OPPOSITION No B 3 050 432

Wholesale Golf Supply & Services, Inc., 15 Mason, Suite A, 92618, Irvine, United States of America (opponent), represented by Dorsey & Whitney Llp, 199 Bishopsgate, EC2M 3UT, London, United Kingdom (professional representative)

a g a i n s t

Kbf Enterprises Limited, Unit 1 Guinness Road Trading Estate, Guinness Road, Trafford Park, M17 1SB Manchester, United Kingdom (applicant), represented by Wood Ip Limited, 2 Ivy Court, NN11 4EP Daventry, United Kingdom (professional representative).

On 03/04/2019 the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 432 is partially upheld, namely for the following contested goods:

Class 18: Bags; all-purpose carrying bags; sports bags; athletic bags; backpacks; rucksacks; duffel bags; cross-body bags; bags supported by internal frames; holdalls; top handle bags; trifold bags; drawstring bags; barrel bags; sling bags; leather and imitation leather bags; casual bags; canvas bags.

Class 28: Gymnastic and sporting articles and equipment; gymnasium equipment; weight lifting belts, weight lifting gloves, weight belt straps, wrist straps.

2. European Union trade mark application No 17 185 612 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 and services of European Union trade mark application No 17 185 612 ‘WARRIOR’ namely against all the goods in Classes 18, 28. The opposition is based on European Union trade mark registration No 13 636 352 ‘WARRIOR’. The opponent invoked Article 8(1)(a) and (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 28: Tables for table football; table football balls; foosball tables; table soccer, namely tables for table soccer, table soccer balls, and parts for tables for table soccer; golf clubs; golf club heads; golf club shafts; golf bags; golf club head covers; golf club hoods; snowboards; components and accessories for snowboards, namely, snowboard bindings and back packs especially adapted for storing snowboards; skateboards; components for skate boards, namely, trucks, bearings, decks, grip tape, risers and skateboard wheels; bags for skateboards; skim boards; accessories for surf, boards, body boards and skim boards, namely, fins, flippers, and leashes; and protective padding for athletic use, namely, knee pads, wrist pads, and elbow pads for skateboarding and snowboarding; excluding in connection with basketball.

The contested goods are the following:

Class 18: Leather and imitations of leather; unworked or semi-worked leather; animal skins; hides; trunks and travelling bags; travel cases; luggage; suitcases; handbags; shoulder bags; bags; shopping bags; beach bags; satchels; school bags; sports bags; portmanteaux; clutch bags; all-purpose carrying bags; tote bags; overnight bags; duffel bags; cross-body bags; bags supported by internal frames; holdalls; cabin bags; hands-free bags; top handle bags; trifold bags; drawstring bags; barrel bags; bumbags; bucket bags; messenger bags; sling bags; wristlets; knitted bags; leather and imitation leather bags; leather cases; leather shopping bags; cases; artificial fur bags; vanity cases; toiletry bags; casual bags; cosmetic bags; valises; beauty cases; make-up bags; toilet bags; gent's handbags; attaché bags; attaché cases; hat boxes; wallets; cases for keys; purses; backpacks; rucksacks; athletic bags; camping bags; bags for campers; pouches; canvas bags; slings; slings for babies; diaper bags; baby carriers; labels and tags for luggage; leather straps; shoulder straps; handbag straps; carriers for suits, for shirts and for dresses; credit card cases and holders; leather belts; umbrellas; parasols; parts and fittings for all the aforesaid goods; clothing for pets; clothing for animals; collars for animals; leashes for animals.

Class 28: Gymnastic and sporting articles and equipment; gymnasium equipment; weight lifting belts, weight lifting gloves, weight belt straps, wrist straps.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

The limitation made in the list of the opponent’s goods, namely excluding in connection with basketball, concerns all of the goods in this class. Therefore, it will not be explicitly mentioned in the comparison below, however it will be taken into account when comparing the goods.

