OPPOSITION No B 2 996 422

Sioux Holding GmbH, Finkenweg 2-4, 74399 Walheim, Germany (opponent), represented by Kurz Pfitzer Wolf & Partner Rechtsanwälte mbB, Königstr. 40, 70173 Stuttgart, Germany (professional representative)

a g a i n s t

Hopperz, 10 rue de Penthievre, 75008 Paris, France (applicant), represented by Cabinet Le Guen Maillet, 3 Impasse de la Vigie CS 71840, 35418 Saint-Malo Cedex, France (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 996 422 is partially upheld, namely for the following contested goods:

Class 25: Clothing, footwear, headgear; Special footwear for sports; Headbands [clothing]; Swimming caps; Waterproof boots for fishing; Caps [headwear]; Sports caps; Belts [clothing]; Socks; Beach shoes; Athletics shoes; Shirts; Short-sleeve shirts; Tights; Athletic tights; Snow suits; Dry suits; Wetsuits for surface watersports; Suits; Beachwear; Ear muffs [clothing]; Studs for football boots; Sports singlets; Soccer bibs; Scarves; Gloves [clothing]; Winter gloves; Waistcoats; Cyclists' clothing; Skorts; Leotards; Kimonos; Swimming costumes; Singlets; Coats; Trousers; Sweatpants; Topcoats; Parkas; Robes; Sweaters; Gowns; Shorts; Jackets [clothing]; Sports jackets.

2. European Union trade mark application No 17 048 208 is rejected for all the above goods. It may proceed for the remaining goods and services.

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 17 048 208 for the figurative mark , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 14 574 041 for the word mark ‘HOPPER’. 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.

1. The goods

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

Class 25: Footwear.

The contested goods are the following:

Class 25: Clothing, footwear, headgear; Special footwear for sports; Headbands [clothing]; Swimming caps; Waterproof boots for fishing; Caps [headwear]; Sports caps; Belts [clothing]; Socks; Beach shoes; Athletics shoes; Shirts; Short-sleeve shirts; Tights; Athletic tights; Slips [underclothing]; Snow suits; Dry suits; Wetsuits for surface watersports; Suits; Beachwear; Ear muffs [clothing]; Studs for football boots; Knickers; Sports singlets; Soccer bibs; Scarves; Gloves [clothing]; Winter gloves; Waistcoats; Cyclists' clothing; Skorts; Leotards; Kimonos; Swimming costumes; Singlets; Coats; Trousers; Sweatpants; Topcoats; Parkas; Robes; Sweaters; Gowns; Footwear soles; Shorts; Underwear; Sweat-absorbent underwear; Jackets [clothing]; Sports jackets.

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.

Footwear is identically contained in both lists of goods.

The contested special footwear for sports; waterproof boots for fishing; beach shoes; athletics shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested studs for football boots and the opponent’s footwear are complementary and are sold through the same distribution channels. Furthermore, they target the same end users and are often produced by the same undertakings. Therefore, they are similar.

The contested clothing; belts [clothing]; socks; shirts; short-sleeve shirts; tights; athletic tights; snow suits; dry suits; wetsuits for surface watersports; suits; beachwear; sports singlets; soccer bibs; scarves; gloves [clothing]; winter gloves; waistcoats; cyclists' clothing; skorts; leotards; kimonos; swimming costumes; singlets; coats; trousers; sweatpants; topcoats; parkas; robes; sweaters; gowns; shorts; jackets [clothing]; sports jackets, which are all various kinds of clothing, and the opponent’s footwear have the same purpose of covering and protecting parts of the human body. They may also have the purpose of expressing style and appearance and therefore be aesthetically complementary if viewed upon as fashion articles. Furthermore, they are often found in the same retail outlets, and consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, these goods target the same end users, and many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar.

