OPPOSITION No B 3 091 566

Exe Sport s.r.o., V Břízách 808, 28924 Milovice - Mladá, Czech Republic (opponent), represented by Jan Malý, Sokolovská 5/49, 18600 Praha, Czech Republic (professional representative)

a g a i n s t

Evosport AB, Servicegatan 1, 941 51 Piteå, Sweden (applicant), represented by Brann AB, Drottninggatan 27, 111 51 Stockholm, Sweden (professional representative)

On 13/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 566 is partially upheld, namely for the following contested goods:

Class 28: Floorball sticks, blades for floorball sticks, floorball balls.

2. European Union trade mark application No 18 056 121 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 18 056 121 for the word mark '77 FREEZ'. The opposition is based on Czech trade mark registration No 341 568 and European Union trade mark registration No 18 061 251, both for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

NON-ADMISSIBILITY OF EUTM REGISTRATION NO 18 061 251

According to Article 46(1)(a) EUTMR, notice of opposition to registration of a EUTM application may be given by the proprietors of, inter alia, earlier registered trade marks referred to in Article 8(2), on the grounds that it may not be registered under Article 8(1) and (5).

According to Article 8(2) EUTMR, for an invoked trade mark registration to be earlier it must have, in the absence of any priority, an application date that is prior to the day on which the contested EUTM application was filed.

In this respect, the contested application was filed on 25/04/2019 whereas EUTM registration No 18 061 251 was filed on 06/05/2019. Furthermore, no priorities were claimed in respect of those marks.

As a result, the EUTM registration claimed as a basis for opposition is not an earlier trade mark within the meaning of Article 8(2) EUTMR that may be invoked in accordance with Article 46(1)(a) EUTMR.

Consequently, the opposition must be rejected as inadmissible insofar it is based on EUTM registration No 18 061 251.

Nevertheless, the examination of the opposition will continue on the basis of the other right invoked, namely earlier Czech trade mark registration No 341 568.

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 18: Sticks.

Class 25: Clothing and footwear for floorball, hockey and football.

Class 35: Advertising agency, promotional activities, promotional publications - distribution, advertising, promotional texts - distribution, on-line advertising on computer network, updating of advertising materials, exhibitions - organization of exhibitions for the promotion of trade and advertising exhibitions, the regrouping of various products (other than their transport) for third parties in order to enable the consumer to conveniently view and purchase those products, retail, wholesale, online store, off-premises, intermediation of trade, and all with goods in classes 1 to 34.

The contested goods are the following:

Class 28: Floorball sticks, blades for floorball sticks, floorball balls; rackets, balls for racketball.

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 28

The contested floorball sticks, floorball balls, blades for floorball sticks are similar to a low degree to the opponent’s clothing for floorball in Class 25 since they consist of goods that are aimed at practicing the same sport and therefore target the same relevant public and usually share the same distribution channels. Furthermore, the goods under comparison are often produced by the same undertakings.

However, the contested rackets, balls for racketball cannot be considered similar to the opponent’s goods and services. In this respect, these contested goods are aimed at practicing racket sports whereas the opponent’s goods in Class 25 consist of clothing and footwear articles aimed at practicing floorball, hockey and football. Therefore, although the goods under comparison may all target the general public, they are aimed at practitioners of different sports and satisfy different needs. Furthermore, even if the goods under comparison may all conceivably be offered for sale in the sports sections of larger retail outlets those sections are usually delimited by sub‑sections for specific sports and the goods at issue are therefore still not normally found in the same places. Moreover, in the absence of any evidence to the contrary, the Opposition Division finds it highly unlikely that the producers of these goods are usually the same. The goods under comparison also have a different nature, purpose and methods of use and are not complementary to each other or in competition. Therefore, these goods cannot be considered to be similar.

As regards the opponent’s goods in Class 18, sticks in this class do not include sticks for practicing ball sports but rather concern walking sticks and hiking/trekking sticks and the like as well as jockey sticks which share no relevant points of contact with the contested goods.

The opponent’s services in Class 35 essentially consist of different advertising services, organization of exhibitions for promotional purposes as well as retail and wholesale services only specified as being related to 'goods in classes 1 to 34'. As regards the opponent’s advertising services and organization of exhibitions, they consist of services aimed at supporting or helping other businesses to do or improve business which share no relevant points of contact with the contested goods. Furthermore, as regards the opponent’s retail and wholesale services covered by the specification the regrouping of various products (other than their transport) for third parties in order to enable the consumer to conveniently view and purchase those products, retail, wholesale, online store, off-premises, intermediation of trade, and all with goods in classes 1 to 34, they are unclear and imprecise since they do not specify the goods or types of goods to which those services relate as required (see, to this effect, 07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 50). For the sake of clarity, the Opposition Division notes that the earlier Czech trade mark registration No 341 568 was applied for on 11/11/2013 and the requirement to specify the goods or types of goods to which the retail (and by analogy wholesale) services relate established by the case-law cited above thus clearly apply to the earlier mark invoked.

