OPPOSITION DIVISION




OPPOSITION No B 2 516 972


Miloslav Jurka, Na Bitevní Pláni 1217/19, Psč, 140 00, Praha 4, Czech Republic (opponent), represented by Propatent Intellectual Property Law Firm, Pod Pekařkou 107/1, 147 00, Podolí, Praha 4, Czech Republic (professional representative)


a g a i n s t


Karsten Manufacturing Corporation, 2201 West Desert Cove, 85029 Phoenix, United States (applicant), represented by Mewburn Ellis LLP, City Tower 40, Basinghall Street, EC2V 5DE London, United Kingdom (professional representative).


On 30/04/2019, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 516 972 is upheld for all the contested goods, namely:


Class 25: Clothing, headgear; shirts, sweaters, sweatshirts, windshirts, pullovers, vests, pants, trousers, slacks, shorts, skirts, skorts, jackets, coats, rainwear, gloves, mittens, belts, socks, hats, caps.


2. European Union trade mark application No 13 702 402 is rejected for all the contested goods. It may proceed for the remaining non-contested goods, namely:


Class 25: Footwear; visors.


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



REASONS


The opponent filed an opposition against some of the goods of European Union trade mark application No 13 702 402 for the word mark ‘PING SENSORWARM’, namely against some of the goods in Class 25. The opposition is based on Czech trade mark registration No 215 252 for the word mark ‘SENSOR’. The opponent invoked Article 8(1)(b) EUTMR.



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, now Article 47(2) and (3) EUTMR), 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 Czech trade mark No 215 252 ‘SENSOR’ on which the opposition is based.


The contested application was published on 13/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the Czech Republic from 13/02/2010 to 12/02/2015 inclusive.


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.


Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:


Class 25: Clothes.


According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), 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 or services in respect of which it is registered and on which the opposition is based.


On 29/11/2017, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 03/02/2018 to submit evidence of use of the earlier trade mark. Upon the opponent’s request of 16/01/2018, the time limit to submit evidence of use was extended until 03/04/2018. On 05/03/2018, within the time limit, the opponent submitted evidence of use.


The evidence to be taken into account is, in particular, the following:


  • Approximately 50 invoices for the period 2010-2014 for amounts ranging from CZK 2,130.00 to CZK 23,440.00 (approx. EUR 80.00 to EUR 870.00) issued to various Czech clients in the territory of the Czech Republic for several types of clothes, such as men’s shorts, men’s underpants, women’s underpants, men’s shirts, hats, men’s shirts, men’s underpants, men's and women’s sweatshirts, women’s underwear, gloves, socks.


  • Photos of ‘SENSOR’ catalogues/workbooks from years 2010-2016. The catalogues contain photos of clothes bearing the mark ‘SENSOR’:


  • A licence agreement dated 01/01/2008 and an extract from the trade mark database of the Industrial Property Office of the Czech Republic, proving that the company ULTRASPORT s.r.o., mentioned as supplier in the invoices dated 2008-2013, has the exclusive licence to use the trademark ‘SENSOR’.


Most of the evidence of use is dated within the relevant period. The documents show that the place of use is the Czech Republic. This can be inferred from the language of the documents, the currency mentioned and the addresses of the recipients of the invoices. The mark was used, during the relevant period, in relation to various types of clothes, such as men’s shorts, men’s underpants, women’s underpants, men’s shirts, hats, men’s shirts, men’s underpants, men's and women’s sweatshirts, women’s underwear, gloves and socks.


The evidence, considered as a whole, even if it is not particularly exhaustive, provides sufficient information concerning the commercial volume of the use, the length of the period and the frequency; finally, the evidence shows that the mark has been used as registered and in connection with the goods in respect of which it is registered and on which the opposition is based.


The applicant argues that the evidence submitted relies on internal documents, it originates from an alleged licensee, the value of the invoices is low taking into account the apparel market in the Czech Republic and that it is impossible to link the details of the invoices with specific products.


