OPPOSITION No B 3 084 968

Nitro AG, Bösch 104, 6331 Hünenberg, Switzerland (opponent), represented by Klinger & Kollegen, Bavariaring 20, 80336 München, Germany (professional representative)

a g a i n s t

Nitrolord Limited, Ewropa Business Centre, Level 3, Suite 701, Triq Dun Karm, BKR 9034, Birkirkara, Malta (applicant), represented by Fenech Farrugia Fiott Legal, Ewropa Business Centre, Level 3, Suite 702, Dun Karm Street, BKR 9034, Birkirkara, Malta (professional representative).

On 25/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 968 is partially upheld, namely for the following contested goods:

Class 18: All the goods in this class.

Class 25: All the goods in this class.

2. European Union trade mark application No 17 960 805 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 960 805 for the figurative mark . The opposition is based on international trade mark registrations No 573 078 designating Germany, Spain, France, Italy, Hungary, Austria, and Poland, No 670 747 designating the Czech Republic, Germany, France, Croatia, Italy, Hungary, Austria, Poland, Slovenia, and Slovakia, and No 1 318 907 designating the European Union, all for the word mark ‘NITRO’. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION — EARLIER INTERNATIONAL TRADE MARK REGISTRATION No 573 078

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered (Article 7(2)(a)(ii) EUTMDR). Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any filing, registration or renewal certificates or equivalent documents referred to in Article 7(2)(a), (d) or (e) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR, must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion, within the time limit specified for submitting the original document.

According to Article 25(1) EUTMIR, when a translation of a document is to be filed, the translation must identify the document to which it refers and reproduce the structure and contents of the original document. Furthermore, according to the same provision, where a party has indicated that only parts of the document are relevant, the translation may be limited to those parts.

On 10/07/2019 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 15/11/2019.

In the present case, the evidence submitted by the opponent on 19/06/2019 consists of an extract from the WIPO’s Madrid Monitor database. In the notice of opposition, the opponent also referred to evidence accessible online from a source recognised by the Office, namely the TMview database.

According to the opposition notice, the designated countries of international trade mark registration No 573 078 are Germany, Spain, France, Italy, Hungary, Austria, and Poland for clothing for sports in Class 25 and sporting articles particularly snowboards in Class 28.

However, due to a limitation, this mark is registered in Spain for some different goods in Class 28, namely planches à neige (snowboards) et équipements pour sports d’hiver de surf en neige et de ski. In the extract from the WIPO’s Madrid Monitor database, those goods appear only in French and not in the language of the proceedings. Furthermore, there is no corresponding translation available in the TMview database. The opponent did not submit the necessary translation of the goods of international trade mark registration No 573 078 designating Spain.

According to Article 7(4) EUTMDR, translations submitted after the expiry of the relevant time limits will not be taken into account. Furthermore, according to Article 7(5) EUTMDR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in, or that have not been translated into, the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Article 8(1) and (7) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on international trade mark registration No 573 078 for the word mark ‘NITRO’ designating Spain.

Consequently, in any general references below, it will be considered that international trade mark registration No 573 078 covers all countries of designation except Spain.

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

International trade mark registration No 573 078 ‘NITRO’ (earlier mark No 1)

Class 25: Clothing for sports.

Class 28: Sporting articles particularly snowboards.

International trade mark registration No 670 747 ‘NITRO’ (earlier mark No 2)

Class 25: Footwear and headgear.

International trade mark registration No 1 318 907 ‘NITRO’ (earlier mark No 3)

Class 18: Backpacks; sports bags; bags for sports shoes; leather and imitations of leather; traveling trunks and suitcases; saddlery.

Class 28: Bags for snowboards; bags for skateboards.

The contested goods are the following:

Class 14: Watches; jewellery; horological instruments; time instruments; chronometric instruments; chronoscopes; watch straps; alarm clocks; clock hands; clocks; wristwatches; wrist watch bands; dials (clockmaking and watchmaking); clockworks; chronographs (watches); cases for clock and watch making; movements for clocks and watches; precious metals and their alloys; watches made of precious metals or coated therewith; jewellery made of precious metals or coated therewith.

