OPPOSITION No B 2 887 530

OTCF S.A., ul.Grottgera 30, 32-020 Wieliczka, Poland (opponent), represented by Merx Patentes y Marcas, S.L.P., Calle Pinar, 5, 28006 Madrid, (professional representative)

a g a i n s t

Felder KG, KR-Felder-Straße 1, 6060 Hall in Tirol, Austria (applicant), represented by Torggler & Hofinger, Wilhelm-Greil-Str. 16, 6020 Innsbruck, Austria (professional representative).

On 14/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 887 530 is partially upheld, namely for the following contested goods:

Class 9: Computers; computer software and computer programs, in particular for use on mobile devices; computer programs (downloadable software); industrial process control software; all of the aforesaid goods being for the woodworking industry and for woodworking machines.

2. European Union trade mark application No 16 491 813 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 all the goods of European Union trade mark application No 16 491 813 for the word mark ‘F4’, namely against all the goods in Classes 7 and 9. The opposition is based on, inter alia, European Union trade mark registrations No 11 715 513 and No 11 901 402, both for the figurative mark  . The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier marks and also Article 8(5) EUTMR in relation to European Union trade mark registration No 11 715 513.

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 European Union trade mark registrations No 11 715 513 and No 11 901 402, both for the figurative mark  as this is the best case scenario for the opponent.

a) The goods and services

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

EUTM No 11 715 513

Class 1: Compositions for repairing inner tubes of tires [tyres]; compositions for repairing inner tubes of tires [tyres]; tire repairing compositions; tire repairing compositions; tire repairing compositions; leather-impregnating chemicals; leather-impregnating chemicals; leather-waterproofing chemicals; vulcanising preparations; textile-brightening chemicals.

Class 3: Antiperspirants [toiletries]; non-medical stimulating lotions for the skin; moisturising body lotion [cosmetic]; sun block lotions; after sun lotions; self-tanning lotions (cosmetics); balms other than for medical purposes; cleaning preparations; deodorants for human beings or for animals; deodorants for personal use in the form of sticks; roll-on deodorants [toiletries]; deodorant soap; soap for foot perspiration; soaps for household use; disinfectant soap; antiperspirant soap; antiperspirant soap; deodorant soap; soaps for the hand; soaps; anti-bacterial soap; deodorant soap; disinfectant soap; shaving soap; shaving preparations; cosmetic preparations for baths; eau de cologne; eau de cologne; leather preservatives [polishes]; cosmetics; cosmetic preparations for slimming purposes; cosmetic kits; cosmetics for skin tanning; sun barriers (cosmetics); cosmetics, sun creams; skin balms (cosmetic); after-sun gels (cosmetics); cosmetics in the form of gels; after-sun oils (cosmetics); tanning oils [cosmetics]; cosmetic creams; cleansing milk for toilet purposes; cleansing milk for toilet purposes; detergent liquid for cosmetic purposes; cakes of soap; medicated soap; shoe polish; perfumes; laundry preparations; dry shampoos; shampoos; shampoos for the hair; toiletries; astringents for cosmetic purposes; lipsticks; toilet water; toilet water; sun-tanning preparations [cosmetics]; sun tan oils; hydrogen peroxide for cosmetic purposes; scented water; scented water; stain removers; cosmetic kits; sunscreen preparations.

Class 4: Grease for boots; grease for boots; spray lubricants.

Class 9: Eyeglass cases; sunglass cases; goggles for sports; swimming goggles; glacier glasses; protective helmets for sports; riding helmets; riding helmets; protection helmets for sports; crash helmets for cyclists; diving suits; teeth protectors; divers' masks; protective masks; swim masks; goggles for sports; sunglasses; snow goggles; cyclists' glasses; swimming goggles; protective goggles for diving; polarizing spectacles; sports glasses; spectacle frames; personal stereos; sleeves for laptops; speed checking apparatus for vehicles; portable media players; bags adapted for laptops; cell phone straps; speed indicators; bags for sports adapted (shaped) for protective helmets; diving suits; gloves for divers.

Class 10: Supportive bandages; pulse meters.

Class 11: Pocket searchlights; searchlights; pocket searchlights; footwarmers, electric or non-electric; footmuffs, electrically heated; bicycle lights.

