OPPOSITION No B 3 067 581

Groupe Go Sport, Société par actions simplifiée, 17, avenue de la Falaise, 38360 Sassenage, France (opponent), represented by Bird & Bird AARPI, Le Bonnel 20 rue de la Villette, 69328 Lyon cedex 03, France (professional representative)

a g a i n s t

Shenzhen Qianhai Tengwei Trade Co. Ltd., Rm. 201, Block A, No. 1, Qianwan 1 Rd., Shengang Cooperation Zone, Shenzhen, People’s Republic of China (applicant), represented by Rolim Mietzel Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 25/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 581 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 932 704, . The opposition is based on international trade mark registration No 1 365 960 designating the European Union, and on French trade mark registration No 4 269 582, . 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

In relation to both earlier trade marks, the goods on which the opposition is based are the following:

Class 25: Clothing, footwear (except orthopedic footwear), headgear and particularly for sports, ski, football, rugby, dance, beach and après-ski footwear; body linen and underwear for sports.

The contested goods are the following:

Class 25: Clothing; skirts; dresses; tee-shirts; dressing gowns; pyjamas; underpants; bathing trunks; swimsuits; boots; shoes; caps [headwear]; hosiery; gloves [clothing]; scarfs.

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

The term ‘particularly’, used in the opponent’s lists 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).

All of the contested goods are identical to the opponent’s clothing, footwear (except orthopaedic footwear), headgear, either because they are identically contained in both lists, or because some of the contested goods are included in broader categories covered by the earlier mark. With respect to footwear, the wording ‘except orthopaedic footwear’ in the opponent’s list does not restrict the scope of protection of the term footwear, because orthopaedic footwear does not belong in this class.

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 average.

3. The signs

International trade mark No 1 365 960 designating the European Union French trade mark No 4 269 582
Earlier trade marks	Contested sign

The relevant territory is the European Union for earlier trade mark 1) and France for earlier trade mark 2).

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 earlier trade marks are purely figurative marks, each containing one red abstract figurative device which could be described as an incomplete circle with a wave shaped figure at its lower right side. It cannot be excluded that part of the public may perceive the figurative element as a stylised letter ‘C’. The figurative element of the earlier marks is not related in any way with the relevant goods and therefore it is distinctive.

The contested sign is a figurative trade mark composed of the verbal element ‘tengweng’ and a black abstract figurative device placed above it. This figurative element could be described as resembling a crescent moon shape with a wave intersecting it in the middle. The verbal element ‘tengweng’ is meaningless in relation to the relevant goods and is therefore distinctive. The figurative element in the contested sign is not related in any way with the relevant goods and is also distinctive to a normal degree.

Although the figurative element in the contested sign is rather large and the shapes comprising it are depicted in bold strokes, the verbal element is equally eye-catching in the overall impression produced by the sign. This is because the verbal element, albeit depicted in regular (i.e. not bold) letters, occupies a sizeable proportion in the sign, which balances its impact vis-à-vis the figurative element. Therefore, the contested sign has no element that could be considered clearly more dominant.

Visually, all of the signs contain an incomplete circle and a wavy shape. However, the figurative elements differ in their colours and in that the incomplete circle in the contested sign resembles the shape of the moon whilst that of the earlier marks may be perceived as a stylised letter ‘C’. The wavy shapes in the signs are not the same and, furthermore, they have different arrangements against the circles. In the earlier marks, the wavy shape begins in the centre of the incomplete circle and is merged with the lower stroke of the ‘C’ shape, giving the impression that the wave is leaning towards the right. In contrast, the wavy shape in the contested sign intersects the circle which appears to be behind it. The wave in the contested sign has two pronounced curves (i.e. one upward and one downward) and it begins outside of the incomplete circle and continues quite far to the right. Nevertheless, it is admitted that there is some visual similarity between the figurative elements of the signs.

However, the signs also differ in that the contested sign contains the verbal element ‘tengweng’. According to settled case-law 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). Moreover, the figurative element is not easily describable and therefore consumers will refer to the contested sign by its verbal element ‘tengweng’. Consequently, the element in the contested sign that has more impact on the consumers is the verbal element.

Taking into account the greater impact of the verbal element over the figurative element in the contested sign and that the figurative elements are not identical but only similar to a certain extent, overall, the signs are visually similar to a low degree.

Aurally, it is not possible to compare the signs at issue because both earlier trade marks are purely figurative and purely figurative signs are not subject to a phonetic assessment.

Conceptually, contrary to the opponent’s argument, the figurative elements of the signs do not evoke any clear specific concept despite the possible resemblances described above. Furthermore, the verbal element in the contested sign is meaningless for the public in the relevant territories. Therefore, a conceptual comparison is not possible and consequently the conceptual aspect does not influence the assessment of the similarity of the signs.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

In its observations, the opponent stated that the distinctiveness of the earlier trade marks must be seen as high. However, even if this is assumed to be a claim for enhanced distinctiveness, the opponent did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are identical. They target the public at large which displays an average degree of attentiveness. The aural and conceptual comparison do not influence the comparison of the signs and visually the signs are similar to a low degree. The distinctiveness of the earlier trade marks is normal.

The earlier trade marks are purely figurative marks and the contested sign contains both verbal and figurative elements. However, the verbal element has a greater impact on consumers than the figurative element. Account is also taken that the relevant goods are the type of goods which are usually chosen visually. Generally, in shops dealing in clothing, footwear, headgear and fashion accessories customers can themselves either choose the articles 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 fashion goods 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 differences between the signs mainly caused by the presence of the verbal element in the contested sign and reinforced by the fact that the figurative elements in the signs are not identical and show perceptible differences, are particularly relevant when assessing the likelihood of confusion between them.

The differences between the signs are sufficient to dispel a likelihood of confusion. Consequently, the fact that the contested sign contains a figurative element which has some visual similarity with the earlier trade marks does not by itself lead to a finding of likelihood of confusion (including likelihood of association) and the consumer will be able to safely distinguish between the signs, despite the imperfect recollection of trade marks that the public often relies on.

The opponent refers to the principle of interdependence which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion and the fact that the goods are identical cannot, in this case, compensate for the differences identified between the signs.

The opponent refers to previous decisions of the Office to support its arguments (25/04/2019, B 3 047 013; 24/09/2018, R 2286/2017, CENTONZE (fig.) / DEVICE OF A ROOSTER (fig.) et al.). 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.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

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 opponent are not relevant to the present proceedings since the figurative elements in those cases evoked a clear concept which was common to the signs ( v ; v ). Therefore, the opponent’s references to those cases must be set aside.

The opponent also refers to previous national decisions to support its arguments, namely to the French national office’s opposition decisions No OPP 18/2365, No OPP 18‑1919 and No OPP 18‑788. However, 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 national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings since the figurative elements conveyed a concept (such as the concept of the profile of a person’s head, an animal footprint, or stylised crosses), whilst here the figurative elements do not convey any clear concept.

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

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine whether the discrepancy between the legal forms of the opponent (i.e. as indicated in the notice of opposition and evidence for substantiation) would be of such a nature as to question the opponent’s entitlement to file the opposition as the proprietor of the earlier marks, since the outcome of the present decision would still be the same.

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.

The Opposition Division

Solveiga BIEZA

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.