Class 18: Sacks, namely knapsacks, rucksacks, fanny packs, backpacks, pouches; bags, namely athletic bags, duffel bags, hand bags, travel bags, beach bags; coin purses, pocket wallets, suitcases, vanity cases, briefcases.

Class 25: Clothing, namely ready-made clothing, ready-to-wear clothing, sportswear, tops [clothing], blouses, shirts, t-shirts, hooded tops, hooded jackets, rugby shirts, sweat tops, gym tops, sports tops, sweaters, jerseys, pullovers, sweatshirts, long sleeve t-shirts, polo shirts, tank tops, jumpers, cardigans, trousers, jeans, shorts, sports shorts, skirts, vests, underpants, underwear, boxers, trunks, briefs, panties, swimwear, bathing suits, swim shorts, bikinis, swimsuits, leisurewear, tracksuits, loungewear, lounge pants, dressing gowns, bathrobes, one-piece clothing, sweatpants, sweat shorts, dresses, playsuits, jumpsuits, belts, wristbands, socks; outerwear, namely jackets, sports jackets, parkas, anoraks, windbreakers, fleeces, body warmers, gloves, mittens, scarves, snoods; footwear, namely shoes, sandals, flip-flops, plimsolls, boots, slippers, footwear for sports, sports shoes and athletic shoes; headgear, namely caps, baseball caps, hats, headbands, sun visors, woolly hats and beanies.

Class 32: Energy drinks; energy drinks containing caffeine; soft drinks for energy supply; energy drinks [not for medical purposes]; beers; mineral and aerated waters and other non-alcoholic beverages, namely, fruit drinks and juices; non-alcoholic beverages, namely, refreshing sports drinks, whey beverages, isotonic, hypertonic and hypotonic drinks; fruit beverages and fruit juices; syrups and other preparations, namely, concentrates and powders, for making beverages, namely, sports and energy drinks; beverages, namely, carbonated drinks enhanced with vitamins, minerals, nutrients, amino acids, and/or herbs; carbonated and non-carbonated energy drinks.

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 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 goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 14

The opponent claims that it is quite common that manufacturers or distributers of clothing and fashion also use their trade marks for the designation of watches and jewellery, because these goods are also a matter of fashion/style. Therefore, the consumers will assume that these goods are offered by the same manufacturer as clothing.

However, watches and jewellery in Class 14 are considered dissimilar to clothing, footwear and headgear. Their nature and main purpose are different. The main purpose of clothing is to dress the human body, whereas watches are for displaying the time, and jewels are for personal adornment. They do not have the same distribution channels and are neither in competition, nor complementary. The same reasoning applies to goods such as backpacks, sports bags and traveling trunks and suitcases in Class 18, which are for carrying things when travelling, bags for snowboards; bags for skateboards in Class 28, which are for carrying these specific items of sports equipment, or snowboards, which are used for a specific sport, namely snowboarding. Even though some fashion designers nowadays also sell fashion accessories such as jewellery and watches under their marks, this is not the rule; it tends to apply only to (commercially) successful designers. The other timing devices and accessories (such as straps, cases, dials, clockworks, movement for clocks and watches or precious metals and their alloys), also have nothing in common with the earlier goods. This is even more so for the opponent’s leather and imitations of leather, which are goods that target a professional public, and are for use by manufacturers of finished or semi-finished goods. Consequently, these opposing goods have nothing in common. Their natures and purposes clearly differ, they derive from different undertakings, are distributed via different channels and do not target the same end user. Furthermore, they are neither complementary nor in competition. Thus, these goods are dissimilar.

Therefore, all the contested goods in Class 14 are considered dissimilar to all the goods of the opponent’s earlier marks.

Contested goods in Class 18

The contested backpacks and suitcases are identically contained in the list of the contested goods and the goods in Class 18 of earlier mark No 3.