Unclear and imprecise terms can only be taken into account in their most natural and literal sense but cannot be construed as constituting a claim to goods or services that cannot be covered by this meaning without further specification. While the opponent’s services of the regrouping of various products (other than their transport) for third parties in order to enable the consumer to conveniently view and purchase those products, retail, wholesale, online store, off-premises, intermediation of trade, and all with goods in classes 1 to 34, can be understood under their natural meaning as referring to the action or business of selling goods or commodities in relatively small quantities for use or consumption and the activity of buying and selling goods in large quantities, usually for resale (as well as intermediation of trade), all in relation to goods in classes 1 to 34, these abstract meanings do not sufficiently reveal their specific commercial nature, that is to say to what goods or types of goods in classes 1 to 34 those services relate. Retail and wholesale services can satisfy different shopping needs relating to goods of different market sectors and thus target different consumers offered through different distribution channels by different undertakings. It follows that the opponent’s the regrouping of various products (other than their transport) for third parties in order to enable the consumer to conveniently view and purchase those products, retail, wholesale, online store, off-premises, intermediation of trade, and all with goods in classes 1 to 34 cannot be construed as relating to or involving the contested goods when such circumstances cannot be understood from their natural and literal meaning.

Retail and wholesale services in general are not similar to any goods that are capable of being sold by retail or wholesale. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.

Furthermore, while retail and wholesale services of specific goods may be similar to varying degrees to specific goods that will depend on the degree of similarity between the goods themselves, also taking into account other relevant factors, such as a possible complementarity between them (if the goods at issue are identical) and whether they target the same relevant public, if there is a close connection between them on the market from the perspective of the consumer, if they are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets and belong to the same market sector, etc.

However, in the case at hand, while the opponent’s retail and wholesale services have been specified to relate to 'goods in classes 1 to 34', the specification of the earlier mark does not indicate in relation to exactly which goods or types of goods in those classes the opponent’s services relate. Goods belonging to classes 1 to 34 may satisfy different shopping needs relating to goods of different market sectors and thus target different consumers offered through different distribution channels by different undertakings. As a result, on the basis of the insufficient information and facts provided by the imprecise specification of the earlier mark, the contested goods and the opponent’s retail and wholesale services in Class 35 cannot be considered to target the same relevant public or share the same distribution channels nor can it be considered that there is a close connection between them on the market or that they belong to the same market sector. Furthermore, it cannot be considered that they are complementary to each other and they are not in competition. Consequently, in the absence of a further specification (by way of a partial surrender) of the unclear and imprecise terms the regrouping of various products (other than their transport) for third parties in order to enable the consumer to conveniently view and purchase those products, retail, wholesale, online store, off-premises, intermediation of trade, and all with goods in classes 1 to 34, these services cannot be considered to be similar to the contested rackets, balls for racketball either. For the sake of clarity, even if the part of the opponent’s services listed above described as intermediation of trade is considered to consist of commercial intermediation services, which do not require any further specification and cannot therefore be considered an unclear and imprecise term, such services are aimed at supporting or helping other businesses to do or improve business and thus do not target the same relevant public as that concerned with the contested goods or share any other relevant factors for finding a similarity between them.

Therefore, the contested rackets, balls for racketball must be considered dissimilar to all the opponent’s goods and services in Classes 18, 25 and 35.

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 similar to a low degree are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

	77 FREEZ
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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 earlier mark is a figurative mark consisting of the verbal element 'freez' depicted in black slightly stylised lower case letters except the letter 'z' which is depicted in grey, and the initial letter 'f' is depicted in small capitals. Above this verbal element, there is a figurative element consisting of a square-shaped grey background on which the letters 'Fz' are depicted in white upper and lower case letters respectively.

The contested sign is the word mark '77 FREEZ'. In the case of word marks, it is the words as such that are protected and not their written form. Therefore, it is irrelevant that the verbal element of the contested sign is depicted in upper case letters whereas the verbal element of the earlier mark is depicted with an initial small cap followed by lower case letters.

