OPPOSITION No B 3 118 241

Spyke Technology Sp. Z O.O., ul. Gen. Dąbrowskiego, 207/213, 93‑231 Łódź, Poland (opponent), represented by Sołtysiński Kawecki & Szlęzak - Kancelaria Radców Prawnych I Adwokatów, ul. Jasna 26, 00‑054 Warsaw, Poland (professional representative)

a g a i n s t

Shot Group, Rue Louis Breguet, ZAC Du Long Buisson, 27930 Guichainville, France (applicant), represented by Amanda Trincat, 22 Chemin Des Esserts, 74200 Thonon Les Bains, France (professional representative).

On 29/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 118 241 is upheld for all the contested goods.

2. European Union trade mark application No 18 132 911 is rejected in its entirety.

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

REASONS

On 04/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 132 911, (figurative mark). The opposition is based on EUTM registration No 6 912 307, (figurative mark) and international trade mark registration designating the European Union No 1 084 812, (figurative 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

The goods on which the opposition is based are, inter alia, the following:

EUTM registration No 6 912 307 (earlier mark 1)

Class 18: Animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; backpacks; briefcases; clothing for pets; collars for animals; handbags; handles (suitcase-); handles (walking stick-); purses; satchels (school-); school bags; school satchels; skates (straps for-); soldiers’ equipment (straps for-); sports (bags for-); straps for skates; straps for soldiers’ equipment; suitcase handles; vanity cases, not fitted.

Class 25: Clothing, footwear, headgear.

International trade mark registration designating the European Union No 1 084 812 (earlier mark 2)

Class 9: Apparatus for recording, transmission or reproduction of sound or images; cash registers, calculating machines, data processing equipment and computers; clothing for protection against accidents, irradiation and fire; eyeglasses cases; eyeglasses chains; eyeglasses cords; eyeglasses frames; face-shields (workmen’s protective-); gloves for protection against accidents; goggles for sports; helmets (protective); knee-pads for workers.

Class 18: All-purpose athletic bags, attaché cases, bags and holdalls for sports clothing, backpack, bags for sports, briefcases, business card cases, garment bags for travel, handbags, haversacks, key cases, wallets, purses, rucksacks, school satchels, school bags, shopping bags, suitcases, vanity cases, wheeled shopping bags; traveling bags, trolley bags, trunk.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 9: Head protection; protective gloves; protective boots; clothing for protection against accidents; protection devices for personal use against accidents, namely shoulder, elbow, back, chest, hip, knees, shin pads and shin guards, neck braces; protective back belts; protective masks, other than for medical use; protective face shields; spectacles [optics]; spectacles; sunglasses; sports glasses; eye protection; communications devices for helmets; holders or cases for mobile telephones and tablet computers; mounting frames and systems for mobile telephones and tablet computers; positioning systems and antennas GPS.

Class 18: Leather and imitation leather products namely leathercloth, briefcases of leather, studs of leather, leather for shoes, bands of leather, shoulder belts [straps] of leather, leather pouches; animal skins, hides; luggage; transport bags; travelling bags; school bags, satchels; backpacks; sport bags; trunks [luggage]; suitcases; valises; briefbags; wallets; purses; key cases; vanity cases, not fitted; gentlemen’s handbags; umbrellas; parasols; walking sticks; whips, harness and saddlery; collars, clothing and leashes for animals.

Class 25: Clothing; footwear; headgear; shirts; leather clothing; belts [clothing]; furs [clothing]; gloves [clothing]; scarves; neckties; hosiery; socks; slippers; beach shoes; ski boots; athletics shoes; underwear.

Class 28: Face masks for sports.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 9

The contested head protection includes, as a broader category, the opponent’s helmets (protective) of earlier mark 2. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested protective gloves; clothing for protection against accidents are included in the broad categories of, or overlap with, the opponent’s clothing for protection against accidents, irradiation and fire; gloves for protection against accidents of earlier mark 2. Therefore, they are identical.

The contested protective boots are included in the broad category of, or overlap with, the opponent’s shoes for protection against accidents. Therefore, they are identical.

The contested protection devices for personal use against accidents, namely knees pads overlap with the opponent’s knee-pads for workers. Therefore, they are identical.

