OPPOSITION No B 3 080 967

Jordi Ortín Toldrà, C/ de Puig i Cadafalch 105, Baixos, 08203 Sabadell, Spain (opponent), represented by Abaco Propiedad Industrial, Sant Bonaventura, 18 Bajos, 08172 St Cugat del Vallès, Spain (professional representative)

a g a i n s t

Viktor Strack, Kirchbergstr 33, 76356 Weingarten, Germany (applicant), represented by Dr. Wallscheid & Drouven Partnerschaftsgesellschaft, Am Mittelhafen 10, 48155 Münster, Germany (professional representative).

On 08/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 967 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 007 917 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 and services of European Union trade mark application No 18 007 917 ‘Gym Donis’. The opposition is based on European Union trade mark registration No 11 555 935 ‘GYM TONIC’. The opponent invoked Article 8(1)(a) EUTMR.

In relation to the grounds for the opposition, the Opposition Division notes the following. Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed but identity between the signs and/or the goods/services cannot be established (as is the case here, since the signs are obviously not identical), the Office will still examine the case under Article 8(1)(b) EUTMR, which requires at least similarity between signs and goods/services and likelihood of confusion. Similarity covers situations where both marks and goods/services are similar and also situations where the marks are identical and the goods/services are similar or vice versa.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 11 555 935.

The date of priority of the contested trade mark is 27/07/2018.

According to the Register of European Union trade marks, earlier EUTM No 11 555 935 was registered on 14/06/2014. Therefore, it had been registered for less than five years at the date of priority of the contested trade mark. Consequently, the request for proof of use is inadmissible.

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:

Class 25: Underwear.

Class 35: Sale to the public in retail outlets and retailing via global communications networks of ready-made clothing, footwear, headgear, underwear, import-export services.

The contested goods and services are the following:

Class 25: Clothing.

Class 35: Retail services connected with the sale of clothing and clothing accessories; retail services in relation to clothing; wholesale services in relation to clothing; online retail store services relating to clothing; retail services in relation to clothing accessories; online retail services relating to clothing; mail order retail services connected with clothing accessories; mail order retail services for clothing.

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 25

The contested clothing includes, as a broader category the opponent’s underwear. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

Contested services in Class 35

The contested retail services connected with the sale of clothing; retail services in relation to clothing; online retail store services relating to clothing; online retail services relating to clothing; mail order retail services for clothing are identical to the opponent’s sale to the public in retail outlets and retailing via global communications networks of ready-made clothing, either because they are identically contained in both lists (including synonyms) or because the contested services include, or overlap with, the opponent’s services. With regard to mail order retail services, it is noted that they are the buying of goods by mail delivery, i.e. the buyer places an order for the desired products with the merchant through some remote method. Nowadays, that is generally done by filling in the order form on a website or mobile app. Therefore, mail order retail services cannot be clearly separated from the retailing via global communication networks, and the contested mail order retail services for clothing are considered identical to the opponent’s retailing via global communications networks of ready-made clothing.

The contested retail services connected with the sale of clothing accessories; retail services in relation to clothing accessories; mail order retail services connected with the sale of clothing accessories are similar to a high degree to the opponent’s sale to the public in retail outlets and retailing via global communications networks of ready-made clothing. Retail services of specific goods and retail services of other specific goods have the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. Similarity is found between the retail services where the specific goods concerned are commonly retailed together in the same outlets and they are directed at the same public. These conditions are fulfilled in the present case, since the goods subject to the retail services under comparison are commonly brought together by the same retailers, they are sold together in the same places and are of interest to the same relevant public. On account of the close proximity which exists between the goods sold at the retail services under comparison, the degree of similarity between them is high.

The contested wholesale services in relation to clothing are similar to the opponent’s sale to the public in retail outlets and retailing via global communications networks of ready-made clothing. Although wholesale services and retail services target a different public, they have the same nature and purpose, since both are aimed at bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods. Furthermore, the subject of these services (the goods themselves) is the same and the public could take the view that a wholesaler also offers retail services relating to the same goods, and vice versa.

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is average.

c) The signs

GYM TONIC	Gym Donis
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 common element, ‘GYM,’ is an English word meaning, inter alia, ‘a place or building for practice of or instruction in athletic exercises; a gymnastic school’. In view of this, and as argued by the applicant, this element is non-distinctive for the goods and services at issue, since it may indicate the kind of clothing, or the specialisation of the retailer/wholesaler offering clothing and clothing accessories for sale. However, the Opposition Division does not consider that the English word ‘gym’ will be understood by the relevant public throughout the European Union, for example in Slovenia, Slovakia and Latvia where English is not widely spoken and where the equivalent words in the official languages are not close to the English word (i.e. ‘telovadnica’ in Slovenian, ‘telocvičňa’ in Slovakian and ‘sporta zāle’ in Latvian). In these language areas, the verbal element ‘Gym’ will not be understood as having any particular meaning and for this part of the public, it will be perceived as fanciful and, thus, distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Slovenian-, Slovakian- and Latvian- speaking parts of the relevant public.

The second element of the earlier mark is ‘TONIC’. Since this word is close to the equivalent word in the relevant languages (i.e. ‘tonik’ in Slovenian and Slovakian, ‘toniks’ in Latvian), it may be understood as either ‘a carbonated beverage with bitter taste, usually used as a mixer for alcoholic drinks’ or ‘a sort of cosmetic preparation’. In any way it has no meaning in relation to the relevant goods and services, and is therefore distinctive.

The second element of the contested sign is ‘Donis’. It is meaningless for the relevant public and therefore distinctive.

It is also important to note 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.

Visually, the signs coincide in their first verbal element, ‘GYM’. This element is distinctive for the relevant goods and services and placed at the beginning of the signs where it has greater impact on the overall impression of the sign. The signs also have the same length and the same structure. The second elements of the signs, ‘TONIC’ and ‘Donis’, display some differences. Although the first and last letters of these words are not the same, namely ‘T/D’ and ‘C/S’ respectively, the middle part in each of these words contains the same string of letters, ‘ONI’.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant language areas, the pronunciation of the signs coincides in the word ‛GYM’, present identically in both signs. The signs also coincide in the pronunciation of the letters ‘*ONI*’ of their second elements. The pronunciation differs in the sound of the first and last letters of their second element, ‘T/D and ‘C/S’ respectively. It should be noted, however, that the pronunciation of the consonants ‘T’ and ‘D’ is very similar and the difference between them can even go unnoticed by the relevant public.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant language areas will perceive the meaning of the element ‘TONIC' of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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 and services in question from the perspective of the public in the relevant language areas. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods and services are identical or similar. They target both the public at large and professionals whose degree of attention is average in relation to the purchases in question. From the perspective of the public in the language areas on which the present assessment is focused, the signs are visually similar to an average degree, aurally similar to a high degree and conceptually not similar. The earlier mark enjoys an average degree of inherent distinctiveness which affords it a normal scope of protection.

The Opposition Division finds that the differences identified between the signs do not have sufficient impact to outweigh the similarities between them. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion on the part of the Slovenian-, Slovakian- and Latvian-speaking parts of the public in the European Union. 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 11 555 935. It follows that the contested trade mark must be rejected for all the contested goods and services.

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, 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

Christophe DU JARDIN

Solveiga BIEZA

Ferenc GAZDA

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.