The opponent argues that 'FREEZ' will be perceived as a misspelling of the English word 'freeze'. However, this cannot be considered to be a basic English word and the public in the relevant territory is therefore unlikely to know this word or be aware of its meaning. Therefore, the relevant public will not perceive 'FREEZ' as a misspelling of an English word but rather as a fanciful term without any particular meaning. For the sake of clarity, as regards the earlier mark, it is true that the verbal element is depicted in two different colours and the black letters 'free' could as such have a meaning (being a basic and commonly used English word meaning, inter alia, 'costing nothing' or 'provided without charge'). However, 'free' 'z' as a conceptual unit would be non-sensical and since the letters 'Fz' in the figurative element of the earlier mark are depicted in upper and lower case letters respectively, they are also likely to be perceived as representing the first and last letters of the word 'FREEZ'. Therefore, within the context of the earlier mark, the relevant consumers are unlikely to dissect the verbal element 'freez' into two different components but will rather perceive it as consisting of one fanciful word.

Consequently, the coinciding element 'FREEZ' will be perceived as a meaningless word in both signs and it is, therefore, distinctive to a normal degree.

As regards the figurative element in the earlier mark, the use of backgrounds such as squares or frames is quite common and they generally serve to highlight other elements (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27; 27/10/2016, T‑37/16, CAFFE NERO, EU:T:2016:634, § 42). Therefore, this element is non-distinctive. Furthermore, even if the letters 'Fz' must be considered to be distinctive as such, since they are likely to be perceived as a reference to the verbal element 'freez' as explained above, they will still be perceived as a secondary element of the earlier mark.

The additional numerical element '77' in the contested sign may be perceived as referring to the length of floorball sticks (i.e. the size 77cm) but has no direct connection to the other goods concerned, namely floorball blades and balls. Therefore, while the number '77' may be weak in relation to some of the goods concerned, it must be considered distinctive to a normal degree in relation to others.

Visually, the signs coincide in the distinctive verbal element ‘FREEZ’ and although it differs in the slight stylisation and colour combination used in the earlier mark, those features will not detract the consumers’ attention away from the verbal element as such. The signs also differ in the additional figurative element in the earlier mark which will however be perceived as a secondary element as explained above. Furthermore, the signs differ in the additional numerical element in the contested sign which, regardless of whether it is perceived as distinctive to a normal degree or weak in relation to the different goods in question, is much shorter than the coinciding word ‘FREEZ’.

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

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‛FREEZ’, present identically in both signs. Furthermore, the letters ‘Fz’ of the earlier mark are unlikely to be pronounced by the relevant public as they are likely to be perceived as the first and last letters of the subsequent word ‛FREEZ’ for the reasons set out above. However, the signs differ in the sound of the additional numerical element '77' in the contested sign. This element, which is either weak or distinctive to a normal degree depending on the goods in question, will be pronounced as 'seventy-seven' (but in the official language of the relevant territory) and has no counterpart in the earlier mark.

Therefore, the signs are also aurally similar at least to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the numerical element of the contested sign 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 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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.

Account should also be 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).

In the present case, the goods and services at issue have been found partly similar to a low degree and partly dissimilar. The degree of attention of the relevant public is average.

The earlier mark has a normal degree of distinctiveness and the signs are visually and aurally similar at least to an average degree on account of their coincidence in the distinctive word 'FREEZ'. However, the signs are conceptually not similar since the contested sign will be associated with the meaning of the numerical element '77' which is not present in the earlier mark.

Nevertheless, this conceptual difference between the signs is not sufficient to outweigh the visual and aural similarities between them regardless of the degree of distinctives of the additional element '77' since the coinciding word 'FREEZ' is (also) distinctive to a normal degree and will be perceived as a fanciful word without any particular meaning. Furthermore, consumers are unlikely to recall the slight stylisation and colour combination of the word 'FREEZ' of the earlier mark in their imperfect recollection of the signs and the additional figurative element of the earlier mark will be perceived as a secondary element primarily making reference to the word 'FREEZ' for the reasons set out above in section c) of this decision. Therefore, even if the goods concerned are only similar to a low degree and despite the additional figurative element in the earlier mark and the additional numerical element in the contested sign, in view of the overall similarity between the signs, consumers are still likely to believe that the goods offered under the signs in dispute originated from the same or economically linked undertakings.

As a result, there is a likelihood of confusion on the part of the public in the relevant territory within the meaning of Article 8(1)(b) EUTMR. Therefore, the opposition is partly well founded on the basis of the opponent’s Czech trade mark registration No 341 568.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree to those of the earlier trade mark.

The rest of the contested goods are dissimilar to the opponent’s goods and services. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

In its observations of 11/01/2020 the opponent claimed that the applicant filed the contested trade mark in bad faith since it is a former subcontractor of the opponent. However, apart from the fact that the opponent did not submit any evidence to substantiate such claim, this cannot in any event be a basis for the opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this article does not include bad faith as a ground for opposition, this point cannot be taken into account and is irrelevant for the outcome of these proceedings.

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

Michele M. BENEDETTI - ALOISI

Sam GYLLING

Aurelia PEREZ BARBER

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.