OPPOSITION No B 2 165 549

Mad Dogg Athletics, Inc., 2111 Narcisus Court, Venice, California 90291, United States (of America) (opponent), represented by Greyhills Rechtsanwälte Partnerschaftsgesellschaft, Unter den Eichen 93, 12205 Berlin, Germany (professional representative)

a g a i n s t

Net Power and Light Inc., 1169 Gorgas Avenue, Suite A, San Francisco, California 94129, United States (of America) (applicant), represented by Orrick Herrington & Sutcliffe (Europe) LLP, 107 Cheapside, London EC2V 6DN, United Kingdom (professional representative).

On 11/07/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 165 549 is upheld for all the contested goods and services.

2. European Union trade mark application No 11 391 711 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 391 711, namely against all the goods and services in Classes 9, 38 and 42. The opposition is based on European Union trade mark registration No 6 208 508. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

On 16/08/2013, the applicant submitted a restriction to the contested trade mark, which has been accepted by the Office.

By a decision of the Opposition Division in Opposition No B 2 154 964, on 19/11/2015, the contested trade mark was rejected for the goods and services contested in that case, namely against some of the goods and services in Classes 9 and 42 and all of the services in Classes 38 and 45.

By a letter dated 25/02/2016, the Office informed the opponent of the final decision and gave the opponent until 25/04/2016 to inform the Office whether or not it maintained its opposition.

The opponent did not reply; therefore, the opposition has been maintained and the opposition is considered directed against the goods and services covered by the contested sign in Classes 9 and 42 (see list below).

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 on which the opposition is based are the following:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; carriers including records, discs, tapes, cassettes, cartridges and cards bearing or for use in bearing sound recordings, data, images, games, graphics, text, programs or information; memory carriers; inter-active compact discs; CD-Roms; electrically, magnetically and optically recorded data for computers; computer software; computer software, including software downloadable from the internet; downloadable electronic publications; computer software for use in downloading audio, video, still and moving images and data in compressed and uncompressed form from a computer or communication network and the organisation of data; audio, video, still and moving images and data recordings in compressed or uncompressed form; sound, video and data recordings; downloadable electronic publications; pre-recorded audio and video recordings, namely, CDs, DVDs and audio and video cassettes featuring instruction in the field of health and exercise.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; exercise equipment; exercise equipment, namely, resistance training machines, elastic tubing, exercise mats, exercise blocks, exercise straps, exercise balls, stability balls, weighted resistance products.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; production, presentation and rental of audio and video shows, performances, programmes and recordings, still and moving images and data relating to entertainment, education, recreation, instruction, tuition and training whether in compressed or uncompressed form and whether downloadable or non downloadable; providing on-line publications (non-downloadable); electronic publications (not downloadable); providing physical fitness instruction and consultation in the fields of health and exercise; health club services; health club services, namely providing instruction and equipment in the fields of health and exercise.

The contested goods and services are the following:

Class 9: Mobile electronic devices, namely, receptors and transmitters to process data for remote computing applications; computer and video game system devices, namely, electronic sensor devices, cameras, projectors, and microphones for capturing human gestures and facial expressions and for voice recognition; none of the aforementioned goods being for use in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching.

Class 42: Electronic encoding of digital media content for others via global and local computer networks; electronic encoding of data streams involving a variety of data types, namely, video, audio, human gestures, heterogeneous device input, interactive participation, human emotional cues and human voice; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching.

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 ‘namely’, used in the applicant’s and opponent’s lists 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.

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 mobile electronic devices, namely, receptors and transmitters to process data for remote computing applications; none of the aforementioned goods being for use in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching overlap with the opponent’s apparatus for recording, transmission or reproduction of sound or images, as they are components of apparatus for the transmission of data, such as sound or images. Therefore, they are considered identical.

The contested computer and video game system devices, namely, electronic sensor devices, cameras, projectors, and microphones for capturing human gestures and facial expressions and for voice recognition; none of the aforementioned goods being for use in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching may overlap with the opponent’s apparatus for recording, transmission or reproduction of sound or images, as they are pieces of apparatus for recording or transmitting data, such as sound or images. Therefore, they are considered identical.