The contested protective masks, other than for medical use; protective face shields include, as broader categories, or overlap with, the opponent’s face-shields (workmen’s protective-). Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested sports glasses overlap with the opponent’s goggles for sports. Therefore, they are identical.

The contested communications devices for helmets overlap with the opponent’s apparatus for transmission or reproduction of sound. Therefore, they are identical.

The broad category of the contested positioning systems and antennas GPS as well as the broad category of the opponent’s data processing equipment both include, for example, navigation apparatus for vehicles (on-board computers). Since there is an overlap between these goods, they are identical.

The contested protection devices for personal use against accidents, namely shoulder, elbow, back, chest, hip, shin pads and shin guards, neck braces are at least similar to the opponent’s knee-pads for workers. These goods have the same purpose (to protect parts of the human body from accidents), the same distribution channels and are normally produced by the same companies. Moreover, they target the same public.

The contested protective back belts are considered similar to the opponent’s sports (protective helmets for-). These goods have the same purpose and are sold through the same distribution channels. To the extent that the contested goods are also meant to be used while performing sporting activities, they can target the same public as the opponent’s goods. Furthermore, they can all be found in the same outlets (sports equipment stores) and may originate from the same undertakings.

The contested spectacles [optics]; spectacles; sunglasses; eye protection are considered at least similar to the opponent’s goggles for sports. Their nature and purpose (i.e. eye protection) are very similar and, accordingly, their method of use is also similar. Moreover, those conflicting goods can be produced by the same undertakings and can be found at the same points of sale, that is to say, sports articles outlets or sports sections of department stores (22/06/2012, R 904/2011‑2, elix / ELLIX, § 30).

The contested holders or cases for mobile telephones and tablet computers are considered similar to the opponent’s apparatus for transmission of sound or images, to the extent that the opponent’s goods overlap with telephones and computers (the latter being the object the holders and cases refer to). The goods at issue share the same producers and distribution channels and target the same public. Furthermore, they are complementary. The same reasoning applies, mutatis mutandis, to the contested mounting frames and systems for mobile telephones and tablet computers and the opponent’s apparatus for transmission of sound or images, since these goods also coincide in producers and relevant public and are sold through the same points of sale. Therefore, these goods are similar.

Contested goods in Class 18

The contested travelling bags; school bags, backpacks; sport bags; trunks [luggage] ; suitcases; briefbags; wallets; purses; key cases; vanity cases, not fitted; umbrellas; parasols; walking sticks; whips, harness and saddlery; animal skins, hides; collars for animals are identically contained in both the list of the contested goods and the lists of the opponent’s goods (including synonyms).

Animal skins is a broad category that includes unworked as well as treated animal skin (leather). To that extent, the contested leather and imitation leather products namely leathercloth, leather for shoes are included in the broad category of the opponent’s animal skins. Therefore, they are identical.

The contested leather and imitation leather products namely briefcases of leather are included in the broad category of, or overlap with, the opponent’s briefcases. Therefore, they are identical.

The contested luggage; transport bags; valises overlap with the opponent’s suitcases or travelling bags. Therefore, they are identical.

The contested satchels include, as a broader category, the opponent’s satchels (school‑). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested gentlemen’s handbags are included in the broad category of the opponent’s handbags. Therefore, they are identical.

The contested clothing for animals includes, as a broader category, or overlaps with, the opponent’s clothing for pets of earlier mark 1. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested leashes for animals are at least similar to the opponent’s collars for animals because these goods coincide in nature and purpose. They can originate from the same undertaking and are sold through the same distribution channels to the same public. Moreover, they can be complementary.

The contested leather and imitation leather products namely leather pouches are considered highly similar to the opponent’s wallets, insofar as these goods have the same purpose, originate from the same producers, and are sold through the same distribution channels. Furthermore, they target the same public.

The contested leather and imitation leather products namely bands of leather, shoulder belts [straps] of leather share some similarities with the opponent’s trunks and suitcases, to the extent that the contested goods are accessories for travelling bags that may be produced by the same undertakings as the opponent’s trunks and suitcases. They are usually sold through the same distribution channels and target the same relevant public. Therefore, they are similar.

Finally, leather and imitation leather products namely studs of leather are considered similar to the opponent’s handles (suitcase-) or straps for skates since they are all semi-finished goods which usually coincide in producer, relevant public, and distribution channels.

