OPPOSITION No B 2 442 104
Roberto Giordani, Via G. D'Annunzio, 5, 36030 S. Vito Di Leguzzano (VI), Italy (opponent), represented by Barzanò & Zanardo Roma S.P.A., Via del Commercio, 56, 36100 Vicenza, Italy (professional representative)
a g a i n s t
Heike Schnell, Wachenheimer Str. 5, 70499 Stuttgart, Germany (applicant), represented by Kather Augenstein Rechtsanwälte, Georg-Glock-Straße 14, 40474 Düsseldorf, Germany (professional representative).
Class 25: Clothing; footwear; headgear.
Class 28: Gymnastic and sporting articles, included in class 28, in particular gymnastic balls, dumb-bells, yoga blocks, flexible bands, yoga belts.
Union trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against some of the goods of European
Union trade mark application No
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case, the time limit given to the opponent to substantiate the earlier rights expired on 20/04/2015 and was subsequently extended until 20/06/2015.
The evidence filed by the opponent on 21/01/2015 in support to earlier Italian trade mark No 1 579 170 consists of the English translation of the registration certificate.
The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark because the translation of the evidence is not accompanied by a copy of the original document issued by the competent authority.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
Since the original registration certificate of earlier Italian trade mark No 1 579 170 was not submitted, the opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.
PROOF OF USE
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 applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based. However, as stated above, since the opposition has been rejected as unfounded as far as earlier Italian trade mark No 1 579 170 is concerned, the examination of the proof of use will proceed in relation to European Union trade mark No 7 448 293.
The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.
The contested application was published on 05/09/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 05/09/2009 to 04/09/2014 inclusive.
Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetical substances for medical use, foodstuffs for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
Class 24: Textiles and textile goods, not included in other classes; bed and table covers.
Class 25: Clothing, footwear, headgear.
Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Class 35: Advertising; business management; business administration; office functions.
Class 41: Education; providing of training; entertainment; sporting and cultural activities.
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 06/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 11/01/2016 to submit evidence of use of the earlier trade mark which was further extended until 11/03/2016. On 11/03/2016, within the time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
According to the observations submitted on 11/03/2015, Mr Roberto Giordani, the opponent and the owner of the European Union trade mark No 7 448 293, has licensed his trademark to Tasci srl and, for goods in Class 20, to Wallframe srl.
The evidence to be taken into account is the following:
Around 450 invoices in English and in Italian issued by Tasci srl during 2014 to customers in Austria, Belgium, Czech Republic, France, Germany, The Netherlands, Spain and Italy. On the top left corner of the invoices there is the following reference to the trade mark . The goods listed in the invoices are pants, jackets, bermudas, shorts, t-shirts, duvets, light caps, forest caps, knit caps, belts, chalk bags, backpacks, suitcases, wallets, totes, bags, shoulder bags, life jackets and operator vest. The invoices show the number of units sold, the price per unit and the total price.
42 Invoices in Italian, with the relevant information translated into English. 24 of which are issued by Wallframe srl to Tasci srl and 18 to ‘Alpstation’ retailers in Italy for years 2012, 2013 and 2014 and making reference to . The invoices are issued for different kind of furniture such as shelves, panels, tables, mirrors and racks. The invoices show the number of units sold, the price per unit and the total price.
Lists of sales per items for the period 2009 to 2014 to the shop retailers Alpstation and Montura. There is no reference to the opponent’s trade mark.
Several labels for textile goods making reference to and are provided. There is also the technical sheet of a duvet in Italian where the logo is affixed to the duvet.
Three seasonal workbooks in English for years 2013 and 2014. These workbooks are sort of catalogues in which the clothing, headgear and chalk bags sold appear represented with drawings. The following logo is affixed to the items , , .
Several pictures of the ‘Montura’ corner in some of the shop retailers. The pictures show counters, curtains and decorative items with the following logos , , , and .
Pictures of all kind of items sold by the retailers. The logo registered is not affixed to any of those items.
Pictures of athletes and of some shop retailers where the logo is displayed.
Six press clips from June to August 2014 in French, Italian and German. The trade mark is directly promoted in some of them and the rest of the articles are reportages where the athletes are all wearing clothes from the ‘Montura’ brand with the logo.
A list of entertaining and sporting events sponsored by the Montura brand, such as the Domzale mountain film festival, the KM0 Agenda, the I light pila, the movie ‘Piccola Patria’, races, trekking for kids or an international festival.
