OPPOSITION Nо B 3 112 849

Nordic Outdoor B.V., Lakenhallen 16, 213 4AH Hoofddorp, Netherlands (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands (professional representative)

a g a i n s t

Christina Rosenberg, Isoldenstrasse 27, 80804 München, Germany (applicant), represented by Breuer Lehmann Rechtsanwälte Partnerschaft mbB, Steinsdorfstr. 19, 80538 München, Germany (professional representative).

On 17/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 112 849 is partially upheld, namely for the following contested goods:

Class 18: Bags, wallets and other carriers; backpacks; school knapsacks.

Class 25: All the contested goods in this class.

2. European Union trade mark application No 18 144 116 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 some of the goods of European Union trade mark application No 18 144 116 ‘NBERG’ (word mark), namely against all the goods in Classes 18 and 25. The opposition is based on, inter alia, European Union trade mark registration No 17 735 622 ‘NORDBERG’ (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 European Union trade mark registration No 17 735 622 ‘NORDBERG’ (word mark).

a) The goods

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

Class 25: Clothing, footwear, headgear; sportswear, rainwear, work clothing, outdoor clothing, ski jackets, ski pants, ski gloves (clothing), running clothing; scarves, gloves (clothing), ear muffs (clothing), socks, suspenders; sneakers; bathrobes; swimwear; bandanas (neckties); belts (clothing); ties and bows (clothing); shirts; headbands (clothing); underwear and nightwear; corsets; shorts; costumes; leggings; flip flops; tights and stockings; ponchos; sweaters; skirts; sandals; T-shirts.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; suitcases; backpacks; school knapsacks; umbrellas and parasols.

Class 25: Clothing; footwear; headgear.

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 18

The contested bags, wallets and other carriers, backpacks; school knapsacks have some aspects in common with the opponent’s clothing; footwear; headgear in Class 25.

Clothing, footwear; headgear are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The contested goods above are likely to be considered by the consumers as aesthetically complementary accessories to articles of outer clothing, headgear and even footwear because they are closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered to be similar.

However, for the remaining contested goods in this class (luggage; suitcases; umbrellas and parasols), and contrary to the opponent’s views, the reasoning above does not apply.

Luggage and suitcases are for carrying things when travelling and do not satisfy the same needs as clothing, footwear and headgear. They are not used as aesthetically complementary accessories, either, but are rather bought based on practical purposes for carrying garments. These goods do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary. The same can be said for the contested umbrellas and parasols (i.e. devices for protection from the rain and sun, respectively). The nature of these goods is very different from that of the opponent’s clothing, footwear and headgear (and the rest of goods covered by the earlier mark, which are specific articles of clothing, footwear and headgear). Even though, admittedly, there is a certain commonality between products like umbrellas and the opponent’s rainwear, it is not sufficient to render them similar. In this respect, the fact that one purpose (e.g. protection from the rain) does not exclude another purpose (e.g. covering the human body) and that both purposes may overlap in a product (e.g. a raincoat) does not rule out the possibility of identifying a dominant, or in other words ‘primary’ purpose of a product. Moreover, in this case these purposes are different in respect of the contested goods and the opponent’s ones (carrying things; protection from the rain/sun, versus covering/protecting the human body). Therefore, these contested goods are dissimilar to all the opponent’s goods in Class 25.

Contested goods in Class 25

Clothing; footwear; headgear 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 or similar are directed at the public at large, whose degree of attention is average.

c) The signs and distinctiveness of the earlier mark

NORDBERG	NBERG
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.

As the opponent highlighted, even though both signs consist of a single verbal element, consumers, when perceiving a verbal sign, will generally break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In that respect, since the component ‘BERG’, in particular, is meaningful for some parts of the relevant public, such as the German-speaking part, and this would have an impact on the conceptual similarity between the signs, the Opposition Division considers it appropriate to focus the comparison of the signs on this part of the public.

As indicated above, the relevant consumers would break down the earlier mark into the components ‘NORD’ (meaning ‘north’, see Collins German-English Dictionary at https://www.collinsdictionary.com/dictionary/german-english/nord) and ‘BERG’ (‘mountain’, see Collins German-English Dictionary at https://www.collinsdictionary.com/dictionary/german-english/berg), with the earlier mark being perceived as a semantic unit meaning ‘north mountain’. This verbal element can be considered somehow allusive to the characteristics of the relevant goods, namely clothing, footwear and headgear to practice outdoor activities, such as mountaineering, skiing or hillwalking, and to such an extent, its distinctiveness is lower than average in relation to these goods (21/01/2016, R 153/2015-2, BERG OUTDOOR (fig.) / BERGHAUS et al., § 67-70; confirmed by judgment of the Court, 06/10/2017, T‑139/16, BERG OUTDOOR / BERGHAUS et al, EU:T:2017:705, § 52-53).