The contested headgear; headbands [clothing]; swimming caps; caps [headwear]; sports caps; ear muffs [clothing], which are all different kinds of headwear, and the opponent’s footwear have the same purpose of covering and protecting parts of the human body. Furthermore, they may have the purpose of expressing style and appearance and — viewed upon as fashion articles — they may, therefore, also be aesthetically complementary. Moreover, they are usually sold through the same distribution channels, and customers shopping headgear will assume that footwear is sold in the same department or shop and vice versa. Moreover, these goods are aimed at the same end users, and many producers and designers will often design and manufacture both headwear and footwear. Therefore, they are similar. This finding is valid even for, for example, the contested swimming caps, as the opponent’s footwear would include ‘swimming footwear’ due to the broad way in which it is formulated.

The contested footwear soles are the undersides of shoes; in other words, they are a part of a shoe. The opponent’s footwear has the primary purpose of covering and protecting the feet and may have an aesthetic aim as well. It follows that these goods have a different nature, purpose and method of use. Although they may be used together, this fact is not sufficient to consider them complementary. Moreover, they are not in competition. Furthermore, they are usually not found in the same shops, and they are produced by different undertakings. Although they may target the same end users, this circumstance is not adequate for a finding of similarity. Therefore, these goods are dissimilar.

The contested slips [underclothing] and knickers are underwear, which, like the contested underwear; sweat-absorbent underwear is clothing worn next to one’s skin under one’s other clothes. These goods have a different nature to the opponent’s footwear. Although they are all used to cover and protect certain parts of the body, their purpose differs in that footwear is meant to be seen and protect from the elements, while underclothing is not. Moreover, they have a different method of use and are not in competition. Furthermore, underwear and footwear are usually not sold in the same department, and companies that produce underwear rarely produce footwear and vice versa. Although they may target the same end users, this fact is not sufficient for a finding of similarity. Therefore, these goods are dissimilar.

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, and the degree of attention paid is considered to be average.

3. The signs and the distinctiveness of the earlier mark

HOPPER
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 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 ‘HOPPER’, which makes up the whole of the earlier mark and would be clearly identified within the contested sign, has several meanings in English including ‘a person or thing that hops’ (https://www.collinsdictionary.com/dictionary/english/hopper on 18/09/2019). The additional letter, ‘Z’, at the end of the verbal element of the contested sign would be perceived as a pluralisation of ‘HOPPER’ (‘HOPPERS’) at least for a substantial part of the English-speaking part of the relevant public. However, neither ‘HOPPER’ nor ‘HOPPERZ’ has any meaning in certain territories, for example in France, Italy and Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French, Italian- and Spanish-speaking part of the public.

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. Since the earlier trade mark has no meaning from the perspective of the public in the territories referred to above, the distinctiveness of the earlier mark must be seen as normal.

It follows that the distinctiveness of the contested sign’s verbal element is also normal. As regards the remaining components of the contested sign, the figurative element is made up of simple geometrical shapes and is meaningless and, therefore, distinctive. The structure, typeface and colours are not particularly notable and will, therefore, not attract the consumer’s attention.

Neither sign has any dominant element, as there is no element that is clearly more eye-catching than others.

When signs consist of both verbal and figurative components, 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).

Moreover, 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.

Visually, the signs coincide in ‘HOPPER*’. They differ in the last letter, ‘Z’, and in the figurative elements of the contested sign, which have less impact for the reasons explained above.

As the earlier mark makes up most of the only verbal element in the contested sign, the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛HOPPER’, present identically in both signs. The pronunciation differs in the sound of the last letter ‛Z’ of the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning in the territories referred to above. 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.

4. 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).

As concluded above, the goods are partly identical, partly similar and partly dissimilar. The relevant public is the public at large and the degree of attention paid is considered to be average. The signs are visually similar to at least an average degree, aurally highly similar and the conceptual aspect does not influence the assessment of the similarity of the signs.

Generally in clothes shops (and in shops selling footwear and headgear), customers can themselves either choose the clothes (and footwear and headgear) they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing (and footwear and headgear) is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual similarities between the signs are particularly relevant when assessing the likelihood of confusion between them.

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).

Moreover, 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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested 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 (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-, Italian- and Spanish-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. 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 identical or similar to those of the earlier trade mark.

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.

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

Helen Louise MOSBACK

Mads Bjørn Georg JENSEN

Chantal VAN RIEL

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.