OPPOSITION No B 3 047 859

Trital Beheer B.V., Mandenmakerstraat 41, 3194 DA Hoogvliet, Netherlands (opponent), represented by Brandmerk! Intellectual Property, Minervahuis III, Rodezand 34, 3011 AN Rotterdam, Netherlands (professional representative)

a g a i n s t

Eurofibers B.V., Wethouder Sangersstraat 56, 6191 NA Beek, Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL, Breda, Netherlands (professional representative).

On 01/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 859 is upheld for all the contested goods.

2. European Union trade mark application No 17 469 801 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 17 469 801 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 10 406 387 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 European Union trade mark registration No 10 406 387.

a) The goods

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

Class 9: Industrial safety articles, namely safety clothing, including clothing for protection against fire, waterproof and/or water-resistant clothing, gloves, safety shoes and safety boots; protective glasses, protective masks and safety helmets; safety articles for personal use, not included in other classes; all before said goods not in the field of welding and/or welding technology.

Class 24: Textiles and textile goods, not included in other classes; textiles and textile goods with fire-resistant and water-resistant properties, not included in other classes; all before said goods not in the field of welding and/or welding technology.

Class 25: Clothing, footwear, headgear; work clothing, not included in other classes, including overalls, dust coats, work trousers, work shoes and safety boots; waterproof and water-resistant clothing, footwear and headgear, not included in other classes; all before said goods not in the field of welding and/or welding technology.

The contested goods are the following:

Class 9: Safety, security, monitoring and signalling devices, instruments and apparatus; safety clothing, footwear and headgear for protection against injury; balaclavas for protection against injury; collars for protection against injury; goggles; protective masks; safety helmets; safety gloves; parts for the aforesaid goods included in this class.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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).

However, the term ‘namely’, used in the opponent’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.

The contested protective masks; safety helmets include, as broader categories, the opponent’s protective masks and safety helmets, all before said goods not in the field of welding and/or welding technology. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods. Therefore, they are identical.

The contested safety clothing, footwear and headgear for protection against injury; balaclavas for protection against injury; safety gloves; collars for protection against injury are included in the broad category of, or overlap with, the opponent’s safety articles for personal use, not included in other classes; all before said goods not in the field of welding and/or welding technology. Therefore, they are identical.

The contested goggles are similar to the opponent’s protective masks, all before said goods not in the field of welding and/or welding technology as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested safety, security, monitoring and signalling devices, instruments and apparatus are similar to the opponent’s safety articles for personal use, not included in other classes; all before said goods not in the field of welding and/or welding technology. They might coincide in producer, relevant public and distribution channels.

The contested parts for the aforesaid goods included in this class (the contested goods compared above) are similar to the opponent’s goods (compared above) as they originate from the same undertakings, are sold through the same distribution channels and target the same relevant public.

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 are directed at the public at large and at a professional public with specific knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the impact on one’s safety, the frequency of purchase and their price.

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).

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 common verbal element ‘SHIELD’ is meaningful in certain territories, namely in those countries where English is understood. It is meaningful for this part of the relevant public in relation to the relevant goods in Class 9 as it refers or alludes to something that provides protection. This has an impact on the distinctiveness of this word. Consequently, it is appropriate to focus the comparison of the signs on the non-English-speaking part of the public, which will perceive the word ‘SHIELD’ as meaningless and with a normal degree of distinctiveness.

The verbal element ‘BODY*’ in the contested sign will be perceived as meaningless by the non-English-speaking public and has a normal degree of distinctiveness. It is, however, less dominant within the contested sign as it is depicted in a much lighter font than the other verbal and figurative elements, which are co-dominant.

The figurative elements in both signs will be perceived as a shield or coat of arms. In the earlier mark it bears an eagle, while in the contested sign the shield bears a rather abstract pattern. They have a normal degree of distinctiveness.

The earlier mark has no elements that are more dominant (eye-catching) than others.

Visually, the signs coincide in the distinctive verbal element ‘SHIELD’, which is the sole verbal element in the earlier mark and the verbal element with the greatest impact in the contested sign, as it is co-dominant with the figurative element. Furthermore, the signs coincide in figurative elements depicting a shield or coat of arms, which is placed above their verbal elements. However, they differ in the content of the shield or coat of arms and in the additional verbal element ‘BODY*’ in the contested sign, which, despite being in first position, will attract less attention because it is less visible within the sign.

Therefore, the signs are visually similar to 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 verbal element ‛SHIELD’, present identically in both signs. The pronunciation differs in the additional verbal element ‘BODY*’ in the contested 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. As the figurative elements in both signs will be perceived as representing a shield, albeit with different content, the signs are conceptually similar to an average degree.

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. 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 earlier mark has an average degree of distinctiveness. The relevant public is the public at large and professionals, and the degree of attention varies from average to high.

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).

The goods are partly identical and partly similar.

The signs are visually, aurally and conceptually similar to an average degree.

Taking into account the above, the similarities between the signs are such that the relevant public might be led to believe that the identical and similar goods come from the same or economically linked undertakings, even if the public possesses a high degree of attention.

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, 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, 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 well founded on the basis of the opponent’s European Union trade mark registration No 10 406 387. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 10 406 387 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 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, 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

Marzena MACIAK

Saida CRABBE

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.