Contested goods in Class 25

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

The contested shirts; leather clothing; belts [clothing]; furs [clothing]; gloves [clothing]; scarves; neckties; hosiery; socks; underwear are included in the broad category of the opponent’s clothing. The contested slippers; beach shoes; ski boots; athletics shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

Contested goods in Class 28

The contested face masks for sports are considered similar to a low degree to the opponent’s clothing in Class 25, which includes sports clothing, since these goods usually coincide in commercial origin, distribution channels and relevant public.

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 or similar to varying degrees are directed at the public at large and business customers with specific professional knowledge or expertise (such as in the case of some of the goods in Class 9).

The degree of attention is considered to vary from average to above average on account of the sophisticated or specialised nature, price and frequency of purchase of some of the relevant goods. For instance, the impact on safety of goods in Class 9 may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 41).

c) The signs

Earlier mark 1 Earlier mark 2
Earlier trade marks	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).

All the signs are purely figurative marks, consisting of geometric shapes conveying no clear meanings.

Earlier mark 1 consists of two irregular geometrical shapes that resemble two curved lines, or bands, of varying width, which are opposite to each other and at least partially specular. They intersect with each other close to their extremities. The line at the right is partially interrupted by the intersection with the other line, and its upper extremity is missing.

Earlier mark 2 also consists of two irregular geometrical shapes that resemble two lines of irregular width, which are substantially specular and opposite. In the case of this earlier mark, the line on the left shows only one point at the top while the extremities of the line on the right appear slightly truncated.

The contested mark comprises two geometrical shapes that resemble two curved lines of varying width, facing each other, in a way that is substantially specular and opposite. The applicant suggests that the contested sign should be interpreted as ‘two arrows pointing upwards and downwards, never crossing, and placed close to each other in order to create a stylized ‘S’ in the gap created between them’.

While the applicant’s explanation of the contested sign is a legitimate interpretation, it is however very subjective and represents only one of the many possible interpretations of the sign, which does not necessarily reflect the general perception on the part of the relevant public. Since there is no univocal and universal interpretation of the contested mark, or the earlier signs, the Opposition Division will limit itself to describing what can objectively be seen in the marks at issue and carry out the examination on that basis.

None of the marks have any clear connection with the goods at issue. Therefore, they are inherently distinctive to an average degree.

The question of visual dominance is irrelevant in this case, given that all the marks are composed of a device that will be perceived as two angled or curved lines, both of the same size in each mark, one of the extremities pointing towards the other in the middle and the other pointing outwards. Therefore, there are no elements in the marks which could be perceived as visually dominant over other elements.

Visually, contrary to the applicant’s arguments, there are a number of similarities between the signs. All the signs comprise a single element composed of two angled lines facing each other, as already explained. The number of elements concerned is therefore identical. Furthermore, the overall proportions of those elements and the arrangement of their components (the two curved lines which are not of uniform thickness) are very similar.

Admittedly, the signs differ in the specific shape of the lines, which are more rounded in the earlier marks than in the contested sign. Another difference, rightly pointed out by the applicant, is the different orientation of the curved lines, which is rather horizontal in the earlier marks and vertical, although slightly inclined to the right, in the contested sign.

In addition, the marks differ in the specific way the lines are depicted, in particular their angle, direction, colour and width.

However, when considering the marks in their entirety, the slight differences in their specific graphic depictions do not prevent the signs from producing a very similar visual impression. The signs will be perceived by the relevant consumer as black and white (or grey, as the case may be) lines facing each other. Although some particularities of the signs are indeed different, as explained above, their overall similarity remains.

Consequently, since the differences between the signs are unable to fully neutralise the abovementioned similarities, the marks are deemed visually similar to an average degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As all the marks are purely figurative, it is not possible to compare them aurally.

Conceptually, none of the signs have 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 marks

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade marks enjoy a high degree of distinctiveness as a result of their long-standing and intensive use in the European Union, in connection with at least some of the goods for which they are registered, namely clothing articles for sports. This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent states that it is one of the most recognisable motorcycle clothing brands worldwide, and that its brand was founded in the 1970s, being focused on creating premium motorcycle clothing from the beginning. The opponent’s motorcycling clothing has been used by the top racing riders during their championship titles over the past years.