The contested sacks, namely knapsacks, rucksacks, fanny packs, pouches; bags, namely athletic bags, duffel bags, hand bags, travel bags, beach bags; coin purses, pocket wallets, vanity cases, briefcases are at least similar, if not identical to the opponent’s backpacks; sports bags, traveling trunks and suitcases in Class 18 of earlier mark No 3. These goods coincide, at least, in their public, distribution channels and commercial origin.

Contested goods in Class 25

The contested clothing, namely ready-made clothing, ready-to-wear clothing, sportswear, tops [clothing], blouses, shirts, t-shirts, hooded tops, hooded jackets, rugby shirts, sweat tops, gym tops, sports tops, sweaters, jerseys, pullovers, sweatshirts, long sleeve t-shirts, polo shirts, tank tops, jumpers, cardigans, trousers, jeans, shorts, sports shorts, skirts, vests, underpants, underwear, boxers, trunks, briefs, panties, swimwear, bathing suits, swim shorts, bikinis, swimsuits, leisurewear, tracksuits, loungewear, lounge pants, dressing gowns, bathrobes, one-piece clothing, sweatpants, sweat shorts, dresses, playsuits, jumpsuits, belts, wristbands, socks; outerwear, namely jackets, sports jackets, parkas, anoraks, windbreakers, fleeces, body warmers, gloves, mittens, scarves, snoods are at least similar, if not identical to the opponent’s clothing for sports in Class 25 of earlier mark No 1. These goods serve the same purpose (in particular to give protection against the elements) and target the same public. The distribution channels for these goods coincide and their sales outlets, or the retail departments they are sold in, are often either the same or at least closely connected. Moreover, they often share the same commercial origin.

The contested footwear, namely shoes, sandals, flip-flops, plimsolls, boots, slippers, footwear for sports, sports shoes and athletic shoes are included in the broader category of the opponent’s footwear in Class 25 of earlier mark No 2. They are therefore identical.

The contested headgear, namely caps, baseball caps, hats, headbands, sun visors, woolly hats and beanies are included in the broader category of the opponent’s headgear of earlier mark No 2. They are therefore identical.

Contested goods in Class 32

The opponent argues that the contested energy drinks are used, in particular, as merchandising articles in the field of sporting events. For this reason, consumers will assume that energy drinks designated with the trade mark ‘NITRO’ are sponsored by the manufacturer of the sporting articles (snowboards).

The contested goods in Class 32 are, in essence, non-alcoholic beverages, beers and preparations for making sports and energy drinks, intended for preparing drinks and for quenching thirst. The natures, purposes and methods of use of the opponent’s goods, as already explained above, are different from those of the contested goods in Class 32. They also have different producers and are neither complementary nor in competition. It is true that energy drinks may be used as merchandising articles, in particular in the field of sporting events. However, this is not the rule, and neither is it a sufficiently strong factor to outweigh the above-mentioned differences. Various goods of differing natures, purposes and types are, or might be, used as merchandising articles in the field of sporting events, and it is unjustified to consider such a broad range of goods similar to sporting articles only for this reason. Therefore, all the contested goods in this class are dissimilar to all the goods of the opponent’s earlier marks Nos 1, 2 and 3.

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 or similar are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

Earlier marks Nos 1), 2) and 3) NITRO
Earlier trade marks	Contested sign

The relevant territories are Germany, France, Italy, Hungary, Austria, and Poland (earlier mark No 1), the Czech Republic, Germany, France, Croatia, Italy, Hungary, Austria, Poland, Slovenia, and Slovakia (earlier mark No 2) and the European Union (earlier mark No 3).

