothing; footwear; headgear; neckwear; parkas; neckerchieves; underwear; thermal underwear; bras; jumpsuits; tracksuits; ski and snowboard shoes and parts thereof; boots for sports; formal evening wear; sweatsuits; long jackets; waistcoats; swimming caps; head scarves; baseball caps; blouses; vests; running vests; jumpers; rain boots; flip-flops; t-shirts; balaclavas; snowsuits; anti-sweat underwear; clothing for children; sports jackets; coats; golf shirts; tank tops; shirts; hats; shoulder wraps for clothing; ear muffs; waterproof outerclothing; shoes; leg-warmers; rain suits; sports overuniforms; clothing for gymnastics; evening dresses; denims [clothing]; stuff jackets; sportswear; waterproof clothing; undershirts; jackets; waistbands; headbands; head sweatbands; bathwraps; waist belts; gloves for apparel; sandals; socks; trousers; shorts; swimming suits; skirts; leggings [trousers]; leggings [leg warmers]; sports headgear [other than helmets]; sleeveless jerseys; mufflers; scarfs; dresses; shorts; jogging tops; tunics; wind resistant jackets; corsets; flat caps.

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.

Clothing; footwear; headgear are identically contained in both lists of goods.

The contested neckwear; parkas; neckerchieves; underwear; thermal underwear; bras; jumpsuits; tracksuits; formal evening wear; sweatsuits; long jackets; waistcoats; blouses; vests; running vests; jumpers; t-shirts; snowsuits; anti-sweat underwear; clothing for children; sports jackets; coats; golf shirts; tank tops; shirts; shoulder wraps for clothing; ear muffs; waterproof outerclothing; leg-warmers; rain suits; sports overuniforms; clothing for gymnastics; evening dresses; denims [clothing]; stuff jackets; sportswear; waterproof clothing; undershirts; jackets; waistbands; waist belts; gloves for apparel; socks; trousers; shorts; swimming suits; skirts; leggings [trousers]; leggings [leg warmers]; sleeveless jerseys; mufflers; scarfs; dresses; shorts; jogging tops; tunics; wind resistant jackets; corsets are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested ski and snowboard shoes; boots for sports; rain boots; flip-flops; shoes; sandals are included in the broad category of the opponent’s footwear. Therefore, they are identical. As regards, the parts of the ski and snowboard shoes, these are considered at least similar to the opponent’s footwear, since those goods usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested swimming caps; head scarves; baseball caps; balaclavas; hats; headbands; head sweatbands; sports headgear [other than helmets]; flat caps are included in the broad category of the opponent’s headgear Therefore, they are identical.

The contested bathwraps are loose pieces of clothing, usually made of thick towelling material, worn especially before or after a bath. They are similar to the opponent’s clothing in Class 25 as they usually coincide in producer, relevant public, distribution channels and method of use.

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 or similar are directed at the public at large. The degree of attention may vary from average to higher than average, as a part of the relevant public and in relation to some of the relevant goods (e.g. waterproof outerclothing; snowsuits; ski and snowboard shoes) will tend to pay particular attention when examining those goods in order to obtain the best possible protection against the cold and adverse weather conditions, as well as paying attention to their technical qualities for enhanced performance and comfort (15/11/2011, T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, §§ 30,31).

3. The signs

SHELL
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 word mark. In case of word marks it is irrelevant whether they are written in lower or upper case letters or in a combination thereof since it is the word as such that is protected and not its written form.

The contested mark is a figurative mark consisting of the stylized verbal element ‘4F’ placed in the upper part of the mark, followed by the verbal element ‘Shell’, the latter written in standard black typeface and a significantly bigger size.

The English term ‘shell’ is mostly known by the English-speaking public with its meanings of ‘the hard protective outer case of a mollusc or crustacean’ and ‘the hard protective covering of e.g. nut, egg or an animal (such as tortoise or crab), see e.g. Oxford Dictionaries online. Furthermore, a part of the English-speaking public will perceive the verbal element ‘shell’ as a reference to ‘shell fabric’, which is the outer layer of clothing and is waterproof and windproof or have good mechanical strength Therefore, in relation to some of the goods in question (e.g. snowsuits; sports jackets; coats; waterproof outerclothing; waterproof clothing; wind resistant jackets), it will be perceived as an indication of their characteristics and is considered non-distinctive. On the other hand, this element (with neither of its meanings) does not belong to the category of basic English words that a significant part of the relevant public in the European Union would be familiar with. Therefore, the part of the public that does not speak English will not know that the term ‘shell’ could refer to i.a. shell fabric. Consequently, for this part of the public, this term is meaningless and thus normally distinctive.

In light of the foregoing and bearing in mind that the similarities between signs are higher where the coincidences reside in distinctive elements, the Opposition Division will assess the signs from the perspective of the non-English-speaking part of the general public such as the relevant public in Germany and Spain.

