OPPOSITION Nо B 3 089 535

 

Head Technology GmbH, Wuhrkopfweg 1, 6921 Kennelbach, Austria (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative) 

 

a g a i n s t

 

SN Trade AB, Box 530, 10130 Stockholm, Sweden (applicant), represented by Brann AB, Drottninggatan 27, 111 51 Stockholm, Sweden (professional representative).

On 29/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 089 535 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 021 313 is rejected in its entirety.

 

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

 

REASONS

 

On 23/07/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 021 313 ‘HEAD HUG’ (word mark). The opposition is based on international trade mark registration designating Benelux, Croatia, Czech Republic, Hungary, Latvia, Poland, Slovakia, Spain, Sweden No 1 156 590, ‘HEAD’ (word mark). The opponent invoked Article 8(1)(b) 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.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration designating Spain and Latvia No 1 156 590.

 

a) The goods

 

The goods on which the opposition is based are the following:

 

Class 25: Woolly hats, hats, peaked caps, headbands.

The contested goods are the following:

 

Class 25: Hats; bonnets [headwear]; headgear; caps [headwear].

Hats are identically contained in both lists of goods.

The contested caps [headwear] include, as a broader category the opponent's peaked caps. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested bonnets [headwear] overlap with the opponent's hats as it is not excluded that the opponent’s hats have the shape of a bonnet. Therefore, they are identical.

The contested headgear includes, as a broader category, the opponent's hats. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large. The degree of attention is average.

 

 

c) The signs

 

HEAD	HEAD HUG
Earlier trade mark	Contested sign

 

The relevant territories are Spain and Latvia.

 

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 applicant sustains that the common element ‘HEAD’ is a basic word, understood, inter alia, in Spain and Latvia. The applicant has not submitted evidence to show that this verbal element is a basic English word and it will be understood by Spanish- and Latvian-speaking public. In the absence of such evidence the Opposition Division does not share the applicant’s argument. Therefore, contrary to applicant’s opinion, the coinciding verbal element ‘HEAD’ of the signs has no meaning for the relevant public and is, therefore, distinctive.

The verbal element ‘HUG’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

 

Visually and aurally, the signs coincide in the verbal element ‘HEAD’, placed at the beginning of the contested sign and representing the sole element of the earlier mark. 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. However, they differ in the additional element ‘HUG’ of the contested sign.

 

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

 

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.

 

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

 

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.

 

e) Global assessment, other arguments and conclusion

 

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical and they target the general public who possesses an average degree of attention. 

The distinctiveness of the earlier mark must be seen as normal.

The signs are visually and aurally similar to an average degree, due to the common element ‘HEAD’, the sole element of the earlier mark and placed at the beginning of the contested sign, where the customers pay more attention. However, they differ in their in the additional element ‘HUG’ of the contested mark. Conceptually, they are neutral, since none of the signs will be associated with a concept.

As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). 

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

 

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating Spain and Latvia No 1 156 590. It follows that the contested sign must be rejected for all the contested goods.

 

As the earlier international trade mark registration designating Spain and Latvia No 1 156 590 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier territories covered by the international trade mark registration designating No 1 156 590 or the Austrian trade mark No 270 346, invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

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

 

 

María Clara IBÁÑEZ FIORILLO

Francesca DRAGOSTIN

Inés GARCÍA LLEDÓ

 

 

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.