OPPOSITION No B 3 066 649

Wind Sportswear GmbH, Allerbeeksring 53-55, 21266 Jesteburg, Germany (opponent), represented by Hauck Patentanwaltspartnerschaft mbB, Kaiser-Wilhelm-Straße 79-87, 20355 Hamburg, Germany (professional representative)

a g a i n s t

Red Rock Innovation Limited, Unit 8,3/F., Qwomar Trading Complex, Blackburne Road, Port, Purcell 1110, Road Town, Tortola, Virgin Islands (British) (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 3 066 649 is partially upheld, namely for the following contested goods:

Class 18: Rucksacks; shopping bags.

Class 25: All the goods applied for in this class.

Class 28: In-line roller skates; gloves for games; machines for physical exercises; archery implements; gloves for sports; sports equipment; fishing equipment.

2. European Union trade mark application No 17 903 504 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 all the goods and services of European Union trade mark application No 17 903 504 . The opposition is based on, inter alia, European Union trade mark registration No 4 854 147 . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based. For reasons of procedural economy the Opposition Division will assess the evidence of use in relation to European Union trade mark registration No 4 854 147 .

The date of filing of the contested application is 22/05/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 22/05/2013 to 21/05/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 18: Leather and imitations of leather and goods made of these materials, in particular bags, small leather goods, purses, wallets, key cases, belts for clothing, not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear, in particular T-shirts, jackets, sweatshirts, sweatpants, caps, scarves, gloves, swimwear.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 02/07/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 12/09/2019 to submit evidence of use of the earlier trade mark, term further extended until 12/11/2019. On 30/10/2019, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Annex 1: Screenshot of the opponent’s corporate website dated 02/01/2018. The provided document shows the earlier trade mark and a list of several cities in Germany where the opponent’s shop are placed.

• Annexes 2 – 5 and 7 – 13: A series of undated pictures displaying several clothes shop, clothing and clothing labels. The opponent’s trademark is often displayed at the shop’s entrance, in clothing’s labels or directly on different kinds of clothing, for instance: ; ; .

• Annexes 14 – 19: A series of photography, copies of catalogues, flyers and news articles all displaying the opponent’s trade mark in relation to clothing or as a sponsor in sport events. Some of the provided documents refers to dates in 2015, 2016 and 2017. Most of the evidence are in German or refers to events in Germany.

• Annexes 6 and 20: A series of invoices referring to the sales of different kind of clothing in the period 2013 – 2017 to clients in different cities of Germany. The trademark is placed only on the header of the invoice. The provided document refer to sufficient amounts in relation to the sale of different kind of clothing (e.g. t-shirt, sweatshirt and sweat jackets).

• Annex 21: An affidavit signed on 23/10/2019 by the CEO of the opponent’s company declaring, inter alia, that the ‘WIND’ signs have been used in relation to different kinds of clothing for several decades. In the relevant period the opponent’s turnover reached considerable amounts. In addition, the document reports sufficient figures concerning the marketing expenditure related to the subject sign.

Assessment of genuine use — factors

Place of use

The evidence must show genuine use of the earlier trade mark within the relevant territory (i.e. the European Union).

The majority of the documents refers to addresses in Germany (e.g. the invoices) or are in German (e.g. the catalogues). The Opposition Division considers that the submitted evidence are sufficient to show use within the European Union.

Time of use

The evidence must show genuine use of the earlier trade mark within the relevant period.

Most of the submitted evidence refers are dated during period 2013 to 2017. It follows that the evidence of use submitted by the opponent contains sufficient indications concerning the time of use of the earlier sign.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The documents submitted, in particular the invoices, the commercial figures contained in the affidavit, the web extracts, the advertisements and the events provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

It is clear from the evidence that the opponent distributed or provided goods bearing, or sold under, the trade mark in the relevant market. The Opposition Division, therefore, has sufficient information regarding the opponent’s commercial activities during the relevant period. Consequently, these documents prove the duration and frequency of use of the earlier mark.

Nature of use — use as a trade mark

Nature of use requires, inter alia, that the trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

Most of the items of evidence submitted clearly shows the trademark is used in relation to clothing. Therefore, a clear link can be established between the sign and the goods themselves.

The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Nature of use — use of the mark as registered

Article 18 and Article 47(2) EUTMR require proof of genuine use in connection with the goods or services for which the trade mark is registered and which the opponent cites as justification for its opposition. Therefore, the opponent must demonstrate that the mark has been used as a trade mark on the market. As the function of a trade mark is, inter alia, to operate as a link between the goods and services and the person or company responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. As clearly indicated in Article 10(4) EUTMDR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T 105/13, TrinkFix, EU:T:2014:1070, § 28-38). The use of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.

A substantial part of the evidence submitted (inter alia, the catalogues and the photographies) clearly refers to the subject trade mark in colour, e.g. or . These slight decorative additions do not alter the distinctive character of the sign.

Therefore, the Opposition Division concludes that the mark has been used in accordance with Article 18(1)(a) EUTMR.

Use in relation to the registered goods

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 25: Clothing, in particular T-shirts, jackets, sweatshirts.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 4 854 147.

1. The goods and services

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

Class 25: Clothing, in particular T-shirts, jackets, sweatshirts.

The contested goods and services are the following:

Class 18: Rucksacks; shopping bags; travelling bags; mountaineering sticks; fur; harness fittings; imitation leather; straps for soldiers' equipment; leather; umbrellas.

Class 25: Cyclists' clothing; hosiery; belts [clothing]; rain coats; shoes; hats; gloves [clothing]; scarves; layettes [clothing]; sleep masks.

