OPPOSITION No B 3 065 171

Marker Dalbello Völkl (International) GmbH, Ruessenstrasse 6, 6340 Baar, Switzerland (opponent), represented by SSM Sandmair Patentanwälte Rechtsanwalt Partnerschaft mbB, Joseph-Wild-Straße 20, 81829 München, Germany (professional representative)

a g a i n s t

Putian Youth Home Sports Good Co.,Ltd., No. 698, Xueyuan North Rd., Gongchen Street, Licheng District, Putian City, Fujian Province, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 171 is upheld for all the contested goods.

2. European Union trade mark application No 17 897 703 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 17 897 703 (figurative mark ), namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 15 626 807 (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.

1. The goods

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

Class 25: Wearing apparel, namely shirts, Athletic suits, Skirts, Sweat shirts, Tee-shirts, Shorts, Socks, Undershirts, Jackets, trousers, Chemises; Headgear, namely ski hats, snowboard hats, tennis caps, headbands and hats; Ski gloves and snowboarding gloves, Ski boots, Apres-ski shoes, Snowboarding boots and Tennis shoes.

The contested goods are the following:

Class 25: Clothing; trousers; outerclothing; coats; football shoes; gymnastic shoes; ski boots; footwear; bath sandals; bath slippers; boots; lace boots; galoshes; slippers; sandals; shoes; sports shoes; boots for sports; caps [headwear]; hosiery.

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 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.

Trousers and ski boots are identically included in both specifications.

The contested clothing; outerclothing; coats; hosiery are identical with the opponent’s wearing apparel, namely […] socks, […], jackets either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested caps [headwear] include, as a broader category, the opponent’s tennis caps. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested football shoes; gymnastic shoes; footwear; bath sandals; bath slippers; boots; lace boots; galoshes; slippers; sandals; shoes; sports shoes; boots for sports are identical with the opponent’s snowboarding boots and tennis shoes either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested 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.

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.

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).

Both signs are purely figurative signs consisting of a very similar outline of three tips on top and three on the bottom, being slimmer in the middle part of the signs’ outline and presenting a rhombus like white space in the middle. The signs present only minor differences, namely that the contested sign seems to be pressed tighter together and the inverse superposition of the respective legs/lines of the signs.

Visually, the signs coincide in the above mentioned characteristics. Therefore, the signs are similar to an above average degree.

Purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, neither of the signs has a meaning for the public in the relevant territory and regards them as abstract figurative elements. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

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.

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).

As the goods are identical and the signs are visually similar to an above average degree and in the absence of any dominant or non‑distinctive elements in the signs, a likelihood of confusion exists.

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).

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual similarities between the signs are particularly relevant when assessing the likelihood of confusion between them.

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 15 626 807. It follows that the contested trade mark must be rejected for all the contested 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 extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Martin EBERL

Swetlana BRAUN

Peter QUAY

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.