OPPOSITION No B 3 090 208

Diesel S.P.A., Via dell'Industria 4-6, 36042 Breganze (VI), Italy (opponent), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Mario Grall, Schöneringer Straße 14, 4073 Wilhering, Austria (applicant).

On 25/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 208 is upheld for all the contested goods.

2. European Union trade mark application No 18 059 020 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 of European Union trade mark application No 18 059 020 ‘SUPERJOGGS’ (word mark). The opposition is based on, inter alia, Spanish trade mark registration No 3 631 847 ‘JOGGJEANS’ (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 Spanish trade mark registration No 3 631 847.

a) The goods

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

Class 25: Clothing; clothing for children; Bath robes; Swimming costumes; Belts [clothing]; Ties; Gloves; Underwear; Pajamas; Nightwear; Stockings; Tights; Shawls and headscarves; Sashes for wear; Footwear; Headgear.

The contested goods are the following:

Class 25: Clothing; Headgear; Footwear.

Clothing; headgear; footwear are identically contained in both lists of 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

JOGGJEANS	SUPERJOGGS
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 earlier mark is a one-word mark, ‘JOGGJEANS’. It has no meaning as a whole for the relevant public, and therefore, it is distinctive. However, when perceiving a sign, consumers tend to break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, it cannot be excluded that the public (or at least its part) will break down the sign into the elements ‘JOGG’ and ‘JEANS’. The word ‘JEANS’ is a widely used term for a type of trousers, and therefore the public in the relevant territory will easily see this word in the expression ‘JOGGJEANS’. It is non-distinctive at least for clothing. Although the remaining part of this expression, ‘JOGG’, has no meaning as such, a part of the relevant public may associate it with ‘JOGGING’, a term widely used for a running activity. Consequently, for this part of the relevant public ‘JOGG’ is not particularly distinctive in relation to clothing, headgear or footwear which may also cover articles designed for jogging. For the remaining part of the public, the element ‘JOGG’ has no direct meaning or evoke any association in relation to the goods at issue and therefore, it is distinctive.

The contested sign is also a one-word mark, ‘SUPERJOGGS’. The above-mentioned principle concerning the breaking down of the verbal elements is also applicable here. The English word ‘SUPER’ will be understood by the Spanish-speaking public as the adjective meaning super, excellent, superb, first-class since the equivalent in Spanish is the close word súper. It is laudatory and, therefore, weak. The second element ‘JOGGS’ will, by a part of the public, be perceived in the same way as the verbal element ‘JOGG’ of the earlier mark, and therefore it is weak for this part of the public. It is distinctive for the part of the public that does not perceive any meaning or association in this word.

Visually, the signs coincide in the letters ‘JOGG’, which form the most distinctive element in both signs, at least for a part of the public. However, the marks differ in the second element ‘JEANS’ of the earlier mark (non-distinctive, at least for a part of the relevant goods) and in the first element ‘SUPER’ (weak for the relevant goods) and in the additional ‘S’ at the end of the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘JOGG’, present identically in both signs and distinctive at least for a part of the public. The pronunciation differs in the sound of the letters ‛JEANS’ of the earlier mark and in the sound of the letters ‘SUPER’ and the last letter ‘S’ of the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs will be associated with the word ‘jogging’ (by at least a part of the public), they are conceptually similar to an average degree.

For the part of the public that does not perceive a meaning in ‘JOGG’ or ‘JOGGS’, the marks 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, despite the presence of a non‑distinctive and, at least for part of the public, also a weak element in the mark, as stated above in section c) of this decision.

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.

In the present case, the goods are identical and directed at the public at large with an average degree of attention.

The signs are visually, aurally and, for a part of the public, conceptually similar to an average degree. The marks coincide in their, at least for a part of the public, distinctive element ‘JOGG’, even if it contains an additional ‘S’ in the contested sign. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark ‘JOGGJEANS’, 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 Spanish trade mark registration No 3 631 847 ‘JOGGJEANS’. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 3 631 847 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 rights 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

Anna BAKALARZ

Lena FRANKENBERG GLANTZ

Martin MITURA

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.