Class 12: Repair outfits for inner tubes; inner tubes [for two-wheeled motor vehicles or bicycles]; inner tubes for bicycles; inner tubes for bicycles, cycles; adhesive rubber patches for repairing inner tubes; tires for bicycles, cycles; tubeless tyres for cycles; tubeless tires [tyres] for bicycles, cycles; cycles; cycle bells; tires for bicycles, cycles; pedals for cycles; cycle bells; cycle handle bars; cycle rims; cycle pumps; cycle spokes; bicycle stands; tubeless tires [tyres] for bicycles, cycles; wheels for bicycles, cycles; motors for cycles; cycle chains; cycle frames; cycle saddles; mudguards; cycle brakes; racks for bicycles; luggage carriers for vehicles; ski carriers for cars; wheel carriers; luggage nets for vehicles; safety seats for children, for vehicles; cycle bells; cycle brakes; direction indicators for bicycles; cranks for cycles; baskets adapted for cycles; panniers adapted for cycles; tires for bicycles, cycles; tires for bicycles, cycles; cycle hubs; saddle covers for bicycles or motorcycles; gears for cycles; trailers [vehicles]; bicycle trailers (riyakah); dress guards for bicycles, cycles; saddles for bicycles, cycles or motorcycles; bicycle stands; sack-barrows; sack-barrows; golf carts; shopping trolleys [carts (am)]; handling carts; water bottle holders for bicycles.

Class 18: Covers (bags) for sports equipment; key cases; hiking poles; travelling sets [leatherware]; travelling bags; travelling trunks; trunks [luggage]; straps for skates; beach bags; beach bags; beach umbrellas; backpacks; backpacks; bags for campers; purses; chain mesh purses; school bags; school bags; school bags; school bags; school bags; school book bags; briefcases; pouches, of leather, for packaging; travelling bags; garment bags for travel; garment bags for travel; net bags for shopping; travelling bags; shopping bags; bags; bags for sports; bum-bags; shoulder bags; suit cases; suitcase handles; cases, of leather or leatherboard; net bags for shopping; net bags for shopping; shoe bags; hiking sticks; suitcases; trunks and travelling bags; attaché cases; attaché cases; briefcases; haversacks; haversacks; sling bags for carrying infants; pouch baby carriers; leather strips; pouches, of leather, for packaging; wheeled shopping bags; bags for climbers; bags for campers; all purpose sports bags; all-purpose athletic bags; carry-on luggage; bags for hikers; rucksacks for mountaineers; pocket wallets; umbrella or parasol ribs; parasols; handbags; valises.

Class 20: Air mattresses, not for medical purposes; air pillows, not for medical purposes; tent pegs, not of metal; sleeping bags for camping; sleeping bags; bags for sleeping bags (specially adapted).

Class 21: Bottle gourds; vacuum bottles; bottle gourds; bottle gourds; lunch boxes; thermally insulated containers for food; thermally insulated containers for beverages; heat insulated containers for beverages.

Class 22: Tents; hammocks.

Class 24: Lingerie fabric; bath linen, except clothing; diapered linen; towels of textile; face towels of textile; sleeping bags [sheeting]; elastic woven material; fabric; plastic material [substitute for fabrics].

Class 25: Wet suits for water-skiing; ski bibs; ski suits for competition; snow boarding suits; wrist warmers; ankle warmers; hiking boots; beach shoes; beach clothes; beach shoes; underwear; anti-sweat underwear; non-slipping devices for footwear; non-slipping devices for footwear; bandanas [neckerchiefs]; brassieres; smocks; sports jumpers; hooded sweatshirts; football jerseys; track suit tops; boots; shoes; ski boots; football boots; ski boots; studs for football boots; lace boots; boots for sports; boots for snowboarding; footwear uppers; boot uppers; bathing caps; bathing caps; cap peaks; visors [headwear]; peaked headwear; wooden shoes; knitwear [clothing]; spats; galoshes; hats; rain hats; bathing trunks; pockets for clothing; smocks; swimsuits; studs for football boots; shirts; short-sleeve shirts; casual shirts; casual shirts; singlets; singlets; jackets [clothing]; parkas; water proof jackets; ski jackets; quilted coats; cagoules; stuff jacket (clothing); sports jackets; wind-cheaters; leg warmers; pants; babies' pants [clothing]; gymnastic shoes; football boots; footwear; gymnastic shoes; athletic shoes; sports shoes; shoes for casual wear; sneakers [footwear]; muffs [clothing]; gloves [clothing]; belts [clothing]; combinations [clothing]; ear muffs [clothing]; hoods [clothing]; motorists' clothing; headbands [clothing]; clothing of leather; clothing for gymnastics; clothing of imitations of leather; money belts [clothing]; waterproof clothing; outerclothing; cyclists' clothing; nightshirts; jogging tops (clothing); jogging suits (clothing); jogging sets [clothing]; denim clothing; articles of sportswear; exercise wear; footmuffs, not electrically heated; topcoats; topcoats; bath slippers; slippers; pelerines; bath robes; soles for footwear; tee-shirts; vests; inner soles; half-boots; ski gloves; mittens; bath sandals; sandals; socks; sports socks; sweat socks; underpants; bathing trunks; trousers; water proof pants; tracksuit trousers; jogging pants; cycling pants; cloth ski bibs; sports pants; skirts; skorts; camisoles; swimsuits; beach clothes; dresses; tennis dresses; sweaters; shawls; scarfs; teddies [undergarments]; tee-shirts; loungewear; articles of clothing for casualwear; infantwear; cyclists' clothing; footwear; caps [headwear]; headgear for wear; sweatbands; headbands against sweating; headbands [clothing].