The opponent submitted the following evidence.

 Evidence 1 to 3: various excerpts from the opponent’s website (www.spyke.it) providing information on the opponent’s brand, use of its clothing in sports competitions (motorcycle races) (evidence 1) and the EU countries where the opponent’s shops are present (60 within the European Union). The opponent claims that this should prove that the relevant consumer has definitely had a chance to notice the presence of the opponent’s brand on the market (including the online market) (evidence 2). Excerpts were included demonstrating the opponent’s promotional efforts and marketing activities (evidence 3).

 Evidence 4: excerpts from the opponent’s YouTube channel and Facebook page, showing motorcycle gear (jackets, gloves, boots, etc.) bearing the earlier marks.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent is not sufficient to demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use.

Enhanced distinctiveness requires recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether or not it contains an element that is descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

The documents provided mostly originate from websites linked to the opponent. They merely give information on the availability for purchase of some of the opponent’s goods bearing the earlier marks both in physical stores, spread across the relevant territory, and online. However, nothing can be inferred from that documentation as regards the recognition of the marks by the relevant public.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have no meaning for any of the goods from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks 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.

The goods are partly identical and partly similar to varying degrees. They target the public at large and the professional public with a degree of attention that ranges from average to above average. The earlier marks have an average degree of inherent distinctiveness.

The signs are visually similar to an average degree because, despite some differences, they have similar shapes and sizes, and they are all composed of a set of two curved lines facing each other. Phonetically and conceptually the comparison of the signs remains neutral.

The main features visible in the contested sign are also present and reproduced in the earlier marks. Consumers will remember that the shape of the signs, consisting of two curved lines facing each other, is essentially the same, regardless of the width, colours, or other exact details of those lines. These basic features make up the structure of all of the signs. Therefore, as explained above, the overall visual impression conveyed by the marks is one of similarity (08/10/2014, T‑342/12, Star, EU:T:2014:858, § 44).

These similarities are particularly important in view of the relevant goods. The choice of the goods, especially clothing, footwear or headgear, is usually made based on a visual inspection of a collection presented to consumers. Therefore, the visual similarities are of particular importance in the assessment of the likelihood of confusion (06/10/2004, T‑117/03 – T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Moreover, the average consumer must rely on their imperfect recollection of the marks, and there is no reason why the consumer should pay greater attention to the differences between the marks at issue than to their similarities (23/02/2010, T‑11/09, James Jones, EU:T:2010:47, § 29).

Moreover, the consumer who comes across a labelled product is more likely to recognise another brand if they remember it vaguely and not in full detail (15/06/2005, T‑7/04, Limoncello, EU:T:2005:222, § 58).

The essential shape of the signs – consisting of two curved lines and their peculiar arrangement – which is essentially the same in all the marks, is what will remain in the minds of the relevant public. Therefore, the overall visual impression conveyed by the marks is similar.

In this regard, it must also be borne in mind that average consumers rarely have the chance to make a direct comparison between various marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). This applies even to consumers with a higher than average degree of attention (16/07/2014, T‑324/13, Femivia, EU:T:2014:672, § 48 and the case-law cited; 16/12/2010, T‑363/09, RESVEROL / LESTEROL, EU:T:2010:538, § 33 and the case-law cited; 21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Account has been taken of the relevant factors and their mutual interdependence in the multifactorial assessment. The goods are partly identical and partly similar (to varying degrees). The signs are visually similar to an average degree, and aural and conceptual comparisons are not possible. Consequently, the differences between the signs are not sufficient to safely exclude a likelihood of confusion as stipulated in Article 8(1)(b) EUTMR, despite the level of attention of the relevant public, which varies from average to above average. Given the prominent similarities between the marks, this finding also holds true for those goods found similar to only a low degree (i.e. clothing versus face masks for sports), taking into account the market reality of this sector and that it is common practice for these goods to be sold through the same distribution channels.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way. For instance, as a refreshed or modernised version of the earlier marks.

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 European Union trade mark registration No 6 912 307 and international trade mark registration designating the European Union No 1 084 812.

It follows that the contested trade mark must be rejected for all the contested goods.

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

Félix ORTUÑO LÓPEZ

Claudia ATTINÀ

Chiara BORACE

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.