OPPOSITION No B 2 997 404

Seven Görgens GmbH, Mühlenbach 32-36, 50676 Köln, Germany (opponent), represented by Selting Rechtsanwälte, Schildergasse 32-34, 50667 Köln, Germany (professional representative)

a g a i n s t

Kult Venn SAI, Staraja Rusas 12 – 13, 1048 Riga, Latvia (applicant).

On 08/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 997 404 is upheld for all the contested goods, namely

Class 25: Clothing; running suits; millinery; shoes; tee-shirts; knit shirts; printed t-shirts; short-sleeved or long-sleeved t-shirts; trousers; casual trousers; waterproof trousers; walking breeches; trousers for children; trousers shorts; cycling shorts; sweatpants; slacks; sports pants; denims [clothing].

2. European Union trade mark application No 17 040 304 is rejected for all the contested goods. It may proceed for the remaining uncontested goods.

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

REASONS

The opponent filed an opposition some of the goods of European Union trade mark application No 17 040 304 (figurative mark), namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 5 841 952 ‘Kult’ (word 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.

a) The goods and services

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

Class 35: Retail services in relation to clothing, outer clothing, shirts, blouses, jumpers, sweaters, t-shirts, trousers, suits, coats, raincoats, jackets, overalls, underwear, women's underwear, brassieres, bodysuits, stockings, socks, scarves, ties, belts, suspenders, footwear, boots, sports shoes, slippers, sandals, leatherwear, headgear, caps, hats, babywear, dressing gowns, pyjamas, swimsuits, swimming trunks, bathrobes, bathing caps, bath sandals, carnival costumes, bed blankets, bed linen, cushions, furniture coverings, curtains, towels, table cloths.

The contested goods are the following:

Class 25: Clothing; running suits; millinery; shoes; tee-shirts; knit shirts; printed t-shirts; short-sleeved or long-sleeved t-shirts; trousers; casual trousers; waterproof trousers; walking breeches; trousers for children; trousers shorts; cycling shorts; sweatpants; slacks; sports pants; denims [clothing].

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.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the contested goods, which consist of the general category of clothing and various specific items of clothing, headgear and footwear, are similar to a low degree to the opponent’s retail services in relation to clothing, headgear and footwear.

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 to a low degree are directed at the public at large whose degree of attention is average.

c) The signs

Kult
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 trade mark ‘Kult’ that means ‘cult’ in some EU languages like German, Danish and Polish, and it will be associated with its equivalent in other languages (like ‘culto’ in Spanish and Italian, ‘cult’ in Romanian and ‘culte’ in French) as referring to ‘a system of religious veneration and devotion directed towards a particular figure or object’, which has no meaning in relation to the relevant services. The applicant claims that ‘Kult’ means ‘good’ in Norwegian in which case it is laudatory, however since Norwegian is not an EU language this claim should be disregarded. Consequently, the earlier trade mark has an average degree of distinctiveness.

The opposed sign is a figurative trade mark formed by a colourful representation of a bike and a verbal element. The fairly standard representation of the bike will be descriptive for the contested goods since they are different clothing items that can be not only used when biking but also specifically conceived and adapted for biking; consequently, this figurative element will be non-distinctive. The verbal sequence under the figurative element is formed by a more eye-catching sequence ‘KULT VENN*’, where ‘KULT’ is depicted in standard upper fonts in dark grey and ‘VENN*’ is displayed in similar fonts but in yellow. The word ‘KULT’ will be associated with the same meaning as the earlier mark, and the word ‘VENN’ has no meaning for the relevant public and will be perceived as a fanciful element with an average degree of distinctiveness. On the bottom of the sign the slogan ‘stands for good friend’ is displayed in much smaller letters, which will be perceived as a less prominent element, and will very likely be disregarded by the relevant public. Both the representation of the bike and the sequence ‘KULT VENN*’ will be perceived as co-dominant elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

However, 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 the word ‘KULT’ which is the earlier mark that is entirely reproduced at the beginning of the contested sign. However, they differ in the non-distinctive representation of a bike, the word ‘VENN’ and the verbal sequence ‘stands for good friend’ which is barely visible. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in ‘KULT’ present identically in both signs. However, the pronunciation differs in the sound of the word ‘VENN’. The phrase ‘stands for good friend’ creates another difference, albeit negligible since due to its size and position it will most likely not be pronounced. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark and the beginning of the contested sign will be associated with the same meaning. The figurative element of the contested sign will convey a meaning however this element’s impact is not so important since it is considered to be descriptive for the contested goods. Therefore, the signs are 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.

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 services 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.

In the present case, the goods are similar to a low degree to the opponent’s services and target the public at large; whose degree of attention is average. Furthermore, the earlier mark has an average degree of distinctiveness. The signs are visually, aurally and conceptually similar to an average degree.

The Opposition Division considers that a likelihood of confusion exists in the present case as the coinciding element ‘KULT’ constitutes in its entirety the earlier trade mark and the first word element of the contested mark with an independent distinctive role. The additional elements existent in the contested sign are either non distinctive or non-dominant or they occupy a secondary position and have no concept.

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 this case the similarity between the marks offsets any lesser degree of similarity between the goods and services.

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).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods 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 public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 841 952. It follows that the contested trade mark must be rejected for all the contested goods.

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

Zuzanna STOJKOWICZ

Ioana MOISESCU

Birgit FILTENBORG

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.