First of all, invoices are among the types of documents foreseen in Article 10(4) EUTMDR as valid evidence of genuine use. The invoices prove that the mark was used outwardly and publicly as the goods bearing the opponent’s mark were sold to a number of retailers and distribution companies in different parts of the Czech Republic.


Secondly, pursuant to Article 18(2) EUTMR, the use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States. The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). Therefore, the Opposition Division considers that the use made by another company was made with the opponent’s consent and thus is equivalent to use made by the opponent.


Thirdly, the opponent submitted approx. 50 invoices which demonstrate that the goods were marketed, even if in small quantities and taking into account that the price per item is relatively low. In accordance with Article 47(2) and (3) EUTMR Office does not assess commercial success, nor is it to restrict trade-mark protection to only large-scale commercial use of the marks (judgments of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 32; 08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38). In consequence, even minimal use is sufficient to be deemed genuine use. In view of the above, the volume of sales is considered to be ample not to be concluded as merely token use.


Lastly, contrary to the applicant’s contentions, the opponent has proven that the goods listed in the invoices were marketed under the mark ‘SENSOR’ as registered. Each of the names of items of clothing included in the invoices, next to the model name, contain a reference to the ‘SENSOR’ brand. In addition, the opponent provided catalogues which show how the mark logo is placed on apparel and advertising material in the relevant period covered by the invoices. The mark appears used on the goods essentially in the following figurative versions:

.


According to Article 18(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 that 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 47(2) and (3) EUTMR, Article 18 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, although the mark is applied on clothing in stylised forms, the differing elements, namely the stylised letter type, the colours, the label and the ornamental figurative device next to it, do not alter the distinctive character of the sign in the form in which it was registered. The public is used to perceive such stylisations and figurative components as mere ornaments in commercial brands and they will not convey any trade significance to them. In other words, it remains clear that the brand of the goods is ‘SENSOR’.


Taking into account the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.


In view of the above, the applicant’s arguments must be set aside as unfounded.


Furthermore, the evidence contains sufficient indication as regards several items of clothes in Class 25 (e.g. men’s shorts, men’s underpants, women’s underpants, men’s shirts, hats, men’s shirts, men’s underpants, men's and women’s sweatshirts, women’s underwear, gloves and socks).


Therefore, as the Opposition Division finds that it should not unduly restrict the scope of protection of the earlier mark and that the opponent has shown that its mark is applied to a sufficient variety of products within the category of clothes. Consequently, it is considered that use has been proven for the entire category of clothes designated by the earlier mark in Class 25.



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


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


Class 25: Clothes.


The contested goods, after the limitation of the trade mark of 25/07/2018, are the following:


Class 25: Clothing, headgear; shirts, sweaters, sweatshirts, windshirts, pullovers, vests, pants, trousers, slacks, shorts, skirts, skorts, jackets, coats, rainwear, gloves, mittens, belts, socks, hats, caps.


The contested clothing; shirts, sweaters, sweatshirts, windshirts, pullovers, vests, pants, trousers, slacks, shorts, skirts, skorts, jackets, coats, rainwear, gloves, mittens, belts, socks are included in the broad category of the opponent’s clothes. Therefore, they are identical.


The contested headgear; hats, caps are similar to the opponent’s clothes. They share the same purpose as they all are meant to be worn by people, or serve as fashion articles. Moreover, they usually coincide in the producer, the relevant public and are provided through the same distribution channels.



  1. 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.



  1. The signs



SENSOR


PING SENSORWARM



Earlier trade mark


Contested sign



The relevant territory is the Czech Republic.


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).


Since both marks are word marks, neither of them has an element that could be considered clearly more dominant (visually eye-catching) than other elements.


The word ‘SENSOR’ constituting the earlier mark and appearing in the contested sign, will be associated by the relevant public with the Czech word (despite the slightly different spelling) ‘senzor’ meaning a device which detects or measures physical properties or changes and provides a corresponding output or measurement in response

(http://www.oed.com/view/Entry/176005?rskey=Y9Ri0a&result=1&isAdvanced=false#eid). The distinctiveness of this element is considered normal, since on its own it does not allude to the goods or their characteristics in a manner that would affect the distinctive character in a material way.


