OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
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
Class 28: Sportballs, except golf balls.
trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against some the goods of Community
trade mark application No
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.
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.
Earlier trade mark
The relevant territory is Czech Republic.
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.
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.
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.
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.
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.
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.).
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
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.