OPPOSITION No B 3 047 074

SOS Brands AB, Videvägen 9, 247 64 Veberöd, Sweden (opponent), represented by Budde Schou A/S, Hausergade 3, 1128 Copenhagen K, Denmark (professional representative)

a g a i n s t

Creative Union AS, Laeva tn 2, 10111 Tallinn, Estonia (applicant), represented by Patendibüroo Käosaar Oü, Tähe 94, 50107 Tartu, Estonia (professional representative).

On 29/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 074 is partially upheld, namely for the following contested goods:

Class 9: Sports glasses; protective helmets for sports.

Class 18: Casual bags; sport bags; bags for campers; namely casual bags; wallets.

Class 25: Clothing; footwear; headgear; weatherproof clothing; sportswear.

2. European Union trade mark application No 17 429 119 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 17 429 119 , namely against all the goods in Classes 9, 18 and 25. The opposition is based on European Union trade mark registration No 12 608 378 for the figurative mark and international trade mark registration No 1 262 993 designating the European Union for the figurative 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.

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 1 262 993 designating the European Union.

a) The goods

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

Class 9: Spectacles, sunglasses, safety goggles, goggles for sports, protective helmets for sports, safety helmets.

Class 18: Pocket wallets, bags, bags for sports, travelling bags.

Class 25: Clothing, footwear, headgear, belts (clothing), money belts.

The contested goods are the following:

Class 9: Downloadable computer game software, electronic game software for mobile telephones, radio equipment and portable electronic devices; downloadable drawings, texts, audio, video, games and web links, including image files for educational and recreational purposes; downloadable audio files, multimedia files, text files; sports glasses; protective helmets for sports; cases adapted for mobile phones.

Class 18: Casual bags; sport bags; bags for campers; namely casual bags; wallets.

Class 25: Clothing; footwear; headgear; weatherproof clothing; sportswear.

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 applicant’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.

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 sport glasses and the opponent’s goggles for sports are synonyms and therefore identical.

Protective helmets for sports are identically contained in both lists of goods.

The contested downloadable computer game software, electronic game software for mobile telephones, radio equipment and portable electronic devices; downloadable drawings, texts, audio, video, games and web links, including image files for educational and recreational purposes; downloadable audio files, multimedia files, text files; cases adapted for mobile phones are dissimilar to the goods on which the opposition is based in Classes 9, 18 and 25, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are directed at consumers with different needs, and are not likely to come from the same kind of undertakings.

Contested goods in Class 18

The contested casual bags; sports bags; bags for campers; namely casual bags are included in the broad category of the opponent’s bags. Therefore, they are identical.

The contested wallets include, as a broader category, the opponent’s pocket wallets. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 25

Clothing; headgear; footwear are identically contained in both lists of goods and the contested weatherproof clothing; sportswear are included in, or overlap with, the broad category of the opponent’s clothing. Therefore, they are identical.

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 are directed at the public at large. The degree of attention is considered to be average.

c) 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).

Both signs are figurative marks. The contested sign consists of the term ‘SOS’ depicted in standard black upper-case letters above the words ‘Save Our Snow’, which are depicted in a significantly smaller size with initial upper-case letters. Due to its size and position, the term ‘SOS’ is the dominant element in the contested sign.

The earlier mark consists of a geometrical shape, a triangle, and the term ‘SOS’ written in a standard bold typeface overlapping the triangle in the centre of the mark. The triangle is a simple geometrical shape and as such is of limited distinctiveness as it is a commonplace and banal element. 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).

The earlier mark has no element that could be considered clearly more dominant (eye-catching) than the other elements.

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‑514/06P, 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 contested sign consists of the letters ‘SOS’ above the English expression ‘Save Our Snow’. The Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public for which this expression, as individual words and as a whole, has no meaning. For this part of the public, this expression is distinctive to a normal degree.

The public in the relevant territory under analysis will perceive the term ‘SOS’, included in both signs, as the international distress signal, which refers to an urgent request for help (although this term may be also perceived as meaning ‘sauce’ by, for example, the Polish-speaking public, this is not likely considering the goods in question). It is likely that ‘SOS’ will be understood in all the relevant countries since it is a widely used term internationally.

The applicant argued that, since the term ‘SOS’ was a widely used expression, it did not function solely as a trade mark, and therefore the consumer did not associate the term ‘SOS’ with a particular undertaking. However, the Opposition Division does not agree, since the term has no clear and direct meaning in relation to the relevant goods. The term is therefore distinctive to a normal degree.

Visually, the signs coincide in the distinctive element ‘SOS’, depicted in both signs in standard black upper-case letters. However, they differ in the additional figurative element of the earlier mark and in the distinctive, albeit much smaller, word elements ‘Save Our Snow’ of the contested sign. These elements have, nevertheless, limited impact on the perception of the signs, for the reasons mentioned above.

Therefore, the signs are visually similar to an above-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 initial and distinctive term ‘SOS’, present identically in both signs. The pronunciation differs in the sound of the words ‘Save Our Snow’ of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as referring to the international distress signal. Due to this and the fact that the other word elements of the contested sign are meaningless for the relevant public under analysis, and the triangle of the earlier mark has less distinctiveness, the signs are conceptually highly similar.

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

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, 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).

In the present case, the goods concerned have been found partly identical and partly dissimilar. The relevant goods target the public at large and the degree of attention is average. The earlier mark has a normal distinctiveness and the signs have been found visually and aurally similar to an above-average degree and conceptually highly similar.

The Opposition Division finds that the degree of similarity between the marks is sufficient for it to be concluded that the relevant public under analysis may reasonably believe that the goods found to be identical originate from the same undertaking or economically linked undertakings.

Indeed, 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).

Since the differences between the signs are confined to non-dominant or secondary elements, and bearing in mind 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), there is a likelihood of confusion on the part of the non-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 partly well founded on the basis of the opponent’s international registration No 1 262 993 designating the European Union. It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

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.

The opponent has also based its opposition on the following earlier trade mark: European Union trade mark registration No 12 608 378 for the figurative mark . This mark covers the same goods in Class 25 as those that have already been assessed above. The opponent’s European Union trade mark registration No 12 608 378 also covers articles for protective clothing in Class 9. Nevertheless, these goods are also considered dissimilar to the applicant’s remaining goods, namely downloadable computer game software, electronic game software for mobile telephones, radio equipment and portable electronic devices; downloadable drawings, texts, audio, video, games and web links, including image files for educational and recreational purposes; downloadable audio files, multimedia files, text files; cases adapted for mobile phones in Class 9, since they differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, are directed at consumers with different needs, and are not likely to come from the same kind of undertakings.

Therefore, since the outcome cannot be different with respect to the goods for which the opposition has already been rejected, no likelihood of confusion exists with respect to those 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. 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

Boyana NAYDENOVA

Martin INGESSON

Anna ZIOŁKOWSKA

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.