OPPOSITION No B 3 030 379

On Clouds GmbH, Seeallee 14, 9410 Heiden, Switzerland (opponent), represented by Skw Schwarz Rechtsanwälte, Kurfürstendamm 21, Neues Kranzler Eck, 10719 Berlin, Germany (professional representative)

a g a i n s t

Airtox International A/S, Kongevejen 155, 2830 Virum, Denmark (applicant), represented by Patrade A/S, Ceresbyen 75, 8000 Aarhus C, Denmark (professional representative).

On 25/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 030 379 is upheld for all the contested goods.

2. European Union trade mark application No 17 391 012 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 391 012, for the word mark ‘WALKING ON CLOUDS’, namely against all the goods in Classes 9 and 25. The opposition is based on, inter alia, international trade mark registration No 1 258 068 designating the European Union for the word mark ‘RUN ON CLOUDS.’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 international trade mark registration No 1 258 068 designating the European Union.

1. The goods

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

Class 25: Footwear, headgear for wear; shirts, neckties; trousers, bathing suits, coats, combinations-trousers (clothing), pelerines, cyclists’ clothing, sashes for wear, aprons (clothing), headbands (clothing), tracksuits; anoraks (parkas); ski pants; waist belts [clothing]; fur coats; mufflers [clothing]; gloves (clothing); dressing gowns; footwear for infants, slippers, shoes, sports shoes, esparto shoes or sandals, beach shoes, heels, bath slippers, boot liners, boots, socks and sandals; leather clothing, pockets for clothing.

The contested goods are the following:

Class 9: Safety shoes and protective shoes.

Class 25: Footwear.

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.

Contested goods in Class 9

The contested safety shoes; protective shoes are similar to a low degree to the opponent’s footwear in Class 25. These goods have the same nature and the same method of use. In addition, they target the same public.

Contested goods in Class 25

Footwear is identically contained in both lists of goods.

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.

The relevant goods in Class 9 target professionals from various sectors of industry and commerce, where the workplace might expose the worker’s bodies to hazards. When purchasing such protective garments in specialised outlets, the professionals will be highly attentive in particular as regards the garment’s technical properties to ensure its required functionality. Workers are often equipped by their employers with such shoes, in order to comply with public health and safety regulations (17/01/2013, R 2617/2011‑1, women at work / MEN AT WORK et al., § 33).

The relevant goods in Class 25 target the general public. The degree of attention is average.

3. The signs

RUN ON CLOUDS.	WALKING ON CLOUDS
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).

Both marks are word marks, the earlier mark being ‘RUN ON CLOUDS.’, whereas the contested sign is ‘WALKING ON CLOUDS’.

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The trade marks are meaningful for the English-speaking part of the public. Therefore, the Opposition Division finds it appropriate to focus on the English-speaking part of the public to whom the marks convey similar concepts.

‘WALKING ON CLOUDS’ refers to the movement of walking on or moving forward over the clouds.

‘RUN ON CLOUDS.’ is self-explanatory. It will be perceived as having a similar meaning to the contested sign, the action of walking being replaced by the one of running.

Even if both marks could be perceived as slightly laudatory, stating that the shoes are so comfortable that the consumers will have the sensation that they are walking/running on clouds, both marks are distinctive to an average degree as they both consist of a play on words. The relevant consumers will not think that by wearing the shoes bearing the marks at issue they could actually walk/run on clouds. However, even if they are perceived as a whole, more weight should be given to the element ‘ON CLOUDS’, because the concepts of ‘walking’ and ‘running’ have a weak distinctive character, insofar as they describe the purpose of the goods in relation to footwear or protective shoes (09/09/2014, R 759/2013‑4, SKYRUNNER (FIG. MARK) / SKY et al., § 20).

The full stop placed in the earlier mark is an element of little significance (21/06/2018, R 2427/2017‑5, tec.nicum (fig.) / T TECNIUM (fig.), § 95).

Visually and aurally, the signs coincide in the sequence of words ‘ON CLOUDS’ and differ in their beginnings, ‘WALKING’ in the contested sign and ‘RUN’ in the earlier mark. They also differ in the additional full stop of the earlier mark, but as already seen, this element has little significance.

According to the case-law, the consumer normally attaches more importance to the first part of trade marks. It is only when the element placed in the initial part has a weak distinctive character in relation to the goods covered by the marks at issue that the relevant public will attach more importance to their final part, which is the most distinctive (27/02/2014, T‑225/12, LIDL express, EU:T:2014:94, § 73). In the present case, the beginnings of the marks are weak.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be equally perceived as referring to the action of a movement on the clouds (the only difference coming from the speed of this movement), the signs are conceptually similar to a high degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a weak element and an element of little significance (the word ‘RUN’ and the full stop, respectively), 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 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).

The contested goods are partly identical and partly similar to a low degree to the opponent’s goods. The earlier mark has an average degree of distinctive character. The level of attention of the relevant public will vary from average to high.

The signs are similar overall considering that they are both composed of the identical words ‘ON CLOUDS’, preceded by a verb of motion, both giving the impression of moving on something comfortable.

Moreover, 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Finally, Article 8(1)(b) EUTMR states that, upon opposition, a European Union trade mark is not to be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Consumers may legitimately believe that the contested sign denotes a new line of goods provided under the opponent’s mark.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 international trade mark registration No 1 258 068 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods. The Opposition Division considers that there is also a likelihood of confusion in relation to the goods found to be similar to a low degree because the degree of similarity between the signs is sufficient to offset the lower degree of similarity between these goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right ‘RUN ON CLOUDS.’ 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).

Likewise, 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(5) 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 (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

Nicole CLARKE

Birgit FILTENBORG

Marine DARTEYRE

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.