OPPOSITION Nо B 3 085 186

 

Iván Pérez Eguizabal, Poligono Raposal 16-17, 26580 Arnedo, Spain (opponent), represented by Seain, S.L., C/ Vara de Rey 5 bis, 1º 3, 26003 Logroño (La Rioja), Spain (professional representative) 

 

a g a i n s t

 

Black Waltz Ab, Tyghusvägen 4, 415 27 Göteborg, Sweden (applicant), represented by Advokatbyrån Crown Ab, Tredje Långgatan 13, 413 03 Göteborg, Sweden (professional representative).

On 13/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 085 186 is upheld for all the contested goods, namely: Class 25: Tee-shirts; hooded sweatshirts; all aforementioned goods included in class 25 only as merchandise for a music group.

2.	European Union trade mark application No 18 026 112 is rejected for all the contested goods. It may proceed for the remaining goods and services.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 026 112  (figurative mark), namely against all the goods in Class 25. The opposition is based on national trade mark registration (Spain) No 1 693 652, (figurative mark). The opponent invoked Article 8(1)(a) and 8(1)(b) EUTMR.

 

PROOF OF USE

 

The applicant states that there is no evidence that the mark on which the opponent relied was in use.

 

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

 

Since the applicant statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.

 

Furthermore, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

 

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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

 

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

 

Class 25: Clothing, footwear (excluding orthopaedic footwear), headwear.

The contested goods, after two restrictions made by the applicant in June and December 2019, are the following:

 

Class 25: Tee-shirts; hooded sweatshirts; all aforementioned goods included in class 25 only as merchandise for a music group.

The contested tee-shirts; hooded sweatshirts; all aforementioned goods included in class 25 only as merchandise for a music group are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The applicant states that the opponent’s goods are neither identical nor similar to the contested goods because the applicant’s customers belong to a special segment of the market being the fans of a specific music band. 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). The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, as the opponent’s clothing (a term from the NICE classification) belong to a broad category, the argument raised by the applicant is irrelevant.

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 whose

degree of attention, contrary to the assertion of the applicant, is considered to be average (08/02/2007, T-88/05, EU:T:2007:45, NARS, § 53).

 

 

c)  The signs

 

Earlier trade mark	Contested sign

 

 

The relevant territory is Spain.

 

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 common verbal element ‘AVATAR’ will be understood as ‘incarnation of an Hindu deity; reincarnation or change; and/or the electronic image of a computer user (in a game)’ by the relevant public. As such it has no meaning in relation to the relevant goods, and is, therefore, distinctive.

As regards the figurative device depicted in the black background of the earlier mark, part of the relevant public will not perceive it with any specific concept, while another part, as suggested by the applicant, might perceive it as the stylized image of three archers. The letters of the earlier mark are stylized in white and black colours, against a black circle, which is a basic geometric shape with a mere decorative nature and non-distinctive.

As regards the figurative aspects of the contested sign, it should be noted that although the letters ‘A’ are stylised in such a way as to resemble to a very high degree the Cyrillic letter „Д“ /d/, it is unlikely that the relevant Spanish public will perceive it as a Cyrillic letter (since the average Spanish consumer is not familiar with this alphabet) or, even more unlikely, that it will know how to pronounce it. Consequently, it will simply perceive it as a stylized ‘A’, a decorative depiction of the word elements. Since consumers are accustomed to the stylisation of verbal elements in marks, they will not pay significant attention to these features as indicators of commercial origin.

It should be further 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 mark has no element that could be considered clearly more dominant than other elements. However, considering the above, it is its verbal element that will have more influence over consumers and will therefore carry more weight in the comparison of the signs.

  

Visually, the signs coincide in the letters ‘AVATAR’ and the colours in which they are depicted. They differ in the remaining figurative elements and aspects, which are non-distinctive or have less impact on the consumers.  

 

Therefore, the signs are similar to at most 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 both signs will be perceived with the same meaning by part of the public, the signs are conceptually identical. For the remaining part of the public, that will perceive the figurative devices in the earlier mark as having a different concept, the signs are conceptually similar to a high degree.

 

 

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 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.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the contested goods are identical to the opponent’s goods. They are directed at the public at large whose degree of attention is average.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually similar, aurally identical and conceptually either identical or highly similar. In particular, the marks coincide in their distinctive verbal element ‘AVATAR’, which is the only verbal element of the signs. The fact that the signs are aurally and conceptually identical, at least for part of the public, is also of a great relevance in the present case.

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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The applicant claims that it is appropriate to take into account the category of goods in question and the way they are marketed, especially the specific distribution channels they will use. In this regard it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination and is carried out in a more abstract manner. For this reason, specific marketing strategies are not relevant. The Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that are expected for the category of goods covered by the marks. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (judgments of 15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58).

The applicant refers to previous judgments to support its arguments, namely 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, 26/04/2007; C-412/05 P, Travatan, EU:C:2007:252 and 29/04/2004, C-473/01 P & C-474/01 P, Tabs (3D), EU:C:2004:260.

In this regard it should be noted that the above judgments refer to different scenarios, comparing different goods, and consequently different publics. Therefore, they cannot be applied directly to the case at hand. Nevertheless, it should be noted that in the second case likelihood of confusion was confirmed.

 

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 national trade mark registration (Spain) No 1 693 652. 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(1)(a) EUTMR.

 

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

 

 

Cristina SENERIO LLOVET

Tzvetelina IANTCHEVA

Meglena BENOVA

 

 

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.