OPPOSITION No B 3 021 857

Jako AG, Amtstr. 82, 74673 Mulfingen-Hollenbach, Germany (opponent), represented by Beiten Burkhardt, Ganghoferstr. 33, 80339 München, Germany (professional representative)

a g a i n s t

Asport Group, Tęczowa 2B, 43-340 Kozy, Poland (applicant), represented by Kancelaria Rzecznika Patentowego Andrzej Rygiel, ul. Bohaterów Warszawy 26. Lok. F, 43-300 Bielsko-Biała, Poland (professional representative).

On 26/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 021 857 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 988 404 , namely against all the goods and services in Classes 28 and 35. The opposition is based on European Union trade mark registration No 10 611 416 for goods in Classes 18, 25 and 28 and European Union trade mark registrations No 7 224 488 for goods in Classes 18, 25 and 28 and No 11 898 491 for services in Classes 35, 36 and 41, both for the figurative 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.

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 10 611 416.

a) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier figurative mark consists of a circle containing two parallel lines originating from its lower-left internal part and significantly expanding their thickness rightward. The line on the top is shorter than the one below. The sign is depicted in black.

The contested figurative mark is composed of two dark semi-circular shapes, which are closer on their lower-left side while progressively detaching on their top right side. Between these two figures there are two oblique lines, which are slightly expanding their thickness towards their top right side. The black line on the top is forwardly placed in respect of the below red one. In addition, these are closer on their left side while progressively more distant in their right one. This figurative element is followed by the word ‘ISENZO’ portrayed in a slightly stylized upper case typeface.

The signs at issue do not convey any meaning for the relevant public and are, therefore, distinctive. The Opposition Division, contrary to the opponent’s submissions, do not find plausible that the relevant public would recognize the element ‘ISENZO’ as a Zulu word meaning ‘movement, activity, dynamics’. It is not conceivable either that the Italian-speaking part of the public would perceive this element with the meaning of ‘il senso’ (in English, ‘the sense’).

Contrary to the opponent’s submissions, the Opposition Division considers that the signs have no element that could be considered clearly more dominant than other elements. The signs at issue do not contain any components that due to their position, size, dimensions and/or use of colours would be visually outstanding in respect to others.

Visually, the sole point of contact between the signs under comparison is the presence of two oblique lines, which are expanding their thickness from the bottom left to the top right. However, this figurative component is displayed in a significantly different way within the marks at stake. In particular (i) the thicknesses of the earlier mark’s lines are substantially wider than those of the contested application (ii) the lines in the earlier mark are parallel and originate from the same point whereas those of the contested application originate from different positions (i.e. the one on the top is forwardly placed in respect of the one below) and are progressively more distant from each other on the right side (iii) the earlier mark’s upper line is shorter than the one below, while in the contested application these appear of the same length (iv) the contested application’s lower line is displayed in red while that of the earlier sign is black (v) the lines in the earlier mark are totally included within a black circle’s perimeter (white internally) while those in the contested application are partially placed among two semi-circular black shapes. In addition, the signs differ in the contested sign’s verbal element ‘ISENZO’.

Taking into account that the average consumer normally perceives a sign as a whole without analysing its various details or comparing them side by side, it is not likely that any visual resemblance between the marks would be noted. This particularly applies in the present case, taking into account the above explained substantial differences in the representation of the lines contained in both of them. Therefore, it is concluded that the signs are visually not similar.

Purely figurative signs are not subject to a phonetic assessment. As the earlier sign is purely figurative, it is not possible to compare them aurally.

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 do not coincide in any relevant aspects, they are dissimilar.

b) Other arguments

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings as the trade marks referred therein do not share any visual commonalities with those of the present proceedings. In specific – and contrary from the care at issue – in the cited cases T-81703; T-82/03 and T-103/03 the coinciding figurative element dominates the conflicting signs, which have significant visual similarities whereas in the cited opposition No B1924896 the contested sign produced almost a mirror image of the earlier mark.

c) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 7 224 488 for goods in Classes 18, 25 and 28, for the figurative mark .

 European Union trade mark registration No 11 898 491 for services in Classes 35, 36 and 41, for the figurative mark .

The other earlier rights invoked by the opponent are also dissimilar to the contested mark. This is because they contain the additional word ‘JAKO’ that would add even more visual, aural and conceptual differences (at least in some languages of the European Union, such as, for instance, in Polish where – as also stated by the applicant – this word will be perceived with the meaning of ‘as’). It follows that the above finding is valid, a fortiori, with respect to these earlier trademarks.

For the sake of completeness, it must be stressed that this finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness, as claimed by the opponent. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marianna KONDAS

Aldo BLASI

Marta GARCÍA COLLADO

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.