Class 27: Gymnasium mats; gymnasium mats; mats.

Class 28: Pads for use in sports; protectors for the knees for use when skateboarding (sports articles); athletic protective wrist pads for skateboarding; leg guards for sports use; athletic protective wrist pads for skating; athletic protective wrist pads for cycling; shins pads for sports use; hand protectors adapted for sporting use; wrist guards for sports use; shaped covers for ski poles; tennis racket covers; shaped covers for skis; covers (not fitted) for table tennis rackets; covers for rackets (for tennis or badminton); stationary exercise bicycles; ice skates; skating boots with skates attached; beach balls; bags especially designed for skis and surfboards; bags especially designed for skis and surfboards; golf bags, with or without wheels; swimming pools [play articles]; boxing gloves; boxing gloves; surf boards; snowboards; swimming kick boards; sailboards; bags especially designed for skis and surfboards; surfboard leashes; harness for sailboards; skateboards; bladders of balls for games; exercisers [expanders]; body-building apparatus; body-building apparatus; bar-bells; hockey sticks; hockey pucks; swimming jackets; rackets; golf clubs; rackets; golf clubs; in-line roller skates; rackets; strings for rackets; snowshoes; gut for rackets; tennis rackets; squash racket covers; squash rackets; shin guards [sports articles]; knee guards [sports articles]; wax for skis; ski bindings; sole coverings for skis; skis; surf skis; edges of skis; waterskis; ski cases; elbow guards [sports articles]; protective paddings [parts of sports suits]; balls for games; racquet balls; volley balls; European footballs; basket balls; flippers for swimming; flippers for swimming; water wings; weight lifting belts [sports articles]; boxing gloves; baseball gloves; golf gloves; boxing gloves; batting gloves [accessories for games]; golf gloves; fencing gloves; fencing gloves; football gloves; weight lifting gloves; bowling gloves; hockey gloves; water wings; ring games; roller skates; sleighs [sports articles]; nets for sports; sole coverings for skis; tables for table tennis; stationary exercise bicycles; stationary exercise bicycles; stationary exercise bicycles; punching bags; wax for skis; masts for sailboards; gut for rackets; exercise treadmills.

EUTM No 11 901 402

Class 5: Mineral food supplements; protein dietary supplements; albumin dietary supplements; enzyme dietary supplements; yeast dietary supplements; glucose dietary supplements; casein dietary supplements; pollen dietary supplements; wheat germ dietary supplements; slimming pills; medical preparations for slimming purposes; nutritional supplements; linseed oil dietary supplements; propolis dietary supplements; pollen dietary supplements; linseed dietary supplements; dietary supplements in the form of energy bars; dietary supplements in the form of energy chocolate; dietary supplements in the form of nutritional supplements, for athletes; dietary supplements in the form of protein supplements; dietary supplements in the form of protein bars; dietary supplements in the form of amino acid supplements; dietary supplements in the form of glutamine supplements; dietary supplements in the form of protein supplements; dietary supplements in the form of supplements aimed at boosting muscle weight (gainers); dietary supplements in the form of carbohydrate supplements; dietary supplements in the form of supplements aimed at reducing body fat; dietary supplements in the form of keratin supplements (containing keratin); dietary foods supplements; food, dietary and nutritional supplements; herbal dietary supplements for persons with special dietary needs; dietary supplement drinks; dietary additives; dietetic beverages adapted for medical purposes.

