OPPOSITION No B 2 625 245

Okamoto Sportswear GmbH, An’n Slagboom 7, 22848 Norderstedt, Germany (opponent), represented by Taylor Wessing, Hanseatic Trade Center, Am Sandtorkai 41, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Sudamericana de Fibras S.A., Avenida Néstor Gambetta 6815, Callao, Peru (applicant), represented by Isern Patentes y Marcas S.L., Avenida Diagonal 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).

On 27/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 625 245 is partially upheld, namely for the following contested goods:

Class 25: Clothing, footwear, headgear.

2. European Union trade mark application No 14 434 013 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 434 013, namely against all the goods in Classes 22, 23, 24, 25 and 26. The opposition is based on, inter alia, international trade mark registration designating Austria, Denmark, Spain, Finland, Italy, Poland, Portugal and Sweden No 725 235. 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.

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 international trade mark registration designating Austria, Denmark, Spain, Finland, Italy, Poland, Portugal and Sweden No 725 235.

1. The goods

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

Class 25: Sportswear made of coated fabrics, underwear.

The contested goods are the following:

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); Padding and stuffing materials (except of rubber or plastics); Raw fibrous textile materials; Acrylic fibers; Synthetic textile filaments; Raw fibrous textile materials.

Class 23: Yarns and threads, for textile use.

Class 24: Textiles and textile goods, not included in other classes; Bed covers; Table covers.

Class 25: Clothing, footwear, headgear.

Class 26: Lace and embroidery, ribbons and braid; Buttons, hooks and eyes, pins and needles; Artificial flowers.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Classes 22, 23, 24 and 26

The contested goods in Class 22 include mainly ropes, sails and related products, padding and stuffing materials and raw fibrous textile materials. The main point in common between the goods in Class 22 and the opponent’s sportswear made of coated fabrics, underwear in Class 25 is that some of the contested goods are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: sportswear or underwear is meant to be worn by people for protection and/or fashion, whereas the contested goods may be used for tying things together, for spending the night outdoors (in the case of tents), for filling in gaps (padding and stuffing materials) or, in the case of fibres and filaments, for use in the manufacture of other goods. Therefore, their methods of use are different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, all the contested goods in Class 22 and the opponent’s sportswear made of coated fabrics, underwear in Class 25 are considered dissimilar.

A similar reasoning applies to the contested yarns and threads, for textile use in Class 23. The contested yarns and threads are suitable for use in the production of textiles, sewing, rope making, etc., by hand or machine. The mere fact that these goods are used to make sportswear or underwear is not enough to justify a finding of similarity. They serve different purposes: clothing is meant to be worn by people or to serve as a fashion article on the human body, whereas yarns and threads are mainly for use in weaving, knitting or the manufacture of sewing thread. Therefore, their methods of use are different. Moreover, their distribution channels and sales outlets are different and they are not usually manufactured by the same undertaking. Therefore, yarns and threads, for textile use are considered dissimilar to the opponent’s goods in Class 25.

The main point in common between the contested textiles and textile goods, not included in other classes; bed covers; table covers in Class 24 and the opponent’s sportswear made of coated fabrics, underwear in Class 25 is that they are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: sportswear or underwear is meant to be worn by people for protection and/or fashion, whereas textile goods are mainly for household purposes and interior decoration. Therefore, their methods of use are different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, the contested goods in Class 24 are considered dissimilar to the opponent’s goods in Class 25.

Finally, and in line with the above reasoning, the contested lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers are dissimilar to the opponent’s goods in Class 25, namely sportswear made of coated fabrics, underwear. The contested goods are used in dressmaking or the manufacture of clothing. However, this is not enough to justify a finding of similarity. These goods have different purposes and natures. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s sportswear made of coated fabrics, underwear. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested footwear serves the same purpose as the opponent’s sportswear made of coated fabrics: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for sportswear will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both sportswear and footwear. Therefore, the goods are similar.

The contested headgear and the opponent’s sportswear made of coated fabrics are of an identical or very similar nature. They also serve the same purpose, in particular in the case of sportswear designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement sportswear. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, headgear and sportswear made of coated fabrics are considered similar.

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 or similar are directed at the public at large. The degree of attention is considered average.

3. The signs

	DRYTEX
Earlier trade mark	Contested sign

The relevant territories are Austria, Denmark, Spain, Finland, Italy, Poland, Portugal and Sweden.

In the present case, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Danish-, Swedish- and Finnish-speaking parts of the relevant public. Focusing on these parts of the public is the most favourable situation for the opponent, given that it does not prejudice, as will be seen below, the rights of the applicant.

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 earlier mark is a figurative mark composed of the words ‘DRY’, ‘TEX’ and ‘SPECIAL’ depicted in an ellipse with its background divided into three parts. The words ‘DRY’ and ‘TEX’ are depicted in large characters and placed at the top and the bottom of the ellipse, respectively. The word ‘SPECIAL’ is depicted in very small characters in the middle of the ellipse on the right-hand side.

The contested sign is the word mark ‘DRYTEX’.

