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OPPOSITION Nо B 3 082 129

 

Athletia Invest GmbH, Luxemburger Strasse 282 e, 50937 Köln, Germany (opponent), represented by Lentze Stopper Rechtsanwälte PartGmbB, Widenmayerstr. 28, 80538 München, Germany (professional representative) 

 

a g a i n s t

 

Kao Kabushiki Kaisha, also trading as Kao Corporation, 14-10, Nihonbashi Kayabacho 1-chome Chuo-ku, 103-8210 Tokyo, Japan (applicant), represented by Bird & Bird LLP, Avenue Louise 235, 1050 Bruxelles, Belgium (professional representative).

On 28/10/2020, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 082 129 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 and services of European Union trade mark application No 17 962 212 ‘ATHLETIA’ (word mark), The opposition is based on European Union trade mark registration No 15 742 372 for the word mark 'ATHLETIA SPORTS' and European Union trade mark registration No 16 811 101, (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The Opposition Division observes that on 27/02/2020 the opponent submitted three other earlier rights, namely European Union trade mark registrations No 18 100 644 and No 12 594 206 and International Registration No 1 383 337, to support its opposition. It should be noted, however, that the identification elements of the earlier trade mark registrations on which an opposition is based, namely the registration number, the member state in which it is registered and an indication whether it is registered or applied for, are among the absolute requirements that must be present in the notice of opposition or submitted by the opponent on its own initiative within the opposition period, as laid down in Article 2(2)(a) to (c) EUTMDR, and Article 146(5) and (7) EUTMR. Therefore, an earlier right submitted at a later stage of the proceedings cannot be taken into consideration.

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 and services on which the opposition is based are the following:

 

European Union trade mark registration No 15 742 372:

Class 9: Recorded content; databases (electronic); computer software; data networks; computer databases; computer application software for mobile telephones; computer programs for accessing and using the internet; computer software platforms; digital recordings; community software.

European Union trade mark registration No 16 811 101:

Class 9: Recorded content; databases (electronic); computer software; data networks; data storage media; computer application software for mobile telephones; computer programs for accessing and using the internet; computer software platforms; digital recordings; community software.

European Union trade mark registrations No 15 742 372 and No 16 811 101:

Class 35: Digital advertising services; online advertisements; promotion, advertising and marketing of on-line websites; advertising, including promotion of products and services of third parties through sponsoring arrangements and licence agreements relating to international sports' events.

Class 38: Telecommunication services; automatic transfer of digital data using telecommunications channels; consulting services in the field of electronic communications; digital transmission of data; digital transmission services for audio and video data; data transmission for others; photo uploading services; video uploading services; transmission of information via national and international networks; transmission of messages and images; secure transmission of data, sound or images; communication services for the electronic transmission of data; telecommunications services for the distribution of data; telecommunications services to obtain information from data banks; digital network telecommunications services; transmission of sound by electronic means; transmission of messages, data and content via the internet and other communications networks; transmission and reception [transmission] of database information via the telecommunication network; data transmission; transmission of information for business purposes; transmission of information in the audiovisual field; information transmission services via digital networks; transmission of sound or visual recordings over networks; transmission of sound, video and information; access to content, websites and portals; electronic transmission of images, photographs, graphic images and illustrations over a global computer network; electronic data interchange services; streaming audio and video material on the internet; streaming of data; streaming of video material on the internet; transmission and distribution of data or audiovisual images via a global computer network or the internet; transmission of data, audio, video and multimedia files, including downloadable files and files streamed over a global computer network; provision of electronic video links; providing access to multimedia content online; provision of electronic sound links; provision of telecommunication access to audio content provided via the internet; provision of telecommunication access to video content provided via the internet; web site forwarding services; providing access to platforms and portals on the internet; telecommunication services provided via platforms and portals on the internet and other media; satellite broadcasting services relating to sporting events; forums [chat rooms] for social networking; providing on-line chat rooms for social networking.

Class 41: Electronic desktop publishing; multimedia entertainment software publishing services; providing on-line electronic publications, not downloadable; digital video, audio and multimedia entertainment publishing services; publication of material which can be accessed from databases or from the internet; providing electronic publications from a global computer network or the internet, not downloadable; provision of on-line entertainment; publication of multimedia material online; providing on-line videos, not downloadable; entertainment services relating to sport; sporting services; entertainment, sporting and cultural activities; sports and fitness; provision of news relating to sport; provision of information relating to sports persons; provision of information relating to sporting events; providing sports entertainment via a website; information provided online via computer databases or global communications networks in relation to sport.