Class 30: Cereal bars; high-protein cereal bars; chocolate; chocolate-based beverages; countlines; cereal bars; muesli bars.

Class 43: Tourist homes; tourist homes; hotels; boarding houses; holiday camp services [lodging].

Class 44: Manicuring; manicuring services; massage; beauty salons; beauty salons; beauty salons; sanatoriums; health spa services; beauty treatments; rejuvenating treatments; spa salons.

The contested goods are the following:

Class 7: Woodworking machines; accessories and tools for woodworking machines.

Class 9: Weighing, signalling, checking (supervision) instruments; computers; computer software and computer programs, in particular for use on mobile devices; computer programs (downloadable software); control apparatus (regulators); precision measuring apparatus; programmable controllers; electronic controllers; industrial process control software; all of the aforesaid goods being for the woodworking industry and for woodworking machines.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the applicant’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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 Class 7

The contested woodworking machines; accessories and tools for woodworking machines are specific machines, accessories and tools used in the activity of making things from wood, otherwise known as carpentry or joinery. They have a very specific nature (machines, accessories, tools) purpose (to make things out of wood), method of use, distribution channels, relevant public and producers, that are not shared by any of the goods and services covered by the earlier registrations which, although distributed in many different classes, are all related to sports, travel, health, beauty or fashion. In addition, there is no relationship of complementarity or competition between the contested goods and any of the earlier goods and services.

The opponent claims that the contested goods are connected to the opponent´s goods in Classes 9, 18 and 25 since ‘most companies producing machinery also provide protective clothing or goggles/glasses, and bags and accessories are usually sold along with the machinery or products’. However, the contested goods are completely distinct also from those of the opponent in Classes 9, 18 and 25. They serve distinct purposes, have different nature and method of use. Moreover, they have different commercial origin and no relationship of complementarity or competition exists between them either. While with respect to some of the compared goods it is not excluded that in certain very specific situations they may have the same distribution channels and/or end users, however, these factors alone are not sufficient to establish similarity.

Therefore, the contested goods in Class 7 are dissimilar to all of the opponent´s goods and services.

Contested goods in Class 9

The contested computers; all of the aforesaid goods being for the woodworking industry and for woodworking machines overlap with the opponent´s portable media players. These goods are therefore identical.

The contested computer software and computer programs, in particular for use on mobile devices; computer programs (downloadable software); industrial process control software; all of the aforesaid goods being for the woodworking industry and for woodworking are similar to the opponent´s portable media players as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The remaining contested goods weighing, signalling, checking (supervision) instruments; control apparatus (regulators); precision measuring apparatus; programmable controllers; electronic controllers; all of the aforesaid goods being for the woodworking industry and for woodworking machines are specific instruments, apparatus and controllers used for woodworking. They have a very specific nature and purpose (to make things out of wood), method of use, distribution channels, relevant public and producers, that are not shared by any of the goods and services covered by the earlier registrations for the same reasons as stated above. Likewise, there is no relationship of complementarity or competition between these contested goods and any of the earlier goods and services. Therefore, these contested goods are dissimilar to all of the opponent´s goods and services.

Since there is only identity or similarity of goods regarding one of the two earlier rights that have been compared, namely European Union trade mark registration No 11 715 513, the opposition is rejected as unfounded as far as the European Union trade mark registration No 11 901 402 is concerned, since the similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR. The examination of likelihood of confusion will proceed in relation to European Union trade mark registration No 11 715 513.

b) 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 (in the case of the opponent´s goods) and at business customers in the woodworking industry with specific professional knowledge or expertise, as well as amateurs for whom woodworking is a hobby, but who also have specialised knowledge (in the case of both the opponent´s and the contested goods).

Since the goods of the earlier mark target the general and professional public and the contested goods target a professional public exclusively, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T 126/03, Aladin, EU:T:2005:288, § 81).

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	F4
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 contested sign is the verbal mark ‘F4’, while the earlier trade mark is a figurative mark consisting of the number ‘4’ followed by the letter ‘F’ in a stylised typeface. Neither the element ‘4F’ of the earlier mark nor the element ‘F4’ of the contested sign have any meaning for the relevant public and are, therefore, distinctive to an average degree.