The word ‘DRYTEX’ of the contested mark will be easily split into two words (‘DRY’ and ‘TEX’) by the relevant public that has some knowledge of English. The element ‘DRY’ in both signs is a basic English word and will be associated with ‘lacking moisture; not damp or wet‘ (Collins English Dictionary). Bearing in mind that the relevant goods are clothing, footwear and headgear, this element is weak for all these goods, since it simply indicates to consumers that these goods are able to stay dry or keep the wearer dry under conditions of moisture or sweating.

The element ‘TEX’, included in both signs, will be associated by the relevant public with ‘textile’. Bearing in mind that the relevant goods are clothing, footwear and headgear, this element is weak for all these goods, since it simply indicates the nature of the goods to consumers.

The element ‘SPECIAL’ of the earlier sign is also a basic English word that will be associated by the relevant public with ‘distinguished, set apart from, or excelling others of its kind’ (Collins English Dictionary). Bearing in mind that the relevant goods are clothing, footwear and headgear, this element is not distinctive for all these goods, since it simply indicates a quality of the goods to consumers.

The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The word elements ‘DRY’ and ‘TEX’ in the earlier sign are the dominant word elements, as they are the most eye-catching because they are much larger than the element ‘SPECIAL’.

Visually, the signs coincide in the words ‘DRY’ and ‘TEX’. However, they differ in the fact that these coinciding words appear as two words in the earlier sign but as a single word in the contested mark. Furthermore, the signs differ in the word ‘SPECIAL’ and the figurative elements of the earlier sign, which do not have counterparts in the contested 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). In the present case, the figurative components of the earlier sign have less impact on the consumer than the verbal components.

The first parts of the conflicting marks are identical (‘DRY’). 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.

Taking all the above into account, and the fact that the word ‘SPECIAL’ of the earlier sign is a non-distinctive element that will be easily dismissed by the consumers due to its small size and lack of distinctiveness, 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 /dry/ and /tex/. Furthermore, the fact that, in the earlier sign, the words ‘DRY’ and ‘TEX’ are two words, whereas they are conjoined in the contested mark, will not lead to a perceptible difference in their pronunciation. The pronunciation differs in the syllables /spe/cial/ of the earlier sign, which have no counterparts in the contested mark. However, it is likely that this word will not be pronounced by the consumers due to its small size within the sign.

Therefore, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the word ‘DRY’ in both signs as ‘lacking moisture; not damp or wet‘ (Collins English Dictionary). The word ‘TEX’, also included in both signs, will be associated with ‘textile’ by the public in the relevant territory. As for the word ‘SPECIAL’ of the earlier sign, it will be associated with ‘distinguished, set apart from, or excelling others of its kind’ (Collins English Dictionary). The remaining figurative elements of the earlier sign do not have a semantic content.

Taking into account the fact that the element ‘SPECIAL’ of the earlier sign is a non-distinctive element and that it will be unnoticed by the relevant public, the signs will be perceived as having similar meanings (‘not wet’ and ‘textile’) and, consequently, the signs are conceptually highly similar.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question.

5. Global assessment, other arguments and conclusion

The goods at issue are partly identical, partly similar and partly dissimilar.

The signs are visually, aurally and conceptually similar to a high degree. The similarities lie in the words ‘DRY’ and ‘TEX’, included in both of the signs. While it is true that these words are conjoined in the contested mark and appear as two words in the earlier sign, these differences will be unnoticed when the signs are pronounced; furthermore, the fact that the words are conjoined in the contested mark will not offset the high degree of conceptual similarity between the signs.

Furthermore, as is stated in section c) of the present decision, the word ‘SPECIAL’ of the earlier sign is not distinctive and the remaining figurative elements of the earlier sign will have a weaker impact on the consumer than the verbal components.

Account must be 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).

With regard to the weak distinctiveness of the coinciding components (and of the earlier mark and the contested mark when they are considered as a whole), it should be recalled that the finding that the earlier sign has a weak distinctive character does not preclude a finding that there is a likelihood of confusion. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 24), it is only one of a number of elements involved in that assessment. Even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, PAGESJAUNES.COM, EU:T:2007:387, § 70; and 16/03/2005, T‑112/03, FLEX/AIR, EU:T:2005:102, § 61).

In the light of the considerations above, the Opposition Division considers that, although the signs have some visual differences – which lie in the figurative elements or the non-distinctive elements in the contested sign – their similarities – lying in the fact that they have in common the dominant word elements of the earlier sign and their high degree of similarity visually, aurally and conceptually – the relevant public could consider the conflicting marks as having the same commercial origin, for example that the contested mark represents a new or parallel line of the opponent’s products.

Consequently, the Opposition Division considers that the abovementioned differences are not enough to outweigh the significant similarities between the earlier mark and the contested mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Danish, Swedish and Finnish public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 725 235.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

• German trade mark registration No 39 836 704 for the figurative mark

Since this mark is identical to the one which has been compared and covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Victoria DAFAUCE MENÉNDEZ

Ignacio IGLESIAS ARROYO

Andrea VALISA

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.