OPPOSITION No B 1 920 928

Athletic Club, Alameda Mazarredo, 23, 48009 Bilbao, Spain (opponent), represented by Consultores Urizar & Cia., Gordóniz, 22 - 5º, 48012 Bilbao (Vizcaya), Spain (professional representative)

a g a i n s t

Team Sportia AB, Mölnlycke Fabriker 13, 435 35 Mölnlycke, Sweden (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative).

On 11/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 920 928 is partly upheld, namely for the following contested goods in Classes 9, 18, 25 and 28:

Class 9: Sports helmets and protective helmets.

Class 18: Wallets; cases; bags; rucksacks.

Class 25 (in its entirety): Clothing, footwear, headgear; belts.

Class 28 (in its entirety): Gymnastic and sporting articles, parts and fittings thereto; games and toys.

2. European Union trade mark application No 10 064 012 is rejected for all the above goods. It may proceed for the following remaining goods in Classes 9 and 18:

Class 9: Sunglasses; spectacles/or sports; spectacle cords; spectacle cases.

Class 18: Goods made from leather or imitations of leather; umbrellas.

3. Each party bears its own costs.

REASONS:

The opponents filed an opposition against all the goods (in Classes 9, 18, 25 and 28 ) of European Union trade mark application No 10 064 012 (figurative mark:
“ ”). The opposition is based on the following earlier trade marks:

1. European Union trade mark registration No 9 021 635 (word mark: “ATHLETIC CLUB”);

2. Spanish trade mark registration No 1 036 511 (word mark: “ATHLETIC”);

3. Spanish trade mark registration No 1 036 516 (word mark: “ATHLETIC”);

4. Spanish trade mark registration No 1 940 610 (word mark: “ATHLETIC”);

5. Spanish trade mark registration No 1 940 611 (word mark: ATHLETIC”);

The opponent invoked Article 8(1)(b) EUTMR for the European Union trade mark registration and Article 8(1)(a) EUTMR for the Spanish trade mark registrations cited above.

PROOF OF USE FOR THE SPANISH TRADE MARKS (No 2-No 5)

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 16/08/2011. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 16/08/2006 to 15/08/2011 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Spanish trade mark registration No 1 036 511

Class 9: Radio, television, cinema and video apparatus and their parts and accessories.

Spanish trade mark registration No 1 036 516

Class 28: Games and toys; gymnastic and sporting articles (except clothes); ornaments and decorations for Christmas trees.

Spanish trade mark registration No 1 940 610

Class 18: Sports, bags, travelling bags, suitcases, backpacks, camping bags, climber bags, handbags, wallets, leather goods, leather and leather imitations.

Spanish trade mark registration No 1 940 611

Class 25: Clothing, footwear, in particular sports clothing and footwear.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 29/06/2012, according to Rule 22(2) EUTMIR, the Office gave the opponent until 03/09/2012 to submit evidence of use of the earlier trade marks. On 31/08/2012, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• catalogue 2006/2007 (Annex 1);

• catalogue 2007/2008 (Annex 2);

• undated catalogue, according to the opponent for 2008/2009 (Annex 3);

• undated catalogue, according to the opponent for 2009/2010 (Annex 4);

• undated catalogue, according to the opponent for 2010/2011 (Annex 5).

Taking the above documents into account, it has to be considered that regardless of whether the catalogues are dated or undated, none of them proves a meaningful extent of use of the above marks. Documents which could provide proof of that, such as invoices, turnover, sales figures, advertisements, extracts from tax accounts and/or commercial balance sheets, have not been submitted. Other relevant documents, such as affidavit(s), declarations by professional associations, evidence of market share and surveys, are also lacking. The documents submitted are, at best, suitable for use as supplementary material, but not to provide proof of use without further relevant documentation.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C 40/01, Minimax, EU:C:2003:145, and 12/03/2003, T 174/01, Silk Cocoon, EU:T:2003:68).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

The proceedings continue on the basis of the remaining earlier European Union trade mark registration.

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.

1. The goods and services

The goods and services in Classes 25, 28 and 41 on which the opposition is based are the following:

Class 25: Clothing, footwear, headgear, all the aforesaid relating exclusively to the world of football.

Class 28: Games, toys, and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; all the aforesaid relating exclusively to the world of football.

Class 41: Education; providing of training; providing amusement services; sporting and cultural activities, all the aforesaid relating exclusively to the world of football.

The contested goods in Classes 9, 18, 25 and 28 are the following:

Class 9: Sunglasses; spectacles/or sports; spectacle cords; spectacle cases; sports helmets and protective helmets.

Class 18: Goods made from leather or imitations of leather; wallets; cases; bags; rucksacks; umbrellas.

Class 25: Clothing, footwear, headgear; belts.

Class 28: Gymnastic and sporting articles, parts and fittings thereto; games and toys.