The length of signs may influence the effect of the differences between them. The Courts have not exactly defined what a short sign is. However, signs with three or less than three letters/numbers are considered by the Office as short signs, as in the present case. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide to the extent that they are both composed of the same letter and number ‘F’ and ‘4’. However, they differ in their positioning, namely ‘4F’ in the earlier mark and ‘F4’ in the contested sign and in the stylised typeface in the earlier mark.

It is therefore considered, as the signs are short, that the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincide to the extent that they are both composed of the same letter and number ‘F’ and ‘4’. However, they differ in the order of the sounds, which are reversed.

It is therefore considered that the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the relevant public will perceive the concepts of the number ‘4’ and the letter ‘F’ in both signs, and 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.

d) 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.

According to the opponent, the earlier European Union trade mark registration No 11 715 513 has a reputation in Poland and the European Union in connection with part of the goods for which it is registered, namely the following:

Class 9: Eyeglass cases; sunglass cases; goggles for sports; swimming goggles; glacier glasses; protective helmets for sports; riding helmets; riding helmets; protection helmets for sports; crash helmets for cyclists; diving suits; teeth protectors; divers' masks; protective masks; swim masks; goggles for sports; sunglasses; snow goggles; cyclists' glasses; swimming goggles; protective goggles for diving; polarizing spectacles; sports glasses; spectacle frames; personal stereos; sleeves for laptops; speed checking apparatus for vehicles; portable media players; bags adapted for laptops; cell phone straps; speed indicators; bags for sports adapted (shaped) for protective helmets; diving suits; gloves for divers.

Class 18: Covers (bags) for sports equipment; key cases; hiking poles; travelling sets [leatherware]; travelling bags; travelling trunks; trunks [luggage]; straps for skates; beach bags; beach bags; beach umbrellas; backpacks; backpacks; bags for campers; purses; chain mesh purses; school bags; school bags; school bags; school bags; school bags; school book bags; briefcases; pouches, of leather, for packaging; travelling bags; garment bags for travel; garment bags for travel; net bags for shopping; travelling bags; shopping bags; bags; bags for sports; bum-bags; shoulder bags; suit cases; suitcase handles; cases, of leather or leatherboard; net bags for shopping; net bags for shopping; shoe bags; hiking sticks; suitcases; trunks and travelling bags; attaché cases; attaché cases; briefcases; haversacks; haversacks; sling bags for carrying infants; pouch baby carriers; leather strips; pouches, of leather, for packaging; wheeled shopping bags; bags for climbers; bags for campers; all purpose sports bags; all-purpose athletic bags; carry-on luggage; bags for hikers; rucksacks for mountaineers; pocket wallets; umbrella or parasol ribs; parasols; handbags; valises.

Class 25: Wet suits for water-skiing; ski bibs; ski suits for competition; snow boarding suits; wrist warmers; ankle warmers; hiking boots; beach shoes; beach clothes; beach shoes; underwear; anti-sweat underwear; non-slipping devices for footwear; non-slipping devices for footwear; bandanas [neckerchiefs]; brassieres; smocks; sports jumpers; hooded sweatshirts; football jerseys; track suit tops; boots; shoes; ski boots; football boots; ski boots; studs for football boots; lace boots; boots for sports; boots for snowboarding; footwear uppers; boot uppers; bathing caps; bathing caps; cap peaks; visors [headwear]; peaked headwear; wooden shoes; knitwear [clothing]; spats; galoshes; hats; rain hats; bathing trunks; pockets for clothing; smocks; swimsuits; studs for football boots; shirts; short-sleeve shirts; casual shirts; casual shirts; singlets; singlets; jackets [clothing]; parkas; water proof jackets; ski jackets; quilted coats; cagoules; stuff jacket (clothing); sports jackets; wind-cheaters; leg warmers; pants; babies' pants [clothing]; gymnastic shoes; football boots; footwear; gymnastic shoes; athletic shoes; sports shoes; shoes for casual wear; sneakers [footwear]; muffs [clothing]; gloves [clothing]; belts [clothing]; combinations [clothing]; ear muffs [clothing]; hoods [clothing]; motorists' clothing; headbands [clothing]; clothing of leather; clothing for gymnastics; clothing of imitations of leather; money belts [clothing]; waterproof clothing; outerclothing; cyclists' clothing; nightshirts; jogging tops (clothing); jogging suits (clothing); jogging sets [clothing]; denim clothing; articles of sportswear; exercise wear; footmuffs, not electrically heated; topcoats; topcoats; bath slippers; slippers; pelerines; bath robes; soles for footwear; tee-shirts; vests; inner soles; half-boots; ski gloves; mittens; bath sandals; sandals; socks; sports socks; sweat socks; underpants; bathing trunks; trousers; water proof pants; tracksuit trousers; jogging pants; cycling pants; cloth ski bibs; sports pants; skirts; skorts; camisoles; swimsuits; beach clothes; dresses; tennis dresses; sweaters; shawls; scarfs; teddies [undergarments]; tee-shirts; loungewear; articles of clothing for casualwear; infantwear; cyclists' clothing; footwear; caps [headwear]; headgear for wear; sweatbands; headbands against sweating; headbands [clothing].

