OPPOSITION Nо B 3 111 167

 

Blue Ice Mountain Works SA, rue de l'Université 4, c/o Etude Couderc, avocats, 1205 Genève, Switzerland (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative) 

 

a g a i n s t

 

Marcos Nogueira Prudêncio, Rua Engenheiro Mário Machado, 35 Apt 302, Cep, 22451-180 Gavea,rio De Janeiro, Rj, Brazil (applicant), represented by Nuno Miguel Oliveira Lourenço, Lusoworld Ii A25, Rua Pé De Mouro, 2710-144 Sintra, Portugal (professional representative).

On 29/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 111 167 is upheld for all the contested goods, namely:

 

	Class 12: Snow sledges for transportation. Class 28: Boards used in the practice of water sports; bags especially designed for skis and surfboards; swimming jackets; skis; gloves made specifically for use in playing sports; skateboards; ice skates; stand-up paddle boards; bags adapted to carry surfboards; sail board leashes; sports equipment; surfboard leashes; surfboards; roller skates; skating boots with skates attached; paddleboards; benches for sporting use; skates; hand protectors adapted for sporting use; sporting articles and equipment.
2.		European Union trade mark application No 18 145 006 is rejected for all the contested goods. It may proceed for the remaining goods.

 

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

 

REASONS

 

On 11/02/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 145 006 (figurative mark), namely against some of the goods in Class 12 and all the goods in Class 28. The opposition is based on European Union Trademark registration No 16 779 605, (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, among others, the following:

Class 9: Sports helmets protective helmets for sports purposes.

Class 28: Skis and snowshoes; gymnastic and sporting articles not included in other classes 

The contested goods, further to a limitation during the opposition proceedings, are the following:

 

Class 12: Snow sledges for transportation.

Class 28: Boards used in the practice of water sports; bags especially designed for skis and surfboards; swimming jackets; skis; gloves made specifically for use in playing sports; skateboards; ice skates; stand-up paddle boards; bags adapted to carry surfboards; sail board leashes; sports equipment except golf clubs and golf club shafts; surfboard leashes; surfboards; roller skates; skating boots with skates attached; paddleboards; benches for sporting use; skates; hand protectors adapted for sporting use; sporting articles and equipment except golf clubs and golf club shafts.

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 12

The contested snow sledges for transportation are similar to the opponent's sports helmets protective helmets for sports purposes because of the link between some protective equipment, such as protective helmets, and vehicles which include snow sledges for transportation. Companies producing vehicles of such kind often also produce the protective gear, such as protective helmets. They are sold through the same distribution channels and target the same public. Moreover, the protective helmets serve to cover and protect the head against injury during the use of vehicles of such kind, therefore, there is a complementary relationship.

Contested goods in class 28

Skis are identically contained in both lists of goods.

The contested roller skates; skateboards; skates; gloves made specifically for use in playing sports; swimming jackets; ice skates; surfboards; skating boots with skates attached; stand-up paddle boards; bags adapted to carry surfboards; sail board leashes; surfboard leashes; paddleboards; benches for sporting use; hand protectors adapted for sporting use; boards used in the practice of water sports; bags especially designed for skis and surfboards; sports equipment, except golf clubs and golf club shafts; sporting articles and equipment, except golf clubs and golf club shafts are included in the opponent's broad category of gymnastic and sporting articles not included in other classes. Therefore, they are identical.

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. 

Nothing in the nature of the goods, their manner of purchase or average price requires that consumers are particularly attentive and observant when choosing such goods. Therefore, the degree of attention is considered to be average.

 

 

c)  The signs

 

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).

Both signs are figurative.

The common verbal element ‘BLUE’ will be perceived as ‘the colour of the sky on a sunny day’ (information extracted from Collins English Dictionary on 18/03/2021 at https://www.collinsdictionary.com/dictionary/english/blue) by the relevant public as it is a basic English term. The common element has no direct relation to the relevant goods and therefore has a normal degree of distinctiveness.

The second verbal element ‘ICE’ of the earlier sign will be understood by the English-speaking part of the relevant public as the English word for frozen water and it would therefore allude to the purpose of the goods at stake (to be used on ice). For the rest of the public (not English speaker) it would not have any meaning and it would be distinctive.

The figurative component of the earlier mark seems to represent a mountain while the one inserted in the contested sign would rather be seen as a bird, if any. The representation of a mountain could allude to the location of use of some of the goods and, in this sense it would be of less distinctiveness while the representation of the bird does not seem to have a relation with the goods at issue and it would therefore be of normal distinctiveness.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Furthermore, account must be taken of the fact that 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 the distinctive word ‘BLUE’, that is, the first component of the earlier mark and the only word of the contested sign. The signs also coincide in the positioning of their verbal and figurative elements ( – the word(s) being placed under the respective figurative element). However, they differ in the second distinctive component ‘ice’ of the earlier mark and the different typefaces.

In view of the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the word ‘BLUE’, present identically in both signs. The pronunciation differs in the distinctive word ‘ice’, which has no counterpart in the contested mark.

In view of the foregoing, the signs are aurally similar to an above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the word ‘ice’ of the earlier mark and the figurative elements of the signs could introduce points of conceptual differences between the signs will, nevertheless, be associated with the colour blue and therefore they are at least 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 analysed 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).

As has been stated above, the goods are identical or similar and target the general public whose degree of attention is average. The inherent distinctive character of the earlier mark as a whole is normal. The signs are visually and aurally similar to an average-degree, and at least conceptually similar.

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. Bearing in mind the identity of the goods and services, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, or a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). This holds true even for the public that displays a higher degree of attention.

Therefore, the opposition is well founded on the basis of the opponent’s European Union Trademark registration No 16 779 605, (figurative mark). 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

 

 

Kieran HENEGHAN

Inés GARCÍA LLEDÓ

María del Carmen SUCH SÁNCHEZ

 

 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.