OPPOSITION Nо B 3 067 638

 

Core Kiteboarding GmbH, Ton Strand 6, 23769 Fehmarn, Germany (opponent), represented by Patent & Trade Mark Agency Koitel, Tina 26, 10126 Tallinn, Estonia (professional representative) 

 

a g a i n s t

 

The Governor and Company of Adventurers of England trading into Hudson's Bay, also Known as Hudson's Bay Company, 401 Bay Street, Suite 1420, M5H 2Y4 Toronto, Canada (applicant), represented by Stéphane Girardeau, 9 Rue Pontarique, 47000 Agen, France (professional representative).

On 06/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 067 638 is partially upheld, namely for the following contested goods:

 

	Class 25: Clothing, namely, tops, bottoms, pants, shorts, t shirts, shirts, sweatshirts, sweatpants, dresses, skirts, jackets, sweaters, sleepwear, intimate apparel, underwear, socks, leggings, hosiery, outerwear, namely, coats and jackets; hats, scarves; gloves; footwear, namely, shoes, sneakers, sandals, boots.
2.	European Union trade mark application No 17 928 114 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 30/10/2018, the opponent filed an opposition against all the goods of European Union trade mark application No 17 928 114 ‘CORE LIFE’ (word mark). The opposition is based on European Union trade mark No 12 631 842, (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.

  

a) The goods

 

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

 

Class 28: Gymnastic and sporting articles, other than balls and fishing tackle; stunt kites; kites; wings attached to lines; foils and kites for kitesurfing; tubekites; windsurf sails and boards; kite sticks, boards and foils; stand-up paddleboards and paddles therefor.

The contested goods are the following:

Class 18: Hand bags, purses.

Class 25: Clothing, namely, tops, bottoms, pants, shorts, denim, jeans, t shirts, shirts, sweatshirts, sweatpants, dresses, bridal dresses, skirts, jackets, sweaters, sleepwear, intimate apparel, underwear, socks, leggings, hosiery, outerwear, namely, coats and jackets; hats, scarves; gloves; footwear, namely, shoes, sneakers, sandals, boots.

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 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 18

The contested hand bags, purses are dissimilar to all the goods covered by the opponent's trade mark because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested goods in class 25

The opponent’s gymnastic and sporting articles, other than balls and fishing tackle are articles and apparatus for all types of sports and gymnastics such as weights, halters, tennis rackets and fitness apparatus.

The contested footwear, namely, shoes, sneakers, sandals, boots include sports footwear, designed specifically to be used when performing an activity or sport. There are undertakings that manufacture both sporting and gymnastic articles as well as sports footwear, thus, the relevant public may think that the production of these goods lies with the same undertaking and the distribution channels can be the same. These goods are consequently considered at least lowly similar.

Following the same reasoning, the contested clothing, namely, tops, bottoms, pants, shorts, t shirts, shirts, sweatshirts, sweatpants, dresses, skirts, jackets, sweaters, underwear, intimate apparel, socks, leggings, hosiery, outerwear, namely, coats and jackets; hats, scarves and gloves, which include sport clothing, are similar to a low degree to the opponent's gymnastic and sporting articles, other than balls and fishing tackle.

The contested clothing, namely, denim, jeans, bridal dresses, sleepwear are dissimilar to all goods covered by the opponent's right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users. The opponent claims that it ‘is established customs in the sports articles and clothes industry and commerce that a same company produces sports articles as well as clothes or sells sports articles as well as clothes. While this is certainly true, these same companies would not produce or sell bridal dresses or sleepwear.

 

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 in question.

 

In the present case, the goods found to be at least similar to a low degree are directed at the public at large and at professional consumers, for example professional sportspeople. The degree of attention is average.

 

c) The signs

 

	CORE LIFE
Earlier trade mark	Contested sign

 

 

The relevant territory is the European Union.

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 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 common element ‘CORE’ does not have a meaning in many European languages, such as French. The Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public, as a likelihood of confusion could more easily arise from the perspective of this part of the public, as will be explained below.

The earlier sign is a figurative sign composed of the sole verbal element ‘CORE’, written in black and bold lowercase letters. This slightly stylised typeface, including the dot inside the letter ‘O’, merely embellishes the word it is applied to, and will be perceived as having a decorative nature.

The contested sign is a word mark, composed of the verbal elements ‘CORE’ and ‘LIFE’.

The Court has established that the element, ‘LIFE’, is a basic English word understood throughout the European Union (15/10/2018, T‑444/17, life coins / LIFE, EU:T:2018:681, § 52). It will be perceived as referring to ‘things or groups of things which are alive’ or to ‘the period between birth and death’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/life on 29/06/2021). It has no direct meaning for the applicant’s goods and therefore, the entire sign has a normal degree of distinctiveness.

 

Visually, the sole verbal element ‘CORE’ of the earlier mark is entirely reproduced at the beginning of the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, because the public reads from left to right, the part placed at the left of the sign (the initial part) is the one that first catches the attention of the reader. This means that the identical element ‘CORE’ at the beginning of the contested sign is particularly relevant, especially taking into account that it is the coinciding component in both signs. The signs differ in the typeface of the earlier sign, and in the additional verbal component ‘LIFE’ of the contested sign that does not have a counterpart in the earlier sign.

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

 

Aurally, the signs coincide in the pronunciation of the letters ‘CORE’ and differ in the sound of the word ‘LIFE’ of the contested sign. Therefore, the signs are aurally similar to an average degree.  

 

Conceptually, although the public in the relevant territory will perceive the meaning of the verbal element ‘LIFE’ in the contested sign as explained above, the other sign has no meaning in that territory. 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.

 

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

 

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 goods are partly similar to at least a low degree and partly dissimilar. They target the general public as well as professionals whose degree of attention is average. Furthermore, the signs are visually, and aurally similar to an average degree, while conceptually they are not similar.

Taking into account, in particular, the fact that the contested sign reproduces in its entirety the sole component of the earlier mark, which is fully distinctive, it is considered that the similarities between the signs are enough to counteract the dissimilarities.

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, the Opposition Division finds that there is a likelihood of confusion on the French-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 to a low degree to those of the earlier trade mark. Indeed, in accordance with the principle of interdependence addressed above and considering the similarities between the signs, the lower degree of similarity between some of the goods is easily compensated.

The rest of the contested goods are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

 

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

 

 

Helena GRANADO CARPENTER

Helen Louise MOSBACK

Inês RIBEIRO DA CUNHA

 

 

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.