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

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 9

The contested sports helmets and protective helmets are similar to a low degree to the opponent´s sporting articles not included in other classes; all the aforesaid relating exclusively to the world of football in Class 28, as they can coincide in producer, end user and distribution channels.

The remaining contested sunglasses; spectacles/or sports; spectacle cords; spectacle cases have different natures and purpose from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods come from the same or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 18

When comparing the contested goods made from leather or imitations of leather in Class 18 with the opponent’s clothing, all the aforesaid relating exclusively to the world of football in Class 25, their natures cannot be considered the same in the absence of an express limitation by the opponent clarifying the vague term. Given this, they cannot be considered to be produced by the same companies, have the same distribution channels, be in competition, have the same method of use or target the same consumers. Consequently, these goods are considered dissimilar. The same applies to the other goods and services of the earlier trade mark, which have even less in common with the above contested goods.

The contested wallets; cases; bags; rucksacks are similar to clothing all the aforesaid relating exclusively to the world of football in Class 25 as they can coincide in producer, end user and distribution channels.

Umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod. The nature of these goods is very different from that of clothing, headgear and footwear in Class 25. They serve very different purposes (protection from rain versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. There are even more differences from the other goods and services of the earlier trade mark, because they do not have anything in common. These goods are considered dissimilar.

Contested goods in Class 25

The contested clothing, footwear, headgear include, as broader categories, the opponent’s clothing, footwear, headgear, all the aforesaid relating exclusively to the world of football. 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 belts overlap with the opponent’s clothing, all the aforesaid relating exclusively to the world of football. Therefore, they are identical.

Contested goods in Class 28

The contested gymnastic and sporting articles; games and toys include, as broader categories, the opponent’s games, toys; gymnastic and sporting articles not included in other classes; all the aforesaid relating exclusively to the world of football. 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 parts and fittings of gymnastic and sporting articles have the same purpose, distribution channels, public and producers as the opponent´s gymnastic and sporting articles not included in other classes; all the aforesaid relating exclusively to the world of football. Therefore, they are similar.

2. 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 different degrees are directed at the public at large. The degree of attention is considered average.

3. The signs

ATHLETIC CLUB
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.

The common element ‘ATHLETIC’ is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Lithuanian-speaking part of the public, such as that in Lithuania.

The earlier European Union trade mark is a word mark, which is protected in all different typefaces. The contested sign is a figurative mark with the word ‘ATHLETIC’ in the foreground in bold letters (with the exception of the letter ‘I’, which is part of the logo in the background).

The element ‘CLUB’ of the earlier mark will be understood by the relevant public as a basic English word meaning ‘an association or organization dedicated to a particular interest or activity’ (Oxford dictionary). As it is not descriptive, allusive or otherwise weak for the relevant goods, which are identical or similar (to a low degree) to the contested goods, it is distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements.

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).

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 have the word ‘ATHLETIC’ in common, although depicted slightly differently in the contested sign. They differ in the additional, second word of the earlier trade mark, ‘CLUB’, and in the logo of the contested sign. Taking into account the identical words ‘ATHLETIC’ and the figurative element in the background the signs are visually similar to an above average degree.

Aurally, the figurative elements will not be pronounced. The signs coincide in their identical elements ‘ATHLETIC’. The verbal element of the contested sign is completely included at the beginning of the earlier trade mark. They differ in the second word of the earlier trade mark, ‘CLUB’. Therefore, they have very similar pronunciations, rhythms and intonations, which lead to a high degree of aural similarity.

Conceptually, only the element ‘CLUB’ of the earlier trade mark has a meaning, cited above. The rest of the elements are meaningless. Therefore, the signs are conceptually not similar.

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

4. 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly identical, partly similar to different degrees and partly dissimilar. The signs are visually similar to an average degree and aurally highly similar.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

As the signs are visually similar to an average degree, aurally similar to a high degree, that the only word element of the contested sign is at the beginning of the earlier trade mark, that the earlier trade mark is distinctive to an average degree and that the goods are identical and similar, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR despite the signs not being conceptually similar. Therefore, the opposition is upheld. This is also true of the goods that are similar to only a low degree because of the relevant visual and aural similarities between the signs.

Contrary to the applicant’s opinion, the coinciding word ‘ATHLETIC’ is not descriptive, because it will not be understood in the relevant territory. As it is a meaningless term, it has a normal degree of distinctiveness. Being used in the market does not change its evaluation as a meaningless term. The applicant has also not proved, nor is it known by the Office, that the logo in the background of the contested sign is a highly distinctive device. As regards the argument that the goods and services are dissimilar because some are in different classes, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification. All in all, the differences between the signs are not sufficient to distinguish them clearly from each other. They will be regarded as coming from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Lithuanian-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.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Magnus ABRAMSSON

Peter QUAY

Martin EBERL

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.