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

 Document 1: Corporate documents.

 Documents 2-4: Trade mark certificates of the Polish trade mark registrations No 189 075, No 249 750 and No 265 762.

 Document 5: 4F brand presentations, which show, inter alia, Polish professional athletes wearing 4F sportswear articles and examples of advertising campaigns.

 Document 6: Statement by the opponent regarding the income generated by the sales of goods bearing the 4F trade marks in Poland in the years 2006 -2015.

 Document 7: Statement by the opponent regarding 4F shops and photographic documentation from stores opening across Poland.

 Documents 8-10: Press releases ‘4F continues to grow in Poland’, ‘Remodelling and new openings. The May sport store offensive’ and ‘A new 4F store’, all dated 04/05/2016.

 Document 11: Sample sales invoices for Europe for the period 2006-2015, showing mainly sports clothing, but also to a lesser extent goggles, bags, headwear and footwear.

 Document 12: Statement by the opponent regarding the annual turnover of the 4F online store in the years 2012, 2013 and 2014.

 Document 13: Statement by the opponent regarding the income generated by the sales of goods bearing the 4F trade marks outside Poland in the years 2006-2015.

 Document 14: Presentation of the overseas 4F brand stores in Latvia, Czech Republic, Romania, Slovakia and Serbia.

 Document 15: Press release ‘Romanian Chic with a Polish Label’ about 4F entering the Romanian market.

 Document 16: Company profile presentations of the opponent.

 Document 17: Presentation on 4F sponsorship activity and cooperation with professional athletes.

 Document 18: Sample advertising, promotional, marketing and sponsor videos all in relation to articles of sportswear (submitted in opposition proceedings B2701632 and referred to in the present proceedings).

 Document 19: Press release ‘Polish outfits at the opening ceremony of the Summer Olympic Games in Rio de Janeiro’, dated 09/08/2016.

 Document 20: Press release ‘Polish company clothes three Olympic teams’, dated 08/08/2016.

 Document 21: Video report on the Polish Olympic Team Rio de Janeiro 2016 collection event (submitted in opposition proceedings B2701632 and referred to in the present proceedings).

 Document 22: Clippings report on the Polish Olympic Team Rio de Janeiro 2016 collection.

 Document 23: Clippings report on the Latvian Olympic Team Rio de Janeiro collection.

 Document 24: Summary of the Olympic Rio de Janeiro collection media presence.

 Document 25: Press releases from 2007-2016 mentioning that the Polish Olympic Athletes are equipped by 4F.

 Document 26: Decisions of the EUIPO in cases B2701632 (14/07/2017), B2701699 (28/07/2017) and 12388C (12/12/2016) concerning reputation of the earlier mark.

 Document 27: ‘Pentagon Research’ survey report ‘Sportswear Market in Poland – 4F Brand’, dated 20/02/2015, according to which, inter alia, the spontaneous sportswear manufacturers’ brand recognition lies at 35% in Poland. The methodology that was used for the survey is provided.

 Document 28: ‘Pentagon Research’ survey report ‘Sportswear Market in Poland. 4F against its Competitors’, dated 23/04/2013, according to which, inter alia, 4F came third in top-of-mind sportswear manufacturers' brand awareness in Poland. The methodology that was used for the survey is provided.

 Document 29: Sample marketing, advertising, promotion and sponsorship invoices (sponsorship of the Polish Olympic Committee, ski jumper Adam Malzsz, ski jumper Kamil Stoch and Polish National Television).

 Document 30: Statement by the opponent on marketing, advertising and promotional expenditure for the years 2006-2014.

