OPPOSITION No B 2 400 383
Diadora Sport s.r.l., Via Montello, 80, 31031 Caerano di San Marco (Treviso), Italy (opponent), represented by Avvocati Associati Franzosi dal Negro Setti, Via Brera, 5, 20121 Milano, Italy (professional representative)
a g a i n s t
Einstein Shoes B.V., James Wattlaan 7, 5151 DP Drunen, The Netherlands (applicant), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods of European Union
trade mark application No
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.
Earlier trade marks
The relevant territory is the European Union, and Italy.
Both earlier trade marks protect the same figurative sign depicted above. For reasons of simplicity, both marks will hereinafter be referred to in the singular.
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).
Visually, the earlier mark is composed of an abstract figurative element consisting of a forked black stripe. It comprises a thin line with a pointed edge on the left side of the mark which forks into two curved bold lines on the right side of the mark. On the other hand, the contested sign is composed of a curved black line in the upper part and a straight black line in the lower part of the sign. The whole resembles a stylised slanted number ‘2’ for a large part of the public. Although both marks contain black lines, curves and some pointed edges, they essentially depict a different overall shape, namely a more or less horizontal forked stripe versus a mark with a prominent curved line in the upper part of the sign which resembles, as a whole, a stylised number ‘2’ for a large part of the public.
For the above reasons, the Opposition Division cannot agree with the opponent’s arguments claiming visual similarity between the marks, and in particular that both signs recall the punctuation mark ‘<‘.
Therefore, the signs are considered visually dissimilar in their overall appearance.
Purely figurative signs are not subject to a phonetic assessment. As the earlier trade mark is purely figurative, it is not possible to compare them aurally.
Conceptually, a large part of the public will perceive the contested sign as a stylised number ‘2’ whereas the earlier mark has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.
For the remaining part of the public that does not perceive any concept in any of the signs, a conceptual comparison is not possible and, therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.
Having regard to the above findings, the overall impressions created by the marks are dissimilar. This conclusion applies to both parts of the public, namely the one which perceives the contested sign as a stylised number ‘2’ and also the one which does not.
According to Article 8(1)(b) EUTMR, the identity or similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition based on this ground must be rejected.
This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
The signs must be either identical or similar.
The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.
Identity or similarity of the signs is a condition for the application of Article 8(5) EUTMR. Since the signs are dissimilar, one of the necessary conditions of Article 8(5) EUTMR is not fulfilled, and the opposition based on this ground must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Marta GARCÍA COLLADO
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.