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. Since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, taking into account what has been said above, its distinctiveness must be seen as lower than average in respect of the public under analysis.

The contested sign consists of the element ‘NBERG’. It is clear that the relevant consumers will identify the German word ‘Berg’, with the same meaning and level of distinctive character as in the earlier mark in respect of the relevant goods (i.e. bags, clothing, footwear, headgear and other articles to be used outdoors). The initial letter ‘N’ can be perceived as such (as simply a letter), in which case it will be distinctive, given that it does not refer to the characteristics of the goods. This letter may also be perceived as an abbreviation. In that regard, it cannot be excluded that this letter be perceived as ‘north’, as the opponent claims, since it is one of its possible meanings (see Collins English-German Dictionary at https://www.collinsdictionary.com/dictionary/english-german/n and Duden Dictionary at https://www.duden.de/suchen/dudenonline/N), and trying to find some sort of meaning in verbal elements is a natural process of human perception. Moreover, with the second component being ‘BERG’, the relevant consumer is more prone to perceive ‘north’ from the initial letter ‘N’. In this case, its distinctive character would be limited.

Visually and aurally, the signs coincide in the string of letters ‘N*BERG’, and their sound. They differ in the earlier mark’s middle letters/sounds ‘ORD’.

Taking into account the distinctive character of the signs’ components, they are found visually and aurally similar to a lower-than-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs convey the same meaning of ‘mountain’, which is not significantly altered by the presence of the signs’ additional components ‘NORD’ and ‘N’ respectively, and considering the distinctive character of the signs’ respective components, they are found conceptually similar to an average degree when the contested sign’s letter ‘N’ is perceived as such, and conceptually identical for the part of the public who may perceive it as the abbreviation of ‘north’.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the relevant public might make between the two marks and on the degree of similarity between the signs and the goods (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sàbel, EU:C:1997:528, § 22).

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).

In this case, the goods are partly identical or similar and partly dissimilar. Those which are identical or similar target the general public, whose level of attention is average. 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 signs are visually and aurally similar to a lower-than-average degree and either conceptually similar to an average degree or identical, depending on the public’s perception of the contested sign. The signs begin with the same letter ‘N’ (of ‘NORD’ in the earlier mark), and the fact that ‘N’ can stand for ‘NORD’ is a possibility that cannot be totally ruled out in respect of the contested sign’s perception. In this scenario this coincidence leads to both signs bringing to mind the same concept. In the case where ‘N’ is just perceived as the letter ‘N’, given the structure of the sign (letter + concept), it is not considered to carry a significant weight in the overall perception of the sign in comparison with the rest of the sign that reproduces a word.

Although the inherent distinctive character of the earlier mark is considered to be lower than average in respect of the relevant public, it should be recalled that the Court has emphasised on several occasions that the finding of a low distinctive character for the earlier mark does not prevent the existence of likelihood of confusion, since the distinctive character of the previous mark is only one of the various factors that play a part in the analysis, and must be considered together with the rest of the factors. Therefore, even in a case involving an earlier mark of limited distinctive character, a likelihood of confusion may arise, in particular, due to a high degree of similarity between the signs and between the goods or services in question (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The risk of confusion includes the risk of association, and so includes when the public rather than directly confusing brands attribute them the same business origin. In this way, the consumer considers that the products come from the same undertaking, particularly believing that the contested mark is a mere variant of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). This possibility is highly conceivable in the present case given the market sector (fashion and accessories) and the structures of both signs, which may suggest that the contested sign constitutes a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates.

Therefore, the differences between the signs in relation to identical and similar goods are not sufficient to counteract the degree of similarity between them, even taking into account the limited degree of inherent distinctiveness of the components concerned in respect of part of the public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 17 735 622. 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 that the contested trade mark must be rejected in respect of those goods that have been considered identical or similar to those of the earlier trade mark. The rest of the contested goods are dissimilar. Given that the similarity between goods and services is a prerequisite for Article 8(1) EUTMR to apply, the opposition based on that article and directed against those goods cannot be successful.

The opponent has also based its opposition on Benelux trade mark registrations No 1 022 377 (figurative mark) and No 1 022 326 ‘NORDBERG’ (word mark). Since these marks are either identical to the one which has been compared or are more different from the contested sign (on account of the figurative element present in Benelux trade mark registration No 1 022 377), and cover an analogous scope of goods, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

Astrid Victoria WÄBER

Alicia BLAYA ALGARRA

Michal KRUK

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.