OPPOSITION No B 3 030 593

Dopat, S.A., València Parc Tecnologic, C/ Charles Robert Darwin, 34-36, 46980 Paterna (Valencia), Spain (opponent), represented by Elisa Peris Despacho Profesional, S.L., C/ Profesor Beltran Baguena, Nº 4, Of. 116 (Edificio Trade Center), 46009 Valencia, Spain (professional representative)

a g a i n s t

Hermann Hartje KG, Deichstr. 120-122, 27318 Hoya, Germany (applicant), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft Mbb, Hollerallee 73, 28209 Bremen, Germany (professional representative).

On 29/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 030 593 is upheld for all the contested goods and services, namely:

Class 25: Clothing; footwear; headgear; cyclists’ clothing.

Class 35: Retailing, wholesaling and/or mail order, in particular via the internet, of bicycles and parts therefor, and for electric bicycles and parts therefor, clothing, footwear, headgear, cyclists’ clothing; on-line advertising on a computer network; public relations services; retail business organisation and management consultancy; sales promotion for others; compilation of information into computer databases.

2. European Union trade mark application No 17 366 006 is rejected for all the contested goods and services. 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 and services of European Union trade mark application No 17 366 006 , namely against all the goods and services in Classes 25 and 35. The opposition is based on, inter alia, European Union trade mark registration No 16 253 601 . 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 16 253 601 , which is not subject to proof of use and covers a wider scope of goods and services.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; office functions; procurement services for others (purchasing of goods and services for other businesses); market research; sponsorship search; business research; commercial or industrial management assistance; compilation of information into computer databases; publicity columns preparation; shop window dressing; demonstration of goods; dissemination of advertising matter; sample distribution; marketing studies; invoicing; organisation of trade fairs for commercial or advertising purposes; commercial administration of the licensing of the goods and services of others; consumers (commercial information and advice for -) [consumer advice shop]; marketing services; fashion shows for promotional purposes (organization of -); exhibitions for commercial or advertising purposes; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; sales promotion for others; on-line advertising on a computer network; opinion polling; wholesaling and retailing in shops and via global computer networks of all kinds of footwear, clothing, headgear, animal skins, hides, trunks and travelling bags, umbrellas, backpacks, pocket wallets, haversacks, handbags and bags for travel, parasols and walking sticks, whips, harness and saddlery.

The contested goods and services are the following:

Class 25: Clothing; footwear; headgear; cyclists’ clothing.

Class 35: Retailing, wholesaling and/or mail order, in particular via the internet, of bicycles and parts therefor, and for electric bicycles and parts therefor, clothing, footwear, headgear, cyclists’ clothing; on-line advertising on a computer network; public relations services; retail business organisation and management consultancy; sales promotion for others; compilation of information into computer databases.

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

The term ‘in particular, used in the applicant’s list of services in Class 35, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

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.

Contested goods in Class 25

The contested clothing; footwear; headgear; cyclists’ clothing are identical to the opponent’s clothing, footwear, headgear, either because they are identically contained in both lists or because the opponent’s goods include the contested goods.

Contested services in Class 35

Compilation of information into computer databases; sales promotion for others are identically contained in both lists of services.

The contested retail business organisation and management consultancy are included in the broad category of the opponent’s business management. The contested on-line advertising on a computer network; public relations services are included in the broad category of the opponent’s advertising. Therefore, these services are identical.

The contested retailing, wholesaling and/or mail order, in particular via the internet, of bicycles and parts therefor, and for electric bicycles and parts therefor, clothing, footwear, headgear, cyclists’ clothing are considered at least similar to the opponent’s wholesaling and retailing in shops and via global computer networks of all kinds of footwear, clothing, headgear, animal skins, hides, trunks and travelling bags, umbrellas, backpacks, pocket wallets, haversacks, handbags and bags for travel, parasols and walking sticks, whips, harness and saddlery. They have the same nature, since both are retail/wholesale (whether via mail order or not) services, the same purpose of allowing consumers to conveniently satisfy different shopping needs and the same method of use. Furthermore, at least those related to retailing and wholesaling of clothing, footwear, headgear coincide in relevant public and distribution channels.

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 and services found to be identical or at least similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is average in relation to the goods in Class 25. In relation to the services in Class 35, the degree of attention may vary from average (e.g. in relation to retail services) to relatively high (e.g. in relation to business management services), depending on the nature of the services, their price or the impact they may have on business.

3. 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 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 earlier mark is a figurative mark composed of the verbal element ‘COOLWAY’, written in standard upper-case letters, with its second and third letters depicted as a solid circle and a solid square. There are figurative elements depicting a solid circle and a solid square above the verbal element. The contested sign is a figurative mark composed of the verbal element ‘CONWAY’, written in fairly common, italic, upper-case letters.

As correctly pointed out by the applicant, the relevant consumers, when perceiving a verbal element, may break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58) and the English-speaking part of the public may perceive the marks as composed of meaningful elements. However, this will not be the case for the non-English-speaking part of the public. Therefore, taking into account that similarities between signs are higher where the coincidences reside in distinctive elements, and in particular that when understood as meaningful, the verbal element ‘COOLWAY of the earlier mark may allude to characteristics of some of the goods and/or services in question, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public who will perceive the verbal elements ‘COOLWAY’ (with two letters depicted as geometric shapes) of the earlier mark and ‘CONWAY’ of the contested sign as meaningless and, therefore, having an average degree of distinctiveness.