Considering the contested sign as a whole, the expression ‘PING SENSORWARM’ has no clear univocal meaning for the relevant public.


Neither the element ‘PING’ nor the sequence of last four letters ‘WARM’ of the contested sign will be associated with any concept in the relevant territory and, as such, they are distinctive to an average degree.


Given that only the word ‘SENSOR’ in the contested sign will suggest a specific meaning referred to above, it is the only clear and univocal concept in this mark. For the same reason, it is likely that consumers will break the contested mark down into elements ‘PING SENSOR WARM’ (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).


Visually and aurally, the signs coincide in the verbal element ‘SENSOR’ / syllables ‛SEN‑SOR’; however, they differ in (the sound of) the letters ‘PING’ and ‘WARM’ which appear at the beginning and at the end of the contested sign, respectively, and have no counterparts in the earlier mark.


The earlier mark ‘SENSOR’ is entirely reproduced in the contested sign, which, despite the differentiating elements ‘PING’ and ‘WARM’ appearing only in the contested mark, contributes to the similarity between the signs.


It follows that the signs are visually and aurally lowly similar.


Conceptually, although the contested mark as a whole will not evoke a concept, the public will be aware of the semantic content referred to above of the word ‘SENSOR’ in the contested sign and constituting the entirety of the earlier mark. The elements ‘PING’ and ‘WARM’ do not evoke any concept in the relevant territory. As a result, it is the element ‘SENSOR’ appearing in both signs that will create a semantic link between them. The coincidence in the component ‘SENSOR’ is a relevant one and the differing elements are not sufficiently striking to distinguish the signs safely.


To that extent, the signs are conceptually similar to an average degree.


As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.



  1. 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 on its own has no meaning for 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.



  1. Global assessment, other arguments and conclusion


As follows from the analysis in section a) above, the goods have been found identical or similar.


There is a low degree of visual and aural similarity and an average conceptual similarity between the marks stemming from the shared component ‘SENSOR’, which constitutes the entirety of the earlier mark and will attract the public’s attention in the contested sign as the only element which will evoke a concept.


As follows from case law, two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30). The coincidence must be, therefore, ‘relevant’ from the perspective of the consumer who usually perceives a mark as a whole and does not proceed to analyse its various details (13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).


Moreover, 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, § 26).


Account should also be taken of the fact that an average consumer perceiving a word sign will break it down into elements that suggest a concrete meaning or resemble known words (judgment of 06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51; confirmed 01/12/2005, C-512/04 P, Vitakraft, EU:C:2005:736), as it is applicable to the contested sign under the present opposition proceedings.


While it is indeed true that the signs differ in certain aspects, the differences are not sufficient to outweigh their similarities. The element ‘SENSOR’ appearing in both signs performs an independent distinctive role in the contested sign and has a semantic content, whereas the differing elements appearing therein, ‘PING’ and ‘WARM’, are meaningless and not sufficient to safely exclude the likelihood of confusion in relation to identical and similar goods.


Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services 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). In the present case, the identity and similarity between the goods counterbalances the low visual and aural similarities between the signs.


Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.


It is common practice in the fashion industry to create new brands, sub-brands or new lines of products by adding new verbal and/or figurative elements to the original brand. In this light, in the present case, consumers may legitimately believe that the contested sign denotes a new brand line of goods provided under the opponent’s mark. In view of the above, given the reproduction of the normally distinctive and only meaningful element ‘SENSOR’ in the contested sign, it is likely that the relevant public will associate the contested sign with the earlier mark, by assuming that it represents a new brand line of ‘SENSOR’ goods.


Therefore, there is a likelihood of confusion in the form of likelihood of association between the signs in question and the opposition is well founded on the basis of the opponent’s Czech trade mark registration No 215 252. It follows that the contested trade mark must be rejected for all the contested goods.



COSTS


According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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



Gueorgui IVANOV

Anna MAKOWSKA

Monika CISZEWSKA



According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.


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