Contested services in Class 42

The contested electronic encoding of digital media content for others via global and local computer networks; electronic encoding of data streams involving a variety of data types, namely, video, audio, human gestures, heterogeneous device input, interactive participation, human emotional cues and human voice; none of the aforementioned services being provided in the field of training or consultancy for the following skills: sales, leadership, commercial skills, sales effectiveness, management, marketing, negotiations, buying, behaviour analysis and coaching are similar to the opponent’s computer software for use in downloading audio, video, still and moving images and data in compressed and uncompressed form from a computer or communication network and the organisation of data; audio, video, still and moving images and data recordings in compressed or uncompressed form; sound, video and data recordings.

These goods and services are complementary and, even though they are of a different nature, their purposes are the same (use for digital content). They have the same provider/producer. 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 and services found to be identical or similar are directed mainly at the public at large and partly at a specialised public in the field of information technology or at companies requiring this. The degree of attention is considered average.

3. The signs

SPIN FITNESS	SPIN
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 (08/09/2008, C‑514/06 P, ‘Armacell’, 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English- and non-French-speaking part of the relevant public.

The earlier mark is a word mark consisting of two words, ‘SPIN’ and ‘FITNESS’.

The contested sign is a word mark consisting of the word ‘SPIN’.

Neither of the marks has any element that could be considered clearly more distinctive than other elements.

Neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘SPIN’. However, they differ in the word ‘FITNESS’, which has no counterpart in the contested sign.

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the sound of the letters ‛SPIN’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the word ‘FITNESS’ of the earlier sign, which has no counterpart in the contested mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the element ‘SPIN’, constituting the contested sign, will be perceived by the Dutch-speaking public as having the meaning ‘spider’, by the Romanian-speaking public as having the meaning ‘spin’ (physics) or ‘thorn’ and by the Bulgarian-speaking public as having the meaning ‘spin’ (physics) or ‘AIDS’.

It is noted that the word ‘FITNESS’ in the earlier mark, when associated with the word ‘SPIN’, would be perceived by English speakers as referring to fitness through aerobic exercise performed on stationary bicycles, and so it will be understood by the part of the relevant public that understands English. However, for the remaining relevant non-English-speaking public, the earlier mark, as whole, will not be understood, and it will therefore not be associated with any concept.

It follows from the above that part of the non-English-speaking public, for which ‘FITNESS’ has no meaning, and for which ‘SPIN’ has a concept in their own languages, will consider that the marks refer to the same concept. For these consumers, although the additional word, ‘FITNESS’, will be noticed in the earlier mark, it will not qualify their conceptual understanding of the word ‘SPIN’.

Therefore, at least the part of the relevant public that understands one of the above meanings of ‘SPIN’ but does not perceive an overall meaning in the earlier mark will find the marks conceptually similar to a high degree.

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

The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16 to 18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

The likelihood of confusion must be appreciated globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18), in particular the similarity of the marks and the similarity of the goods and services, which are interdependent criteria in the sense that a lesser degree of similarity between the goods 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).

The contested goods and services are identical and similar to an average degree to the goods and services covered by the earlier trade mark.

The signs under comparison are visually and aurally similar, on account of the element ‘SPIN’, which constitutes the whole of the contested sign and which is fully included as a separate and clearly perceptible part in the earlier mark, being its first verbal element. Moreover, for a part of the relevant public, the signs are conceptually highly similar, as explained above.

Furthermore, the first parts of the conflicting marks coincide. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Account should also be 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).

The relevant public could therefore believe that the contested sign is a modification of the earlier mark, based on the same core element.

Based on the principle of imperfect recollection, the established similarities between the signs are sufficient to lead at least part of the public in the relevant territory to believe that the conflicting goods and services come from the same undertaking or from economically linked undertakings.

Consequently, considering all the above, the Opposition Division finds that the differences between the signs are not capable of counteracting the similarity resulting from their coinciding element, ‘SPIN’, and that, for identical and similar goods and services, there is a likelihood of confusion, including a likelihood of association, on the part of the public in the relevant territory.

Considering all the above, there is a likelihood of confusion on the part of the non-English- and non-French-speaking part of the public. 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 well founded on the basis of the opponent’s European Union trade mark registration No 6 208 508. It follows that the contested trade mark must be rejected for all the contested goods and services.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Richard THEWLIS

Julie GOUTARD

Vít MAHELKA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.