OPPOSITION No B 2 728 718

Bigfoot Properties (Europe) N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (opponent)

a g a i n s t

Troy Eckert, 2402 Calle Maderia, San Clemente, California 92672, United States of America (applicant), represented by CSY St Albans, 45 Grosvenor Road, St Albans, Hertfordshire AL1 3AW, United Kingdom (professional representative).

On 03/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 728 718 is upheld for all the contested goods.

2. European Union trade mark application No 14 978 605 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 978 605 in Class 25. The opposition is based on Benelux trade mark registration No 975 585. 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 25: Clothing; fashion garments; footwear and headgear; swimwear; sportswear and leisurewear.

The contested goods are the following:

Class 25: Athletic apparel; athletic apparel, namely, shirts, pants, trousers, jackets, footwear, hats and caps, athletic uniforms.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Footwear is identically contained in both lists of goods.

The contested athletic apparel is synonymous with the opponent’s sportswear and leisurewear, since both goods are clothes worn for sport or casual outdoor use. Therefore, these goods are identical.

The applicant’s athletic apparel, namely shirts, pants, trousers, jackets, athletic uniforms are included in the broad category of the opponent’s clothing, while the contested hats and caps are included in the broad category of the opponent’s headgear. 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.

The degree of attention is considered average.

3. The signs

KOZO	KOZM
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see by analogy, 07/09/2006, C‑108/05, Europolis, EU:C:2006:530).

The earlier mark and the contested sign are word marks consisting of the verbal elements ‘KOZO’ and ‘KOZM’, respectively. Neither of the marks has any meaning in the languages spoken in the relevant territory. Therefore, their inherent distinctiveness as regards the relevant goods is average.

Visually, the signs coincide in their first three letters, ‘KOZ’. Consumers generally tend to focus on the beginning 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. The marks differ in their last letters, ‘O’ in the earlier mark and ‘M’ in the contested sign. Taking into account that the signs coincide in the first three letters out of four, with the only difference lying in the last letters of the words, and also taking into account the fact that the public will pay more attention to this coinciding sequence of letters because it reads from left to right, the visual differences between the letters ‘O’ and ‘M’ are offset by the identity of the first letters, ‘KOZ’. Consequently, the visual similarity between the signs is considered to be average.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘KOZ’, present identically in both signs. The pronunciation differs in the sounds of the letters ‘O’ and ‘M’. Even though the pronunciation of the vowel ‘O’ and the consonant ‘M’ may lead to the trade marks being pronounced in two syllables and one syllable, respectively, the sound of the letters ‘KOZ’ is identically and noticeably present in both signs; furthermore, the letters in common are placed at the beginning of the signs, which, as explained above, has more impact on the relevant public than if they were found at the end of the signs. Therefore, the aural similarity between the signs is considered to be average.

Conceptually, neither of the signs has any 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.

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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between goods 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 goods are identical and the inherent distinctiveness of the earlier mark is average.

Taking into account the identity of the goods and the visual and aural similarity between the signs, the Opposition Division concludes that the marks may lead the relevant public to believe that the goods under comparison come from the same undertaking or from 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).

Consequently, the relevant public may recall the coinciding three letters ‘KOZ’, as these letters are placed at the beginning of the signs, which, as explained above, has more impact on the public, in contrast to the final letters, which are less likely to be remembered.

Considering all the above, there is a likelihood of confusion on the part of the relevant public.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 975 585. 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Gueorgui IVANOV

Ieva SMILGAINE

Sandra KASPERIŪNAITÉ

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