Class 42: IT services; science and technology services; computer network services; software development, programming and implementation; on-line computer services; implementation of computer programs in networks; design of software for processing and distribution of multimedia contents; information technology [IT] consultancy; expert consultancy services in connection with computing networks; encryption of digital music; encryption of digital images; data encryption services.

Class 45: Legal administration of licences; copyright and industrial property rights management; consultancy relating to the management of intellectual property and copyright; legal services for procedures relating to industrial property rights; legal services for actions relating to copyright; legal services relating to the exploitation of copyright and industrial property rights; management and exploitation of copyright and industrial property rights by licensing for others; advisory services relating to intellectual property protection; licensing industrial property rights; copyright licensing; licensing of rights relating to films; licensing of rights relating to video productions; licensing of rights to films, television and video productions; legal services relating to the management, control and granting of licence rights; online services provided by social networks (sharing content); granting, providing, leasing and other exploitation of licences by means of granting rights to films, television and radio productions and other image and audio programmes, in particular sports rights and sporting content; information provided online via computer databases or global communications networks in relation to sports rights.

The contested goods and services are the following:

 

Class 3: Soaps; cosmetics; perfumery; face cream; skin cream; face packs; skin lotion; milky face lotion; lip cream; make-up base; skin cleansing preparations; soaps; skin whitening preparations; foundation make-up; face powder; bath powder; eye make-up; eye liner; mascara; eye brow pencils; lipsticks; cheek colour; sunscreen preparations; sunscreen lotion; sunscreen cream; nail care preparations; nail colour and cuticle coat; cosmetic preparations for bath; non-medicated bath salts; bubble bath and bath oils; hair care preparations; shampoo; hair rinse; hair conditioner; hair lotion; hair creams; hair-dye; hair spray; hair gel and hair mousse; perfume; eau de cologne; eau de toilette; cotton balls for cosmetic purposes; room scenting sprays.

Class 5: Tissues impregnated with antibacterial preparations; skin care preparations for medical purposes; medicated soaps; room sprays; medicated cosmetic preparations; medicated cosmetics; medicated shampoo; medicated hair care preparations; medicinal hair growth preparations; deodorising room sprays; air fresheners; medical and surgical plasters; material prepared for bandaging.

Class 21: Cosmetic and toilet utensils, other than electric toothbrushes; perfume containers; perfume sprayers; cosmetic brushes; eyebrow brushes; hair brushes; nail brushes; shaving brushes; combs; powder compacts; powder puffs; cosmetic sponges; cosmetic utensils; toilet cases; cosmetic sponges; make-up removing appliances; perfume bottles; lotion bottles; body brushes; hair combs.

Class 44: Beauty salons; hairdressing salons; massage and therapeutic shiatsu massage; chiropractics; moxibustion; treatment to joint-dislocation; medical services, providing medical information, physical examination; preparation and dispensing of medications; dietary and nutritional guidance; rental of potted plants; rental of machines and apparatus for use in beauty salons or barber's shop; rental of lawnmowers.

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 terms ‘in particular’ and ‘including’ used in the opponent’s list of goods and services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

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.

 

The contested goods mainly consist of cosmetics and different kinds of sanitary preparations in Class 3, sanitary preparations for medical purposes and deodorizing preparations in Class 5, cosmetic and toilet utensils in Class 21, and medical and beauty care services as well as gardening services in Class 44.

The opponent’s goods, in both earlier trade marks, mainly consist of software and recorded content in Class 9, promotion and marketing services in Class 35, transmission of digital files, providing user access to global computer networks and broadcasting services in Class 38, provision of entertainment, sporting and cultural activities and publishing services in Class 41, IT and IT consulting services in Class 42 and legal services in Class 45.

The opponent claims that the contested goods are connected with the opponent’s goods and states that ‘the applicant plans to build up the Opposed Trade Mark as a ‘lifestyle brand’ in the future’. The opponent further explains that its area of business is the sports and social media sector, which forms an important part of ‘lifestyle’ of consumers and consequently the conflicting trade marks target ‘an equal consumer group who is interested in healthy and sportive lifestyle’.

Comparison of the goods and services must be based on the wording indicated in the respective lists of goods and services. It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T 568/12, Focus extreme, EU:T:2014:180, § 30 and the case law cited therein).

Any actual or intended use not stipulated in the list of goods and services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods and services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

The conflicting goods and services have different natures, purposes and methods of use. They are neither complementary, nor in competition with each other. Furthermore, they do not originate from the same undertakings, are offered through different distribution channels and target a different relevant public. Therefore, these goods and services are dissimilar to each other.

b) Conclusion 

 

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly 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 goods and services 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.

 

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

 

 

Tzvetelina IANTCHEVA

Sylvie ALBRECHT

Sofía SACRISTÁN MARTÍNEZ

 

 

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.