OPPOSITION No B 3 092 493

Felina GmbH, Lange Rötterstrasse 11 - 17, 68167 Mannheim, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

Fjellsport AS, Klinestadmoen 10, 3241 Sandefjord, Norway (applicant), represented by Zacco Norway AS, Haakon VII gate 2, 0125 Oslo, Norway (professional representative).

On 26/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 092 493 is partially upheld, namely for the following contested goods and services:

Class 25: Clothing; footwear; headgear; swim wear; gloves; bathing caps; bath sandals; cyclists' clothing; pants; trousers; sport uniforms; fishing vests; football boots; gaiter; sweaters; mitts; boots; headbands; rainwear; clothing for sports; clothing for gymnastics; galoshes; leggings [leg warmers]; tuques; cap peaks; clothing of imitations of leather; wet suits for waterskiing; ear muffs [clothing]; uniforms; vests; shoes; ski boots; beach shoes; shorts; sport shoes; wooden shoes; slippers; sneakers.

Class 35: Retail services in relation to clothing.

2. European Union trade mark application No 18 059 902 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 059 902 ‘FELINES’ (word mark), namely against all the goods in Class 25 and part of the services in Class 35. The opposition is based on European trade mark registration No 4 602 504 ‘FELINA’ (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.

a) The goods and services

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

Class 25: Clothing, in particular corsetry, underwear, swimwear.

The contested goods and services are the following:

Class 25: Clothing; footwear; headgear; swim wear; gloves; bathing caps; bath sandals; cyclists' clothing; pants; trousers; studs for football boots; sport uniforms; fishing vests; football boots; gaiter; sweaters; mitts; boots; headbands; rainwear; clothing for sports; clothing for gymnastics; galoshes; soles for footwear; leggings [leg warmers]; tuques; cap peaks; clothing of imitations of leather; wet suits for waterskiing; ear muffs [clothing]; uniforms; vests; shoes; ski boots; anti-slip protection for shoes; beach shoes; shorts; sport shoes; wooden shoes; slippers; sneakers.

Class 35: Retail services in relation to clothing.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

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.

Contested goods in Class 25

Clothing; swim wear are identically contained in both lists of goods.

The contested gloves; cyclists' clothing; pants; trousers; sport uniforms; fishing vests; gaiter; sweaters; mitts; rainwear; clothing for sports; clothing for gymnastics; leggings [leg warmers]; clothing of imitations of leather; wet suits for waterskiing; ear muffs [clothing]; uniforms; vests; shorts are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested footwear; headgear; bathing caps; bath sandals; football boots; boots; headbands; galoshes; tuques; cap peaks; shoes; ski boots; beach shoes; sport shoes; wooden shoes; slippers; sneakers are similar to the opponent’s clothing. They have the same purpose, namely to dress and protect the body. Moreover, they can have the same producers, distribution channels and relevant public.

However, the contested studs for football boots; soles for footwear; anti-slip protection for shoes are all parts of footwear that are used during the manufacturing process of these goods. Therefore, these contested goods and the opponent’s one (being finished products) have different natures, purposes, manufacturers, distribution channels and customers, and they are neither complementary nor in competition. Consequently, these contested goods are dissimilar to the opponent’s goods.

Contested services in Class 35

Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale). Moreover, the Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34).

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T- 365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

Therefore, the contested retail services in relation to clothing are similar to an average degree to the opponent’s clothing in Class 25.

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. The degree of attention is average.

c) The signs

FELINA	FELINES
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.

For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Swedish-speaking part of the public.

Both marks are word marks, ‘FELINA’ and ‘FELINES’. They have no meaning for the analysed public and are, therefore, distinctive.

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 letters ‘FELIN‘. However, they differ in their last letters, ‘A’ of the earlier mark and ‘ES’ of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the first letters ‛FELIN’, present identically in both signs. The pronunciation differs in the sound of the last letters, ‘A’ of the earlier sign and ‘ES’ of the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public under analysis. 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 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 under analysis. 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.

In the present case, the goods and services are partly identical, partly similar and partly dissimilar. Those found to be identical and similar are directed at the public at large. The degree of attention is average.

The marks are visually and aurally similar to a high degree and the conceptual aspect does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark is normal.

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). The relevant public with an average degree of attention may believe that the identical and similar goods and services come from the same undertaking or at least economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Swedish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

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

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Lena FRANKENBERG GLANTZ

Anna BAKALARZ

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.