The figurative elements of the earlier mark are two separate basic geometric shapes, which do not form any distinguishing composition. Despite their dominant position over the smaller verbal element, they will not be attributed much trade mark significance by the relevant consumers and are, therefore, weak. Moreover, 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). Consequently, the verbal element of the earlier mark is the only element that the relevant consumers will refer to. Moreover, it is the most distinctive element of the earlier mark.

Visually, the signs coincide in the sequence of letters ‘CO(*)*WAY’, which constitutes five out of seven letters of the verbal element of the earlier mark and five out of six letters of the contested sign. The signs differ in the additional letter ‘O’ (depicted as a square) as well as in the fourth letter ‘L’ of the earlier mark and the third letter ‘N’ of the contested sign. The signs also differ in the figurative elements of the earlier mark and in stylisation of the verbal elements in both signs.

The applicant argues that the verbal elements of the signs differ in their lengths and the earlier mark is highly stylised and contains figurative elements, which are unlikely to go unnoticed by the relevant consumers. Although the verbal element ‘COOLWAY’ of the earlier mark is composed of seven letters and the verbal element ‘CONWAY’ of the contested sign is of six letters, the one-letter difference between these elements is not of particular importance and it may even go unnoticed by the relevant consumers who usually do not analyse the particular details of the marks and are, in general, not aware of the exact number of letters in their verbal elements. The stylisation of the verbal element of the earlier mark is not of such a nature as to preclude the relevant consumers perceiving the word ‘COOLWAY’, since the letters ‘C**LWAY’ are depicted in fairly common typeface, the circle in the place of the second letter clearly resembles the letter ‘O’ and the square in the place of the third letter, taking into account that it is placed in the middle of the word and that the relevant consumers usually tend to read the verbal elements, will also be perceived as a letter ‘O’.

The signs have the same first two and final three letters and the two-letter (or one in the contested sign) difference in the middle of these verbal elements will not distract the consumers’ attention from the abovementioned commonality. Moreover, the figurative elements of the earlier mark, which, although dominant, are weak and will not have much of an impact on the relevant consumers. Therefore, 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 ‘CO(*)*WAY’, present identically in the verbal elements of both signs. The pronunciation differs in the sound of their respective middle letters, namely ‘L’ in the earlier mark and ‘N’ in the contested sign. The pronunciation also differs in the sound of an additional letter ‘O’ in the middle of the earlier mark.

However, the consonants in the middle of the verbal elements, ‘L’ of the earlier mark and ‘N’ of the contested sign, will not result in any striking sounds. The aural differences between the second and third letters ‘OO’ of the earlier mark and the second letter ‘O’ of the contested sign, irrespective of whether the letters ‘OO’ in the earlier mark are pronounced as two sounds ‘O’ or as one longer sound, are minor as it is, in principle, the same sound.

As the slight difference in pronunciation in the middle of the marks will not create any significant aural difference between them, the signs are aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory subject of the current assessment. 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. 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 and 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, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

5. 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/or 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).

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.

As concluded above, the contested goods are identical and the contested services are either identical or at least similar to the opponent’s goods and services. They target the public at large and business customers. The degree of attention varies from average to higher than average. The distinctiveness of the earlier mark is normal.

As detailed in section c), the earlier mark and the contested sign are visually and aurally similar to at least an average degree and the conceptual aspect does not influence the assessment of similarity between the signs. The contested sign reproduces the majority of the letters of the distinctive verbal element of the earlier mark. Although the two letters ‘OO’ in the verbal element of the earlier mark are depicted in a stylised manner (in the form of geometric shapes) and the earlier mark has two figurative elements (albeit weak), these differences, as well as the depiction of the contested sign in italic letters, will not distract the consumers’ attention from the fact that the verbal elements of both signs coincide in the majority of their letters (first two and last three). Moreover, the impact of the above mentioned differences is minor from the aural perspective, as the verbal elements of both signs will be pronounced in a similar way.

Taking into account that even professional consumers who pay a higher degree of attention rarely have the chance to make a direct comparison between different marks and need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54), and the fact that neither of the signs conveys any concept that could clearly differentiate them from each other, it is highly conceivable that the relevant consumers, even with a relatively high degree of attention, relying on their imperfect recollection, will be led to believe that the goods and services in question come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above and taking into account the abovementioned principle of interdependence, the Opposition Division finds that there is a likelihood of confusion, on the part of non-English-speaking part of the public that will perceive the verbal elements in both signs as meaningless. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 253 601. Therefore, the contested trade mark must be rejected for all the contested goods and services.

As the earlier European Union trade mark registration No 16 253 601 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right (including the evidence of proof of use submitted in relation to this earlier right) invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268),.

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

Cynthia DEN DEKKER

Rasa BARAKAUSKIENE

Ferenc GAZDA

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.