OPPOSITION No B 3 069 187

International Sport Group Limited, The Copper Room Deva Centre, Trinity Way, Manchester M3 7BG, United Kingdom (opponent), represented by Brabners LLP, Horton House, Exchange Flags, Liverpool L2 3YL, United Kingdom (professional representative)

a g a i n s t

Terence O'Neill, 63 Heath drive, Ware SG12 0RF, United Kingdom (applicant), represented by Keystone Law, 48 Chancery Lane, London WC2A 1JF, United Kingdom (professional representative).

On 27/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 069 187 is upheld for all the contested goods.

2. European Union trade mark application No 17 937 718 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 937 718 (fig.). The opposition is based on European Union trade mark registration No 9 059 619  (fig.) and on, inter alia, UK non-registered trade mark for the word ‘STELLAR’. The opponent invoked Article 8(1)(b) and Article 8(4) 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

The goods on which the opposition is based are, inter alia, the following:

Class 28: Sporting articles, apparatus and equipment.

The contested goods are the following:

Class 28: Sporting articles and equipment.

Sporting articles and equipment are identically contained in both lists of goods.

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 and at business customers with specific professional knowledge or expertise.

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

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 word ‘STELLAR’ present in both signs will be perceived by the English-; and German-speaking public as referring to a star or stars. In English this word also means ‘exceptional’ which is laudatory, and as such also weakly distinctive. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public such as that in Germany.

The figurative element of the earlier sign is a common element in trade as it alludes to the quality of goods and as such it is considered weak.

The figurative element of the contested sign is likely to be perceived as an oar. Bearing in mind that the relevant goods are sport-related, this element is at least weak for all the goods.

The marks have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their verbal element ‘STELLAR’, depicted in both signs in a similar way, namely in upper case bold black characters. However, they differ in the figurative elements contained in the signs. 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).

Therefore, the signs are similar to at least an average degree.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, on account of the word ‘STELLAR’, the signs are conceptually similar to a high degree as the figurative elements either reinforce the concept of the verbal elements or are weak.

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 a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical and they target the public at large and professionals. The degree of attention might vary from average to high.

The signs are visually similar to at least an average degree, aurally they are identical and conceptually similar to a high degree. The earlier mark enjoys a normal level of distinctiveness.

Taking into account the interdependence principle, there is a clear likelihood of confusion, even for the more attentive professional consumers, because the differences between the signs are confined to secondary elements and aspects of weak distinctiveness that are not enough to counteract the abovementioned identities and similarities between the signs.

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 059 619. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8 (4) EUTMR or the earlier rights invoked in relation to that ground.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sam GYLLING

Katarzyna ZANIECKA

Kieran HENEGHAN

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.