OPPOSITION No B 3 036 483

Baur Versand (GmbH & Co KG), Bahnhofstr. 10, 96224, Burgkunstadt, Germany (opponent), represented by Nicola Franzky, c/o Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179, Hamburg, Germany (employee representative)

a g a i n s t

Guangzhou Shang Tai Fang International Co. Ltd., 401, self-code 90th, Zhong Wei Road Zhong Cun Street, Panyu District, Guangzhou, China (applicant), represented by Arcade & Asociados, C/Isabel Colbrand 6-5ª planta, 28050 Madrid, Spain (professional representative).

On 28/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 036 483 is upheld for all the contested goods, namely:

Class 25: shoes; boots; sports shoes; climbing boots [mountaineering boots]; climbing footwear.

2. European Union trade mark application No 17 254 004 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 254 004 ‘element airsoft’ (word mark), namely against all the goods in Class 25. The opposition is based on German trade mark registration No 1 061 634 ‘airsoft’ (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.

1. The goods

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

Class 25: shoes and boots.

The contested goods are the following:

Class 25: shoes; boots; sports shoes; climbing boots [mountaineering boots];climbing footwear.

Shoes; boots are identically contained in both lists of goods.

The contested sports shoes; climbing boots [mountaineering boots]; climbing footwear are included in the broad categories of or overlap with the opponent’s shoes; boots. Therefore, they are identical.

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 are directed at the public at large.

The degree of attention for the relevant goods will be average.

3. The signs

airsoft	element airsoft
Earlier trade mark	Contested sign

The relevant territory is Germany.

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, ‘airsoft’, which is meaningless for the relevant public. The sign has no meaning in relation to the relevant goods and has an average degree of distinctiveness.

The contested sign is also a word mark composed of the words ‘element’ and ‘airsoft’. The word ‘element’ will be understood by the relevant public as ‘an essential or characteristic part of something abstract’ (information extracted from English Oxford Living Dictionaries on 19/11/2018 at https://en.oxforddictionaries.com/definition/element) and the word ‘airsoft’ is meaningless, as mentioned above, for the relevant public. The sign is not descriptive, allusive or otherwise weak/non-distinctive in relation to the relevant goods and therefore has an average degree of distinctiveness. There is no element more dominant or distinctive than other elements in the contested sign.

Visually, the signs coincide in the word ‘airsoft’, which is the earlier mark’s sole word. However, they differ in the word ‘element’ of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛airsoft’, present identically in both signs. The pronunciation differs in the sound of the letters ‛element’ of the contested mark, which have no counterparts in the earlier sign.

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. Although the public in the relevant territory will perceive the meaning of the word ‘element’ of the contested sign, as explained above, 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.

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.

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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical.

The signs are visually and aurally similar to an average degree, and conceptually not similar. The earlier sign is entirely included in the contested sign as an independent distinctive element. According to case-law, where the goods or services are identical there may be a likelihood of confusion on the part of the public where the contested sign is composed by juxtaposing other word elements with a registered mark that has normal distinctiveness and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 37).

Bearing in mind the identity between the goods, it is considered that the difference between the signs is not sufficient to outweigh their average degree of visual and aural similarity, resulting from the commonality in the element ‘airsoft’, which is an independent distinctive element in the contested sign and constitute the entire earlier mark.

Considering all the above, and taking into account the relevant public’s average degree of attention, there is a likelihood of confusion on the part of the public. 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, in the present case, 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), due to the presence in both signs of the independent distinctive element ‘airsoft’.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 1 061 634. 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 (formerly 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

Liliya YORDANOVA Patricia LÓPEZ FERNÁNDEZ DE CORRES Dorothée SCHLIEPHAKE

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.