Contested goods in Class 18

The contested bags; all-purpose carrying bags; sports bags; athletic bags; backpacks; rucksacks are general purpose and sports bags that can be used for carrying sporting equipment and clothing and their parts. The opponent’s bags for skateboards; golf bags and back packs especially adapted for storing snowboards are bags for carrying specific sports equipment. The goods have similar nature and purpose, they may coincide in manufacturer, distribution channels and users. The goods are similar.

The contested duffel bags; cross-body bags; bags supported by internal frames; holdalls; top handle bags; trifold bags; drawstring bags; barrel bags; sling bags; leather and imitation leather bags; casual bags; canvas bags are different types of bags to hold and transport belongings, including sporting goods and equipment and their parts. It follows, therefore, that such bags cannot be deemed completely dissimilar to the opponent’s bags for skateboards; golf bags and back packs especially adapted for storing snowboards, which are specifically designed to hold and carry different specific sports equipment. A golfer will carry his golf clubs in a caddy bag, and his golf clothing in a sports bag or a different type of bag as listed above in a same way as a skateboard or snowboard user would do. It is likely that these goods, that can be used together, will be found in the same outlets (in the specialist sports stores or other retail outlets for example) and be aimed at the same consumer. A fortiori the applicant’s various types of bags listed above are similar to the opponent’s goods to at least a low degree.

The remaining leather and imitations of leather; unworked or semi-worked leather; animal skins; hides; trunks; luggage; travelling bags; shoulder bags; knitted bags; suitcases; travel cases; handbags; shopping bags; beach bags; satchels; school bags; portmanteaux; clutch bags; tote bags; overnight bags; cabin bags; hands-free bags; bumbags; bucket bags; messenger bags; wristlets; leather cases; leather shopping bags; cases; artificial fur bags; vanity cases; toiletry bags; cosmetic bags; valises; beauty cases; make-up bags; toilet bags; gent's handbags; attaché bags; attaché cases; hat boxes; wallets; cases for keys; purses; camping bags; bags for campers; pouches; slings; slings for babies; diaper bags; baby carriers; labels and tags for luggage; leather straps; shoulder straps; handbag straps; carriers for suits, for shirts and for dresses; credit card cases and holders; leather belts; umbrellas; parasols; parts and fittings for all the aforesaid goods; clothing for pets; clothing for animals; collars for animals; leashes for animals; have a different nature, purpose (e.g. to carry documents, beauty products, etc.) compared to all the goods of the opponent. They do not coincide in manufacturers nor distribution channels and are neither complementary nor in competition, contrary to the arguments of the opponent. These goods are dissimilar.

The contested parts and fittings for all the aforesaid [bags; all-purpose carrying bags; sports bags; athletic bags; backpacks; rucksacks; travelling bags; luggage; shoulder bags; duffel bags; cross-body bags; bags supported by internal frames; holdalls; top handle bags; trifold bags; drawstring bags; barrel bags; sling bags; knitted bags; leather and imitation leather bags; casual bags; canvas bags] have different nature, purpose and methods of use compared to all the goods of the opponent. The mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). These parts and fittings are usually not sold independently and have different users. The goods are not complementary nor in competition. The goods are dissimilar.

Contested goods in Class 28

The contested sporting articles and equipment; include, as broader categories the opponent’s snowboards. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested gymnastic articles and equipment; gymnasium equipment are similar to the opponent’s snowboards. All the goods have the same nature and purpose being all articles for certain physical activity; they may have the same manufacturers and distribution channel, and also coincide in the users.

The contested weight lifting belts, weight lifting gloves, weight belt straps, wrist straps are accessories used by persons doing sports. They may coincide in manufacturers, distribution channels and users with the opponent’s protective padding for athletic use, namely, knee pads, wrist pads, and elbow pads for skateboarding and snowboarding. The goods are similar to at least a low degree.

2. The signs

WARRIOR	WARRIOR
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

Furthermore, some contested goods, as established above in section a) of this decision, were found to be similar to various degrees to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods.

The rest of the contested goods are dissimilar. As the 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

Ferenc GAZDA

Erkki Münter

Irina SOTIROVA

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.