OPPOSITION No B 2 438 698

Auto Kelly, a.s., U Tvrze 65, 100 00 Prague 10, Czech Republic (opponent), represented by Rott, Růzička & Guttmann Patentová, Známková a Advokátní Kancelář, Vinohradská 37/938, 120 00 Prague 2, Czech Republic, (professional representative)

a g a i n s t

Grendene S/A, Av. Pimentel Gomes, 214 Bairro: Expectativa, Sobral, CE 62040-050, Brazil (applicant), represented by Rafael Ortega Pérez, Diego A. Montaude 7, 1º Of 11, 35001 Las Palmas de Gran Canaria, Spain, (professional representative).

On XX/XX/XXXX, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 438 698 is upheld for all the contested goods, namely

Class 28: Sportballs, except golf balls.

2. Community trade mark application No 13 287 412 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some the goods of Community trade mark application No 13 287 412, namely against all the goods in Class 28. The opposition is based on, inter alia, Czech trade mark registration No 328 916. The opponent invoked Article 8(1) (b) CTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely Czech trade marks No 328 916 and No 328 917.

According to Article 42(2) and (3) CTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

In the present case the contested trade mark was published on 27/10/2014.

Earlier Czech trade marks No 328 916 and No 328 917 were registered on 19/12/2012. Therefore, the request for proof of use is inadmissible.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Czech trade mark registration No 328 916.

1. The goods

The goods on which the opposition is based are the following:

Class 28: Sporting articles included in this Class, in particular gloves for motorcycle sport.

After a limitation requested by the applicant on 05/11/2014, the contested goods are the following:

Class 28: Sportballs, except golf balls.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term 'in particular' used in the opponent's list of goods, indicates 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, T224/01, ‘NuTride’).

The contested Sportballs, except golf balls are included in the broad category of the opponent’s goods in Class 28, namely sporting articles included in this class. Therefore, they are considered identical.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is Czech Republic.

Both signs are figurative. The earlier mark consists of the stylised verbal part ‘ridero’, written in italic and enclosed in an oval. All the elements are depicted in black, with the exception of the last letter ‘o’ in red. The contested sign features the stylised word ‘rider’ written in bold and italic characters and preceded by an abstract green curved device.

Visually, the signs are similar to the extent that they coincide in the string of letters ‘r-i-d-e-r’ and in their very similar stylised typeface in italic, especially the letters “r” with their characteristic curved shape and the ‘i’ without a dot. However, the signs differ in the last letter ‘o’ of the earlier right and in the remaining above-mentioned figurative elements.

Aurally, the pronunciation of the signs coincides in the sound of the string of letters ‘rider’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the additional and final letter ‘o’ of the earlier trade mark, which has no counterpart in the contested sign.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 in relation to any of the goods at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 similar are directed at the public at large. The level of attention is average.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (see judgment of

11/11/1997, C-251/95, ‘Sabèl’, paragraph 22 et seq.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C-39/97, ‘Canon’, paragraph 17 et seq.).

The contested goods are identical to the opponent’s goods.

The signs coincide in the sequence of letters ‘r-i-d-e-r*’. In fact, the entire word element of the contested application is fully incorporated in the earlier mark. Moreover, the sequence 'rider' is visually detached in the earlier mark, since the last letter 'o' is depicted in red. Thus, the common verbal 'rider' plays an independent distinctive role in both signs. In addition, the signs share an almost identical particular typeface. It follows from the above that the signs are considered highly similar from both the visual and visual points of view.

The differences reside only in the last individualized letter 'o' of the earlier mark and in the few abovementioned figurative elements, which are not sufficient to counteract the strong visual and aural similarity.

It should also be recalled that when a sign consists of both verbal and figurative components, the verbal components of the sign usually have a stronger impact on the consumer than the figurative components. This is because the public will most readily refer to the signs by their verbal elements rather than by describing the figurative elements of the marks.

Finally, account should be taken of the normal degree of distinctiveness of the earlier mark and the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind.

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

Therefore, the opposition is well founded on the basis of the opponent’s earlier Czech Republic trade mark. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier Czech Republic right No 328 916 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).

COSTS

According to Article 85(1) CTMR, 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), (6) and (7)(d)(i) CTMIR, 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

Sonia MEHANNEK

Steve HAUSER

Vanessa PAGE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.