Invoices and pictures of the participation of the Montura brand to the R.E.A.S. fair in Italy in 2012, 2013 and 2014 where protective clothing are exposed.
A list of official stores worldwide.
A certificate of incorporation of Tasci SRL in English.
Assessment of genuine use – factors
The evidence filed by the opponent does not relate to all the goods and services for which the earlier trade mark is registered. There is no indication whatsoever that the mark was used in connection with any of the goods and services in Classes 3, 5, 14, 21, 22, 24, 35 and 41.
In particular, regarding the services in Class 35, most of the material provided by the opponent under section 3a shows how the brand is used for sponsoring cultural and sporting events. The evidence does not prove that the opponent has actually offered and/or sold to third parties its services of advertising; business management; business administration; office functions. Indeed, although services in Class 35 are ancillary to the running of any business, they mainly include services rendered by persons or organizations to help in the working or management of a commercial undertaking. The evidence provided only refer to the own promotion of the opponent.
Regarding the services in Class 41, there is no evidence clearly showing that any educational, entertaining, cultural or sporting activities are directly organised by the ‘Montura’ brand and provided to third parties as an independent activity. Some events, such as ‘Discovering India from the Alpstation Bassano’ or ‘Saucany day at the Alpstation Isera’ seem to be organised by the retailers in Bassano and in Isera but advertised in the ‘Montura’ website. The evidence provided under section 3b rather looks like sponsorship or a kind of partnership in the case of the previous examples.
The evidence only provides indication that the earlier trade mark was used in relation to life jackets, operator vest in Class 9; backpacks, suitcases, wallets, totes, bags, shoulder bags in Class 18 and shelves, panels, tables, mirrors, racks in Class 20pants, jackets, bermudas, shorts, t-shirts, duvets, light caps, forest caps, knit caps, belts in Class 25; chalk bags in Class 28.
Therefore, the assessment of use of the earlier mark will continue only with regard to those listed goods.
Time and place of use
The customer addresses and the currency mentioned (euro) in the invoices and the language of the press clips (French, Italian and German) show that the place of use is the European Union. Therefore, the evidence relates to the relevant territory.
The evidence provided is dated within the relevant period.
Moreover, account should be taken of the fact that the use need not have been made throughout the period of five years, but rather within the five years. The provisions on the use requirement do not require continuous use (16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52).
Therefore, the evidence of use filed by the opponent contains sufficient indications concerning the time and place of use.
Extent of use
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
Although the number of items sold per invoice is not particularly high, it shows a lengthy, frequent and regular duration of use in several Member States, namely, Austria, Belgium, Czech Republic, France, Germany, The Netherlands, Spain and Italy for the above mentioned goods in Classes 18, 25 and 28.
The invoices also show a regular duration of use in Italy for the above mentioned goods in Class 20. Therefore, there is sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of these goods.
However, according to the invoices provided, only eleven life jackets and one operator vest have been sold during 2014. The commercial volume in relation to these goods is clearly not sufficient.
Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier mark in relation to life jackets and operator vest.
In its observations of 21/02/2017 the opponent states that trademarks registered for goods in Class 25 are often used for other products somehow connected to this Class, as could be goods in Classes 3, 9 or 14. Even if it is true that it can exist some similarities between goods and services belonging to different classes, the use requirement must be fulfilled for the specific goods or services previously registered or for goods or services falling within the broader specification previously registered and not for similar ones. Therefore,the opponent’s argument is to be set aside.
Nature of use
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the evidence show that even if the earlier figurative trade mark is sometimes used in combination with the words ‘MONTURA’ or ‘MONTURA The Ergonomic Equipage’, it is also often used independently. This is the case for most of the items detailed in the invoices that can also be found in the workbooks (pants, jackets, bermudas, shorts, t-shirts, duvets, caps, belts, chalk bags) and for shop furniture and mirrors. Whether alone or together with other verbal elements, this symbol is always present. Furthermore, even when the logo is used together with the words above-mentioned, it is still particularly noticeable because it is almost always placed in the front or on the top of the words and it always has a considerable size.
Even if it is true that consumers probably use the word ‘MONTURA’ to refer to the brand, a large number of items are sold with the sign . Furthermore, it is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time. The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied both where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (judgment of 18/04/2013, C-12/12, SM JEANS/LEVI‘S, EU:C:2013:253, § 36.).