Class 28: In-line roller skates; toys; games; gloves for games; machines for physical exercises; archery implements; gloves for sports; sports equipment; racket grip tape; fishing equipment.

Class 35: Publicity; presentation of goods on communication media, for retail purposes; commercial administration of the licensing of the goods and services of others; import-export agency services; sales promotion for others; procurement services for others [purchasing goods and services for other businesses]; provision of an on-line marketplace for buyers and sellers of goods and services; web indexing for commercial or advertising purposes; commercial information and advice for consumers [consumer advice shop]; rental of sales stands.

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

The term ‘in particular’, 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).

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 Clas18 

The contested rucksacks; shopping bags are similar to the opponent’s clothing, in particular T-shirts, jackets, sweatshirts. Indeed, the contested goods are related to the earlier ones because consumers are likely to consider them as accessories that complement articles of outer clothing. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing to directly produce and market related goods such, as the contested ones. Moreover, these goods can be found in the same retail outlets.

Conversely, the remaining contested goods in this class do not have anything in common with any of the opponent’s ones. In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Finally, they do not have any degree of aesthetic complementarity with the opponent’s ones. Therefore, they are dissimilar.

Contested goods in Class 25

The contested goods in class 25 comprise different kind of clothing, shoes, hats and accessories. Therefore, they are at least similar to a low degree with the opponent’s goods as they coincide, at least, in producer and distribution channels.

Contested goods in Class 28

The contested in-line roller skates; gloves for games; machines for physical exercises; archery implements; gloves for sports; sports equipment; fishing equipment are sporting articles and equipment that are similar to a low degree to the opponent’s goods since they can coincide in producer, relevant public and distribution channels.

Conversely, the remaining toys; games; racket grip tape do not have anything in common with any of the opponent’s ones. In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

Contested services in Class 35

The contested services in this class are aimed at supporting or helping other businesses to do or improve business, such as advertising, import export and procurement of goods. These services do not have anything in common with any of the opponent’s goods since they do not relate to the actual production, retail or wholesale of the opponent’s goods In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers / providers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

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 similar in various degrees are mainly 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).

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 sign’s verbal elements ‘WIND’ and ‘WINDPACE’ do not convey any meaning for the Bulgarian, the Hungarian and the Polish-speaking consumers, being therefore distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The verbal element ‘SPORTSWEAR’ in the earlier mark will be perceived by a substantial part of the public as a foreign word recalling the meaning of ‘sport’. This is because the beginning of this verbal element, i.e. ‘SPORT’, will be understood as such by the relevant consumers. Consequently, the degree of distinctiveness of this element is rather weak, since it might refer to the possible purpose of the goods at issue (e.g. sports clothing).

The earlier trade mark graphical elements will be perceived as a stylized depiction of the sea and of a wind boat. The degree of distinctiveness of this element is also rather weak, since it can be perceived as an indication that the relevant goods are specifically designed for sailings.

The earlier mark verbal element ‘WIND’ and the figurative elements are the most dominant (visually eye catching) components of the sign.

In the assessment of the visual and aural similarity of the marks in question it has to be also borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

In addition, it has to be recalled that 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). This principle is particularly applicable in the instant case, since the figurative elements detains a reduced degree of distinctiveness.

Visually and aurally, the signs coincide in the sequence of letters (and sound) ‘WIND’. Whereas they differ in the earlier mark additional verbal element (and sound) ‘SPORTSWEAR’ and visually in its graphical elements and stylizations. The signs also differ in the contested application final letters (and sound) ‘PACE’.

Therefore, and taking into account the above principles and assessment on the degree of distinctiveness and relevance of the sign’s verbal and figurative elements, these are visually and aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative and (some of) the verbal elements of the earlier mark, as explained above, the other sign has no meaning for this part of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

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, despite the presence of some verbal and figurative elements of a limited distinctiveness, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case the goods have been found visually and aurally similar to an average degree since the earlier mark most distinctive and dominant verbal element is entirely reproduced in the beginning of the contested application.

The signs are not conceptually similar, however this factor does not play a significant role in the assessment of likelihood of confusion, since the semantic differences derive from less relevant elements with a limited degree of distinctiveness.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them. Consequently, the relevant public, when encountering the signs in relation to at least similar goods are likely to think that they come from the same undertaking or from economically linked undertakings.

As regards the goods that are similar to a low degree only, it must be kept in mind that 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).In the present case, the degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between some of the goods.

In its observations, the applicant argues that the earlier trade mark coexisted with several other signs that include the element ‘WIND’. In support of its argument the applicant refers to several trade mark registrations.

In this regard, it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Under these circumstances, the applicant’s claims must be set aside.

The applicant also refers to previous decisions of the Office and Nationals to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. Also, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings since none of them represent the factual situation of a fully distinctive and dominant element included in the initial part of the other sign, as in the instant case.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian, Hungarian and Polish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar in various degrees to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As 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 and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 4 855 193 .

• European Union trade mark registration No 4 855 227 .

• European Union trade mark registration No 7 332 455 ‘wind’.

• German trade mark registration No 1 089 401 .

• German trade mark registration No 302 008 056 049 ‘wind’.

• International trade mark registration No 525 085 designating Spain ; Austria ; Benelux ; Czech Republic ; France ; Croatia ; Hungary ; Italy ; Poland ; Portugal ; Romania ; Slovenia ; Slovakia .

The evidence of use concerning the subject signs have already been analysed above. Those findings are equally applicable to these earlier marks, and therefore, genuine use have been shown exclusively for clothing goods in Class 25, covered by all the trade marks at issue. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Victoria DAFAUCE MENÉNDEZ

Aldo BLASI

Sandra IBAÑEZ

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.