OPPOSITION No B 3 067 524

Puma SE, Puma Way 1, 91074 Herzogenaurach, Germany (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Shanghai Warrior Shoes Co. Ltd., No. 1100 Kunming Road, Yangpu District null Shanghai, People’s Republic of China (applicant), represented by Inlex IP Expertise, Plaza San Cristobal 14, 03002 Alicante, Spain (professional representative).

On 18/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 524 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 17 933 405 for the figurative sign , applied for goods in Class 25. The opposition is based on European Union trade mark registrations No 14 462 873 for the figurative mark and No 12 697 066 for the figurative mark , both registered for goods in Class 25. The opponent invoked Article 8(1)(b) and 8(5) 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 signs and distinctiveness of the earlier marks

EUTM 14 462 873 (earlier mark 1) EUTM 12 697 066 (earlier mark 2)
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).

All the signs under comparison are purely figurative marks consisting of geometric shapes with no meanings.

The earlier trade mark 1 consists of two separate stripes that merge into one while sloping upwards to the right. The two separate stripes, which have a space between them, are much wider than the merged piece at its end, which is notably narrows as it slopes up and to the right. These two stripes form the sign’s base on the left side, whereas the top is in the sign’s upper right part. The shape has a black outline and is filled with white. The earlier trade mark 2 has a similar shape to earlier trade mark 1 but, being entirely black, has no division into two separate stripes and forms one piece sloping upright while notably narrowing in the same way as earlier trade mark 1. The sign’s base is on the left, whereas the top is on the right. Additionally, earlier mark 2 has a slightly less steep slope than the earlier mark 1. Both earlier marks are depicted diagonally.

The contested mark is a grey diagonal stripe with two vertical stripes of the same width that protrude from the stripe on the left of the sign. The two vertically protruding stripes are parallel and have a gap between them. The stripes used in the contested sign are more or less of the same thickness. The base diagonal line narrows very slightly while sloping subtly upwards.

As the earlier marks have no meaning, they are, therefore, normally distinctive.

The opponent argued that the contested sign is not a position mark and, therefore, it could be used upside down, namely , in which case ‘the similarity between the marks increases’. However, in the analysis of the signs they are compared as they are registered in the earlier mark or applied for in the contested sign (09/04/2014, T‑623/11, Milanówek cream fudge, EU:T:2014:199, § 38; 08/12/2005, T‑29/04, Cristal Castellblanch, EU:T:2005:438, § 57). Therefore, the opponent’s arguments must be dismissed.

The opponent’s mention of two EUTM applications, namely No 5 912 803 for the figurative sign and No 5 833 694 for the figurative sign only confirms what has been said above.

Furthermore, the opponent referred to previous Office decisions to support its arguments, for instance the Opposition Division decisions B 1 287 178 (30/08/2010), B 1 291 618 (30/05/2011) and B 1 701 260 (28/09/2011). 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.

The previous cases referred to by the applicant are not relevant to the present proceedings as those signs presented more similarities than those compared in this case (e.g. in the previous cases they shared the same concept).

Moreover, the opponent put forward that the fact that the earlier marks and the contested sign are reproduced in different colours ‘is not decisive’. According to the opponent ‘it is common for such marks, which will be used on goods such as footwear, to be applied for in neutral colours (usually white or black), in order to be adapted according to the colour that is used on the product in question’. It must be stressed once again that the examination must be carried out taking into consideration the sign as protected in the case of the earlier marks and the sign as applied for in the case of the EUTM application. Consequently, this argument must be also set aside.

Visually, the earlier trade marks and the contested sign coincide in the presence of curved diagonal stripes. However, the signs substantially differ in the number of stripes, namely two stripes merging into one (earlier mark 1), one stripe (earlier mark 2) and three stripes (contested sign), as well as in the way they are represented, in particular their angle, direction, colour and thickness. For instance, whereas the curved stripes in the contested sign maintain their width, it is immediately clear that the earlier marks have a very wide base and narrow abruptly as they slope upwards to the right. The difference between the base width and the top of the earlier marks is immediately noticeable due to its size. In contrast, the width of the stripes in the contested sign remains roughly the same. Another striking difference between the signs under comparison is the presence of two vertically placed stripes in the contested sign. They are parallel to each other and protrude upwards from the main stripe on the left side of the mark. The contested sign contains three stripes; as a consequence, it is more complex. Furthermore, the curve in the earlier marks’ stripes is directed upwards, whereas the curve of the diagonal stripe in the contested sign is directed downwards. These relevant characteristics will not go unnoticed and the consumers will recall them to identify the earlier mark. Bearing in mind the above, the overall graphic stylisation of the conflicting marks is completely different.

As the signs only coincide in irrelevant aspects, that is, the fact they depict stripes arranged horizontally, it is concluded that the signs are not visually similar. In respect of the visual comparison it is decisive that the signs’ overall impression is different.

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. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

In view of all the above findings, it is concluded that the overall impressions created by the marks are dissimilar. Therefore, the signs are dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION — ARTICLE 8(5) EUTMR

a) Reputation - requirements

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR, and found to be dissimilar. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

c) Conclusion

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66). There is no need to examine the evidence submitted by the opponent to prove the earlier marks’ reputation.

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

Helen Louise MOSBACK

Michal KRUK

Vít MAHELKA

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.