Consequently, for the listed goods in Classes 25, 20 and 28, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR in relation to the above mentioned goods.
However, in relation to the goods in Class 18, namely, backpacks, suitcases, wallets, totes, bags, shoulder bags, there is no evidence that shows how the earlier mark is used. The only goods belonging to Class 18 that are displayed under Section 2c of the evidence have a different brand affixed on it. Consequently, the Opposition Division considers that the sign has not been used as registered in relation to these goods.
Use in relation to the registered goods and services
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
According to case-law, when applying the abovementioned provision the following should be considered:
…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories (14/07/2005, T‑126/03, Aladin, EU:T:2005:288).
The evidence shows genuine use for pants, jackets, bermudas, shorts, t-shirts, duvets, light caps, forest caps, knit caps, belts. They belong to the categories clothing and headgear in Class 25. As the opponent is not required to prove all the conceivable variations of the categories of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows use of the trade mark for clothing and headgear.
In Class 20, the evidence proves genuine use for mirrors which are listed as such in the specification of the earlier mark and for shelves, panels, tables, racks. These goods can be considered to form an objective subcategory of furniture, namely shop furniture. Therefore, the Opposition Division considers that the evidence shows use of the trade mark only for shop furniture and mirrors in Class 20.
Finally, in Class 28 the evidence shows genuine use for chalk bags. These goods fall into the broader category of sporting articles not included in other classes in Class 28. Even bearing in mind that the opponent is not expected to show use for every possible variation within the broad category, the Opposition Division does not see any grounds for granting use for any other goods than chalk bags.
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).
In the present case, the Opposition Division considers that genuine use of the earlier mark has been sufficiently demonstrated under the aspects of the place, the time, the nature and the extent of use in connection with part of the goods for which the earlier mark is registered, namely:
Class 20: Mirrors; shop furniture.
Class 25: Clothing and headgear.
Class 28: Chalk bags.
Although there is a pending declaration pursuant to Article 28(8) EUTMR regarded the earlier EUTM No 7 448 293, it is not necessary in the present case to suspend the proceedings as the declaration does not have effect on the decision since the evidence submitted does not demonstrate genuine use for any of the goods and services claimed by the declaration.
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 goods on which the opposition is based and for which use has been proved are the following:
Class 20: Mirrors; shop furniture.
Class 25: Clothing and headgear.
Class 28: Chalk bags.
The contested goods are the following:
Class 3: Soaps; perfumery; essential oils, plant flavourings, household fragrances; cosmetics.
Class 14: Precious metals and their alloys and goods made from precious metals and their alloys, all the aforesaid goods included in class 14; jewellery, precious stones.
Class 18: Leather and imitations of leather, and goods made of these materials and included in class 18; trunks and travelling bags; umbrellas.
Class 25: Clothing; footwear; headgear; yoga and meditation eye patches.
Class 27: Yoga mats, including carrier bags adapted therefor.
Class 28: Gymnastic and sporting articles, included in class 28, in particular gymnastic balls, dumb-bells, yoga blocks, flexible bands, yoga belts.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The terms ‘including’ and ‘in particular’, used in the applicant’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).
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 Classes 3 and 14
The contested goods in Classes 3 and 14 are goods used for cosmetic, cleaning and perfumery purposes, jewellery, precious stones and precious metals. They are dissimilar to any of the opponent’s goods since they are of different nature and also have a different method of use and purpose. They are neither complementary nor in competition. Finally, manufacturers and distribution channels do not coincide.
Contested goods in Class 18
The contested leather and imitations of leather are raw materials. The fact that one product may be used for manufacturing another (for example, leather for clothing) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from clothing, headgear, chalk bags, mirrors and shop furniture. Therefore, these goods are dissimilar.
As regards to the contested goods made of these materials and included in class 18, due to the vagueness of this expression, it cannot be construed as such as relating to any of the opponent’s goods in Classes 20, 25, 28 since the purpose, qualities and methods of use have not been expressly identified in the specification. In the absence of an express limitation by the opponent clarifying the vague term goods made of these materials and included in class 18, it cannot be identified if any of the Canon criteria would apply. Consequently, these goods are dissimilar.
