OPPOSITION No B 2 589 946

Oase Outdoors ApS, Kornvej 9, 7323 Give, Denmark (opponent), represented by Larsen & Birkeholm A/S, Banegårdspladsen 1, 1570 København V, Denmark (professional representative)

a g a i n s t

Westfield Outdoors GmbH, Moselstr. 19, 41464 Neuss, Germany (applicant), represented by Simon Sonnenberg, Sternstr. 67, 40479 Düsseldorf, Germany (professional representative).

On 31/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 589 946 is upheld for all the contested goods.

2. European Union trade mark application No 14 335 401 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 335 401. The opposition is based on trade mark application No 8 967 465. The opponent invoked Article 8(1)(b) EUTMR.

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 18: Travelling bags, backpacks and rucksacks; parasols.

Class 20: Sleeping bags for camping, air mattresses (not for medical purposes), self-inflating mattresses and foam pads; camping furniture.

Class 22: Tents, wind screens, awnings, tarpaulins, sails, sacks and bags (not included in other classes).

Class 24: Textiles and textile goods, not included in other classes.

The contested goods are the following:

Class 22: Awnings of textile; Awnings for tents; Awnings of fabric; Awnings of synthetic materials; Awnings of synthetic material; Tents [awnings] for caravans; Tents [awnings] for vehicles; Canopies [awnings]; Awnings; Camping tents; Tents; Tents [not for camping]; Tents for mountaineering or camping; Tents made of textile materials.

Class 24: Fabrics for manufacturing tents; Fabric; Fabrics.

Contested goods in Class 22

Awnings and tents are identically contained in both lists of goods and services.

The contested awnings of textile; awnings for tents; awnings of fabric; awnings of synthetic materials; awnings of synthetic material and canopies [awnings] are included in the broad category of the opponent’s awnings. Therefore, they are identical.

The contested tents [awnings] for caravans; tents [awnings] for vehicles; camping tents; tents [not for camping]; tents for mountaineering or camping and tents made of textile materials are included in the broad category of the opponent’s tents. Therefore, they are identical.

Contested goods in Class 24

The contested fabrics for manufacturing tents; fabric and fabrics are included in the broad category of the opponent’s textiles. Therefore, they are identical.

2. 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 are directed at the public at large except the goods fabrics for manufacturing of tents which are specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention is average.

3. The signs

HYDROTEX
Earlier trade mark	Contested sign

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish and Lithuanian speaking part of the relevant public.

The earlier mark is a word mark ‘HYDROTEX’.

The contested sign is a figurative mark composed of the stylised word element ‘HydroTech’. The letters ‘Hydr’ appear in green, ‘Tech’ appears in blue and the ‘o’ in centre is partly green and partly blue giving the impression that the green ‘o’ is in the background and is partially covered by a somewhat deformed, blue ‘o’. The verbal element ‘HydroTech’ appears on a black, smooth-edged, rectangular background. On the top left of the rectangle, three white drops with grey outline appear to the left of an additional figurative element that seems to depict three sheets or layers, two in blue and one in green.

The word ‘hydro’ is a meaningful word in the Polish and Lithuanian speaking countries. ‘Hydro’ has the sense of ‘water’ (Oxford English Dictionary) and is commonly used as a prefix to denote the relation with water.

Bearing in mind that the relevant goods are fabrics including fabrics for making tents and awnings and the tents and awnings themselves, this element is weak because it suggests that the fabrics are for water, waterproof or water-resistant.

The element ‘Tech’ present in the contested sign is a widely used abbreviation, understood in Polish and Lithuanian that will be associated with ‘technology’. Bearing in mind that the relevant goods are fabrics including fabrics for making tents and awnings and the tents and awnings themselves, this element is weak because it suggests that a certain technology has been applied in the manufacturing process.

The dominant element of this sign is the verbal element ‘HydroTech’ with its figurative frame and consumers will tend to concentrate on the word element that will allow them to refer to the mark. The drops serve to accentuate the descriptive message of the word ‘Hydro’ and their position on the layer-type figurative element may suggest that the fabrics or textiles have layers and are waterproof. The colours serve as an embellishment and reinforce the fact that the verbal element is made up of two parts. Overall, the figurative element of the contested sign has a low level of distinctive character.

The element ‘TEX’ present in the earlier mark has no meaning in Polish or Lithuanian and therefore it is distinctive to a normal degree in those countries.

‘HYDROTEX’ has no element that could be considrered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of the first seven letters in both signs ‘HYDROTE_’. However, they differ in their last letters ‘X’ vs ‘CH’ and also in the weak figurative elements of the contested mark that have no counterpart in the earlier mark.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Given the above it can be concluded that the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‛HY‑DRO-TE’, present identically in both signs. The pronunciation differs in the sound of the last letters ‘X’ vs ‘CH’. Given that this difference is situated at the end of the signs and affects only the end of the third syllables, its impression on the sound of the marks is limited.

Therefore, the signs are aurally highly similar.

Conceptually, the coinciding element ‛HYDRO’ has the same meaning, ‘relating to water’, in all parts of the relevant territory and so is weak. The public will perceive this meaning in the first two syllables of the earlier sign. The third syllable ‘TEX’ has no meaning whatsoever in Poland or Lithuania and it would be considered fanciful. Therefore, although ‛HYDRO’ will not go unnoticed by the relevant public, ‘HYDROTEX’ means nothing as a whole.

The contested mark ‘HYDROTECH’ will be perceived by the relevant public as comprising the elements ‘HYDRO’, related to water, and ‘TECH’, an abbreviation for technology. Therefore ‘HYDROTECH’ as a whole means ‘water technology’ which is meaningful in relation to the goods at issue, and therefore weak.

Given the fact that the signs coincide conceptually in the weak element ‛HYDRO’, and they differ conceptually with respect to the elements ‘TEX’ which has no meaning in the relevant territory and ‘TECH’, which has a meaning, they can be considered conceptually similar to a low degree.

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

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 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, despite the presence of the weak element ‘HYDRO’ in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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/services covered are from the same or economically linked undertakings.

Account is taken of the fact that 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).

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 higher degree of similarity between goods and services may be offset by a lesser degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In this case, the goods are identical. The signs are visually and aurally similar to a high degree and conceptually similar to a low degree. Irrespective of the conceptual differences and of whether the elements forming the marks are weak or not, as a whole, the marks share the sequence of letters ‘HYDROTE_’’ and differ only in the last letters ‘X’/’CH’ and this makes the marks similar. The figurative elements of the contested sign have only a limited impact.

On the whole, it is considered that with the average of attention of the relevant public and given the normal degree of distinctiveness of the earlier trade mark in the relevant territory, the similarities between the marks are so significant that they are likely to lead to confusion in respect of identical goods.

Considering all the above, there is a likelihood of confusion on the part of the Polish and Lithuanian speaking section of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 967 465. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

André BOSSE

Lynn BURTCHAELL

Martin EBERL

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.