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 sole verbal element of the earlier marks, ‘NITRO’, is fully reproduced at the beginning of the contested sign. ‘NITRO’ may be understood by part of the public in the relevant territory as an abbreviation for ‘nitroglycerine’, or a prefix used to indicate compounds containing ‘nitrogen’. However, given that these meanings relate to the field of chemistry/medicine, which are rather specific and in no way related to the goods in question, it cannot be assumed that all the relevant consumers will know them. It follows that at least part of the relevant public may also perceive NITRO as a meaningless word. Moreover, even for those consumers that perceive this meaning in the element, its distinctiveness will not be diminished, given that the relevant goods have nothing to do with ‘nitroglycerine’, ‘nitrogen’, or the notions they evoke.

It should be noted that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The word ‘LORD’ in the contested sign will be understood by part of the relevant public as meaning an appellation for a person or deity who has authority, control, or power over others, acting like a master, a chief, or a ruler. As it has no meaning in relation to the relevant goods, this element has an average degree of distinctiveness. The word ‘STRONG’ will be understood by part of the relevant public with the English meaning of resistant or solid. This word may be seen as allusive to the concept that the goods in question are of particularly good durability. For the part of the public that does not understand this English term, it is meaningless and therefore distinctive.

The typeface of the two verbal elements ‘NITRO’ and ‘LORD’ is stylised to a certain extent, without, however, preventing consumers from immediately grasping the two words. It is noted that the letter ‘O’ in both words is more stylised than the remaining letters, but, in the context of the relevant goods, this particular representation does not bring any specific concept to mind. Thus, these letters, with their stylisation, will be perceived as merely forming part of the respective verbal elements The verbal element ‘NITRO STRONG’, at the bottom of the sign, is depicted in a standard typeface. However, due to its small size and position, it will have hardly any impact. The rectangular black background is a purely decorative, commonplace element. The verbal elements ‘NITRO’ and ‘LORD’ are the dominant elements in the contested sign as they are the most eye-catching given their size and position.

It should be noted that 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).

The earlier marks are word marks. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in upper- or lower-case letters.

Visually and aurally, the signs coincide in the letters/sounds ‘NITRO’, which constitute the entirety of the earlier marks and the first element of the contested sign. They differ in ‘LORD’, as well as in the stylisation of the contested sign. Due to its small size ‘NITRO STRONG’ will be barely – or not at all – perceived and has hardly any impact.

Therefore, overall, considering that the sole element of the earlier marks is entirely contained in the contested sign as a co-dominant element with a normal degree of distinctiveness, and positioned at the beginning, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

Therefore, for the part of the public for which the term ‘NITRO’, or the terms ‘NITRO’ and ‘LORD’, have a meaning, the marks are conceptually similar. For the part of the public for which only ‘LORD’ has a meaning the signs are conceptually not similar. For the remaining part of the public, for which the signs do not have any meaning, since a conceptual comparison is not possible, 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.

d) 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.

The opponent claimed that the earlier trade marks enjoy reputation with respect to snowboards and snowboard gear as well as clothing related to snowboarding and wintersport, but 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 territories. Therefore, the distinctiveness of the earlier marks must be seen as normal.

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, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical, partly (at least) similar, and partly dissimilar. The earlier marks as a whole have a normal degree of distinctiveness for the relevant public, which is composed of the public at large, displaying an average degree of attention.

The signs are visually and aurally similar to an average degree. Conceptually, the signs are similar for part of the relevant public, and not similar for another part of this public, while for the remaining part of the public the conceptual aspect remains neutral.

For these reasons, it is considered that the similarities between the marks outweigh their differences. Therefore, the public might be led to believe that the goods found to be identical or similar come from the same undertaking or economically linked undertakings. It is particularly relevant that the only verbal element of the earlier marks, ‘NITRO’, is fully reproduced at the beginning of the contested sign, as a co-dominant element.

In its observations, the applicant argued that the earlier trade marks had a low degree of distinctiveness, given that many trade marks included the element ‘NITRO’. In support of its argument the applicant referred to some European trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘NITRO’. Under these circumstances, the applicant’s claims must be set aside.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or (at least) similar to those of the earlier trade marks.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) 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

Teodora TSENOVA-PETROVA

Matthias KLOPFER

Francesca DRAGOSTIN

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.