The contested trunks and travelling bags are carriers which purpose is to transport personal belongings and the contested umbrellas are devices for protection from the weather. To that extent, they are dissimilar to any of the opponent’s goods in Classes 20 and 25 since they serve very different purposes. They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are also dissimilar to the opponent’s chalk bags in Class 28 since the latter are very specific bags which purpose is to carry the chalk that is used in climbing and in gymnastic. Furthermore, the retail outlets and the manufacturers do not coincide either.
Contested goods in Class 25
The contested clothing and headgear are identically contained in both lists of goods.
The contested footwear is similar to the opponent’s clothing as they have the same purpose of protecting the body. They can also coincide in producer, end user and distribution channels.
However, the contested yoga and meditation eye patches that are devices used to help in relaxation and to enhance the benefits of yoga practice are dissimilar to any of the opponent’s goods. Indeed, although in broad terms they are sporting articles, they are not even similar to the opponent’s chalk bags since the latter are meant for climbing or for gymnastic which are different sporting discipline. Apart from the fact that neither the purpose nor the method of use coincide, producers of this type of goods are normally specialized in a particular discipline or in a similar one. Finally, they will normally not be provided through the same undertakings or be found in the same part of the shop. This reasoning is also valid for the rest of the opponent’s goods for which no similarity with the above contested goods exist because there are no relevant links in relation to the previously mentioned criteria of the comparison.
Contested goods in Class 27
The contested yoga mats, including carrier bags adapted therefor in Class 27 that are specially made to prevent hands and feet slipping during yoga practice are dissimilar to any of the opponent’s goods. Indeed, although in broad terms they are sporting articles, they are not even similar to the opponent’s chalk bags since the latter are meant for climbing or for gymnastic which are different sporting discipline. Apart from the fact that neither the purpose nor the method of use coincide, producers of this type of goods are normally specialized in a particular discipline or in a similar one. Finally, they will normally not be provided through the same undertakings or be found in the same part of the shop. This reasoning is also valid for the rest of the opponent’s goods for which no similarity with the above contested goods exist because there are no relevant links in relation to the previously mentioned criteria of the comparison.
Contested goods in Class 28
The contested gymnastic and sporting articles, included in class 28, in particular gymnastic balls, dumb-bells, yoga blocks, flexible bands, yoga belts include, as broader categories, the opponent’s chalk bags. This is because the chalk bags can be used both in gymnastic and in climbing. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
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. The degree of attention is considered to be average.
Earlier trade mark
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 signs consist of one single figurative element representing a kind of flower with four petals each. In the earlier mark, the centre of the symbol is squared and the tips of the petals are sharp. The centre of the contested sign only consists of a straight line and the tips of the petals are round.
The applicant argues that the contested sign does not represent a flower but two interconnected infinity signs that would be the centre of an Indian Mandala. The Opposition Division considers that this interpretation is not particularly objective since there is no reason why the average consumer would make such a mental connection with mandalas that rather consist of a circular shape with geometric forms in it. Furthermore, the infinity symbol resembles a horizontal number eight and this is not what can be observed in the image above. Therefore, the Opposition Division considers that the average consumer will not make such associations and will, at best, rather be reminded of a flower.
It cannot be excluded that a part of the public will not associate the signs to any particular meaning.
Visually, the signs coincide in the fact that they both consist of one single abstract symbol with the shape of a kind of flower with four petals placed in the same position. Both are represented with a black outline. The signs differ in their centre which is rather squared in the earlier mark and flat in the contested sign and, as already mentioned, in the tips of the petals that are sharp in the earlier mark and a rounded in the contested sign. Therefore, the signs are visually similar to an average degree.
Aurally, purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As at least a part of the public will perceive both signs as the representation of a flower, the signs are conceptually highly similar for this part of the public.
For the rest of the public that will not make such an association, a conceptual comparison is not possible. Therefore, 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.
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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).
According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.
In the case at hand, the goods are partly identical, partly similar and partly dissimilar. The signs, consisting of purely figurative elements that cannot be pronounced, are visually similar to an average degree and conceptually highly similar at least for a part of the public that might recognize a flower. For the rest of the public, the conceptual aspect does not influence the assessment. The differences in the centre of the figurative elements and in the petals are minimal and not sufficient to counteract the overall overwhelming similarities. They will most probably go unnoticed to the average consumer that rarely has the chance to make a direct comparison between different marks, but must trust in its imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
Considering all the above and irrespective of whether or not the symbols are perceived as flowers, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
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 will 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
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.