OPPOSITION No B 3 067 281

SDSR - Sports Division SR, S.A., Rua João Mendonça, No.505, Senhora da Hora, 4450 Matosinhos, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Spirit Multi Sports Holding LLC PCC, c/o Audax Consulting Trust Establishment Rätikonerstrasse 13, 9490 Vaduz, Liechtenstein (applicant).

On 21/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 281 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 929 617 for the word mark ‘Spirit Multisport’, namely against all the goods and services in Classes 25, 28 and 41. The opposition is based on European Union trade mark application No 11 866 357 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.

a) The goods and services

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

Class 25: Clothing and sports clothing, footwear and headgear.

Class 28: Games and playthings, gymnastic and sporting articles including snow equipment (skis).

The contested goods and services are the following:

Class 25: Clothing, including sportswear.

Class 28: Sports equipment.

Class 41: Education, providing of training and further training, arranging and organisation of meetings and seminars, entertainment, namely arranging and conducting of sports events in the form of running, swimming and cycling competitions.

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 ‘including’, used in both the applicant’s and 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 applicant’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services 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 Classes 25 and 28

The contested clothing, including sportswear and sports equipment are identically contained in the opponent’s lists of goods in Classes 25 and 28, respectively (including synonyms).

Contested services in Class 41

The contested services in Class 41 are educational and sporting activities. The earlier mark covers goods in Classes 25 (clothing, footwear, headgear) and 28 (games and playthings; gymnastic and sporting articles). The contested services and the opponent’s goods are different in nature, since services are intangible whereas goods are tangible. Furthermore, the goods and services have different methods of use and are neither in competition nor necessarily complementary. They are not produced/provided by the same undertakings. In particular, with respect to the goods in Class 28, even though some producers of sporting articles and equipment nowadays also organise competitions or tournaments, this does not constitute the general rule and their aim is often to promote and strengthen the reputation of their own brand. Although there is a certain degree of complementarity between the two, this is not conclusive on its own for finding a similarity between these goods and services. In addition, the contested education, providing of training and further training, arranging and organisation of meetings and seminars differ also from the opponent’s goods in purpose as the contested services are intended to teach or instruct, which is not the purpose of any of the opponent’s goods. Therefore, the contested services in Class 41 are dissimilar to the opponent’s goods.

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 as well as at business customers with specific professional knowledge or expertise (e.g. sport centres’ managers and trainers).

The degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	Spirit Multisport
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 earlier figurative mark consists of the verbal elements ‘multi’ and ‘sport’ depicted on two levels in stylised lower-case letters, preceded by an X-shaped figurative device. The verbal element ‘multi’ is an internationally widespread prefix meaning ‘multiple’ and ‘sport’ is considered a basic, and widely used, English word to refer to games and competitive leisure activities which need physical effort and skill, with the combination of both elements being understood as referring to ‘multiple or different sports’ throughout the relevant territory. Taking into account the relevant goods, these elements are descriptive of their nature or characteristics and are, therefore, non-distinctive. The figurative device, since it does not describe nor allude to the relevant goods is considered distinctive.

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

As regards the contested word mark, it is composed of the elements ‘Spirit’ and ‘Multisport’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, for the purposes of the comparison, it is irrelevant whether the elements are written in lower- or upper-case letters or in a combination thereof.

The element ‘Multisport’ will be understood in the same way as in the earlier mark. The same conclusion reached in relation to the distinctive character will be applicable to the contested sign.

The element ‘Spirit’ will be meaningful for part of the relevant public, such as the English-speaking part, referring to different concepts, such as mood, attitude, the soul, the Holy Spirit, liveliness and energy, or alcoholic drink. There are close equivalents throughout the European Union for one or more of the abovementioned meanings, such as ‘esprit’ (in French), ‘spirito’ (in Italian), ‘espírito’ (in Portuguese) and ‘espíritu’ (in Spanish), and so those meanings will also be grasped by a substantial part of the public. For a small part of the public, this element may be meaningless. In any case, since the element ‘Spirit’ does not have any direct semantic connexion with the relevant goods, it is considered distinctive.

Visually, both signs contain the non-distinctive element(s) ‘MULTISPORT’, significantly stylised and depicted on two levels in the earlier mark. They clearly differ in the additional first and distinctive element ‘SPIRIT’ of the contested sign, and in the initial distinctive figurative device of the earlier mark.

Consumers generally focus on the beginning of a sign when confronted with a trade mark, since they read from left to right. This means that the initial part of the sign is usually the most relevant one in the consumers’ perception. It should be noted in this regard that, in the present case, the contested sign’s initial part is also its only distinctive element.

The signs have different structures (a distinctive figurative device and two verbal elements of five letters each depicted on two levels in the earlier mark, versus two verbal elements of six and ten letters each in the contested sign).

Taking into account the foregoing, and especially the distinctiveness issues, the signs are visually similar to a very low 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 non-distinctive element(s) ‛MULTISPORT’, present in both signs. The pronunciation differs in the sound of the first and distinctive element ‛SPIRIT’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the coinciding element(s) ‘MULTISPORT’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional, distinctive, verbal element of the contested sign, ‘SPIRIT’. For the part of the public that understands the meaning(s) of this element, the signs are not similar conceptually. For the small part of the public that perceives ‘SPIRIT’ as meaningless, a conceptual comparison is not possible, and therefore the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar to certain extent 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark as a whole rests on its figurative aspects, and as such, must be seen as normal, despite the non-distinctive character of its verbal elements ‘multi sport’.

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, and 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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the contested goods and services are partly identical (the goods) and partly dissimilar (the services) to the opponent’s goods. The signs are visually similar to a very low degree, aurally similar to a low degree and conceptually either not similar or this aspect does not influence the assessment, on account of the fact that the similarities between the signs concern elements that are not distinctive. The degree of attention varies from average to higher than average. The earlier mark has an average degree of distinctiveness, despite the presence of descriptive elements, as explained above.

The goods at issue are clothing and equipment for sports. Generally, in clothes shops and sports shops, customers can either choose the clothes and other apparel and equipment, they wish to buy themselves or be assisted by the sales staff. The choice of the item is, therefore, generally made visually. Consequently, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a great role in the global assessment of the likelihood of confusion (cfr. 06/10/2004, T117/03, T119/03 & T171/03, NL, EU:T:2004:293, § 50). Therefore, the significant visual differences between the signs are particularly relevant when assessing the likelihood of confusion between them.

Consequently, the Opposition Division considers that the differences between the signs will enable the relevant consumers, who will have either an average or a higher than average degree of attention, to safely distinguish between them, even in relation to identical goods.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Saida CRABBE

Alicia BLAYA ALGARRA

Helen Louise MOSBACK

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.