Such a focus is justified given that likelihood of confusion must not exist in all Member States and in all linguistic areas of the European Union. It is a result of the unitary character of the European Union trade mark, laid down in Article 1(2) EUTMR, that an earlier European Union trade mark has identical protection in all Member States. Earlier European Union trade marks may therefore be relied upon to challenge any subsequent application for a trade mark which would prejudice their protection, even if this is only in relation to the perception of consumers in part of the European Union. ‘A part’ of the European Union can consist of only one Member State (14/12/2006, T-81/03, T-82/03 and T-103/03, ‘Venado’, EU:T:2006:397, § 76 and 83).

As regards the element ‘4F’ of the contested sign it has not meaning in relation to the relevant goods. The opponent argues that this element is ‘a customary indication used in the current language and in the bona fide and established practices of the trade and has, therefore, no-distinctive character in connection with the applied goods.’[sic], however does not elaborate any further, neither it provides relevant examples. In the Opposition Division view, the combination of the number 4 and the capital letter F does not describe any characteristics of the relevant goods, neither is it used, for example; as a reference to the clothing size, such as letters ‘S’, ‘M’ or numbers 38, 42. Therefore, the element ‘4F’ is considered as normally distinctive.

The applicant claims that the size is not only factor that determines whether an element is dominant or not. In addition, it claims that the stylisation of the element ‘4F’ in the contested sign must be considered as very elaborated, fanciful and sophisticated that the relevant public will not be able to ignore.

Nevertheless, the number 4 and capital letter F are only slightly stylized and there are no further figurative striking elements, which would draw the consumer attention.

In fact, the Opposition Division finds that since the element ‘4F’ is not particularly stylized, is positioned in the upper part of the contested sign and is written in a significantly smaller sized letters than the element ‘Shell’, this element plays a secondary role there.

Consequently, the verbal element ’Shell’, due to its size, and central position in the contested sign, is more outstanding than the verbal element ‘4F’.

Visually, the signs coincide in the verbal element ‘SHELL’, which is the entire earlier mark and the most eye-catching element of the contested sign and differ in the additional (secondary) element ‘4F’ in the contested sign as well as in its stylisation.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the verbal element ‘SHELL’, present identically in both signs. The Opposition Division finds that it is very likely that the contested sign will be pronounced at least by a part of the relevant public as ‘SHELL’ only. This is due to the position and size of the element ‘4F’. In that case, the two signs are aurally identical. In a rather unlikely event, the element ‘4F’ will be pronounced by a part of the public; the signs are still aurally similar to a high degree.

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

Conceptually, neither of the signs has a meaning as a whole for a part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

If, despite its smaller size and position, the element ‘4F’ will be perceived by a part of the public, this part of the public will recognize the concept of the number four and the letter ‘F’ there. In that case, although the public in the relevant territory will perceive the meanings of these elements in the contested sign, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for a part of the relevant public.

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.

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

5. Global assessment, other arguments and conclusion

The 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).

In the present case, the goods in question are identical and similar and target the public at large with an average to higher degree of attention (in respect of some of the goods).

Although, as argued by the applicant, more attention is usually paid to the beginning of a mark, the Opposition Division needs to take into account and weigh up all the relevant factors that have an impact during the general assessment of likelihood of confusion, and the fact that the signs have different beginnings is only one of them.

In the case at hand, the marks are similar due to their coincidence in the verbal element ‘SHELL’ which constitutes the earlier mark and has an independent distinctive character in the contested sign. In addition, and contrary to the applicant’s arguments, in the Opposition division view, the element ‘SHELL’ is the most outstanding element of the contested sign since due to its size and position (in the upper left part) the additional element ‘4F’ plays a secondary role.

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16).

The Opposition Division notes, that it is a common practice for manufacturers, service providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, modernized image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices.

While the aforementioned differences between the signs will not be overlooked, since the element ‘SHELL’ will be easily recognized and perceived in the contested sign, the Opposition Division finds that the relevant consumer may perceive that sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (see by analogy 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, the public may attribute the same (or an economically linked) commercial origin to the goods that are identical and similar, even where the public’s degree of attention is higher.

Considering all the above, there is a likelihood of confusion on the part of the Spanish- and German-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.

The applicant argues that the element ‘4F’ of its EUTM application has a reputation and refers to the Opposition Division decisions No B 2 701 632 and B 2 701 699, and to the decision of the Cancellation Division No 12388 C in order to substantiate this claim. In the applicant’s opinion, the differences between the signs, together with the fact that the element ‘4F’, is a reputed mark of the applicant, outweigh the limited similarities between marks in question.

In that regard and for the sake of completeness, the Opposition Division notes that apart from the fact that the element ‘4F’ constitutes only a part of the contested sign, where in addition it plays a secondary role, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the foregoing, the opposition is well founded on the basis of the opponent’s aforementioned European Union trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

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

Martin EBERL

Renata COTTRELL

Tu Nhi Van

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.