OPPOSITION No B 3 029 835

Peak Performance Production AB, 102 53 Stockholm, Sweden (opponent), represented by Plesner, Amerika Plads 37, 2100 Copenhagen Ø, Denmark (professional representative)

a g a i n s t

Trolo scooter s.r.o., Slavojova 579/9, 12800 Prague – Nusle, Czech Republic (applicant), represented by Pavel Cink, Veleslavínova 33, 30100 Plzeň, Czech Republic (professional representative).

On 19/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 029 835 is upheld for all the contested goods, namely:

Class 18: Straps for skates; bags for sports; sports packs; all-purpose athletic bags; bags for sports clothing.

2. European Union trade mark application No 17 377 516 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 17 377 516, (figurative), namely against all the goods in Class 18. The opposition is based on, inter alia, European Union trade mark registration No 2 465 300, ’HIPE’ (word mark). The opponent invoked Articles 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.

a) The goods

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; bags, suitcases, rucksacks, trunks and travelling bags, umbrellas, parasols, walking sticks, wallets.

The contested goods are the following:

Class 18: Straps for skates; bags for sports; sports packs; all-purpose athletic bags; bags for sports clothing.

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 contested bags for sports; sports packs; all-purpose athletic bags; bags for sports clothing are included in the broad category of the earlier bags. Therefore, they are identical.

The earlier mark is registered for goods made of these materials (leather and imitations of leather) and not included in other classes. According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), the term goods made of leather and/or imitations of leather in Class 18 lacks the clarity and precision to specify the scope of protection that it gives, as it does not provide a clear indication of the goods covered, as it simply states what the goods are made of, and not what the goods are. Goods made of leather or imitations of leather – when not specified – can have different characteristics or different purposes, can target different consumers, can be sold through different sales channels and, therefore, can relate to different market sectors. These goods in Class 18 can be generally defined as any items not included in other classes in the manufacture of which leather or imitations of leather are used as the main raw material.

Therefore, when comparing the contested straps for skates with the opponent’s goods made of leather and imitations of leather not included in other classes, their nature can be considered the same, as they are, or include goods, made of the same raw material and it is reasonable to infer that the goods may be produced by the same companies, given that the required know-how and machinery (to cut and sew the raw material, etc.) may also be the same. However, in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that the methods of use or distribution channels are the same or that they are in competition or complementary. Therefore, the goods are found to be similar to only a low degree.

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 identical or similar to a low degree are directed at the public at large.

The degree of attention is average.

c) The signs

HIPE
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 signs coincide fully in their sole verbal element ‘HIPE’ which appears to have no meaning and neither have the parties adduced anything that would allow a different conclusion. Nonetheless, in the event a meaning was to be attributed to this word, it would be immaterial in the present case, since the degree of distinctiveness of the signs' verbal elements is irrelevant, as they are the same in both marks and because the only differentiating elements of the contested sign merely reside in the slightly different typeface and the orange dot of a decorative nature, which are anyway not that stylised to take the consumer’s attention away from the letters it embellishes.

It follows that the signs, contrary to the applicant’s arguments, are visually highly similar, aurally identical and conceptually either identical, if a meaning would be assigned to the common element ‘hipe’, or, if not, the conceptual similarity would not influence this assessment.

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 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.

e) 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).

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).

The goods have been found identical or similar to a low degree. The signs are almost identical and the earlier mark enjoys a normal degree of distinctiveness.

The only differing elements of the contested mark, namely the typeface and orange dot, are of a clearly secondary nature within the overall impression of the signs. The near identity of the signs justifies the conclusion that there is a likelihood of confusion including for those goods deemed only similar to a low degree. It is possible that the average consumer may be led to believe that the same undertaking is responsible for the production of those goods.

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 2 465 300, ’HIPE’ (word mark). It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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, 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

Alicia BLAYA ALGARRA

Inés GARCIA LLEDO

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.