 Document 31: Printouts from the opponent´s Instagram profile, Youtube channel, website (4F.onet.pl).

 Document 32: 2015 report in Polish on 4F on social media.

 Document 33: Press release ‘Fashion Show for the 4F Rio Olympic Collection’, dated 05/06/2016.

 Documents 34-36: ‘4F. Start. Persevere’ (‘4F. Zacznij. Wytrwaj’) brand image campaign analysis dated February/August 2016, leaflets and Facebook reports of the campaign.

 Document 37: Press release ‘New Face of the 4F ad campaign’ referring to the ‘4F. Start. Persevere’ campaign, dated 12/07/2016.

 Document 38: ‘Players of the Year 2015’ ranking by Forbes magazine.

 Document 39: List of the 2015/2016 Superbrands, according to which 4F is listed as the ‘created in Poland Superbrand’ in the field of sports fashion articles.

 Document 40: Fashion retailer of the Year 2015 certificate.

 Document 41: Nomination for the Polish President’s Economic Award in the National Success category (November 2016), Award in the Polish Brand category presented by business daily paper (October 2016).

 Document 42: Winter and summer product catalogues from the years 2006-2014, showing sports clothing, headgear and goggles.

 Document 43: Sample sales invoices for the years 2006-2015 in Poland, showing mainly sports clothing, but also to a lesser extent goggles, bags and headwear.

 Document 44: Google analytics data on the 4F online store visits in the years 2012, 2013 and 2014.

 Document 45: Promotional spots of 4F Brand (Olympic Games London 2012) (submitted in opposition proceedings B2701632 and referred to in the present proceedings).

 Document 46: Affidavits issued by the Olympic Committees of Poland, Croatia and Latvia regarding sponsorship by the opponent using the earlier mark.

 Document 47: Screenshots from the opponent´s website and from the Olympic Committee´s website dated 2017 showing athletes wearing clothing bearing the earlier mark.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market.

The independent articles on the past and ongoing sponsorship of Polish Olympic athletes and the prizes awarded to the opponent, in combination with the rest of the evidence, sale figures, the marketing expenditure and the brand awareness shown in the surveys, all unequivocally show that the European Union trade mark No 11 715 513 enjoys a high degree of recognition among the relevant public in Poland for articles of sportswear in Class 25.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to articles of sportswear and to items belonging to this category, namely sports shorts, sports shirts, clothing for skiing, jackets. There is no or little reference to the remaining goods, such as non-sports related fashion items in Class 18 or 25, or articles and equipment in Class 9. This is clear, for example, from the submitted invoices showing the sale of the opponent’s articles of sportswear and from the press clips and advertisements, where only the former are mentioned.

Therefore, it is clear that the earlier mark has a highly distinctive character because of the recognition it possesses on the market in Poland for sporting clothing in Class 25. The earlier mark has a normal degree of distinctiveness as regards the remaining goods and services on which the opposition is based, and most importantly, as regards the portable media players found to be identical or similar to some of the contested goods.

e) Global assessment, other arguments and conclusion

In the present case, the goods were found to be partly identical, partly similar and partly dissimilar. Although the earlier mark was found to have reputation for certain goods in Poland, the goods found to be identical or similar to the contested goods are not reputed, and therefore for these goods the earlier mark has a normal degree of distinctiveness. The degree of attention of the relevant public, made up of both the general and specialised public, may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

It has also been concluded that the signs are visually similar only to a low degree, while conceptually and aurally they are similar to an average degree.

The signs in dispute are short marks and the stylisation of the signs has a big impact on their comparison. The visual overall impression of the signs may be different when two conflicting signs, albeit containing or consisting of the same combination of two-letters, are stylised in a different way or contain a different figurative element, so that their different overall graphical representation eclipses the common verbal element.

In this case, only the earlier sign is stylised, however this is sufficient to lead to a finding that the signs are visually similar to only a low degree, bearing also in mind that although they consist of the same two letters/numbers, those letters/numbers are in reverse order.

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).

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 low degree of visual similarity between the signs can be offset in the present case by the identity or similarity between the goods, leading to a finding of likelihood of confusion for these goods.

The opponent 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous cases referred to by the opponent (B 2701699, B 2701632 and C 12388) are not relevant to the present case as the remaining goods have been found to be dissimilar. Therefore, the opponent’s argument is to be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 715 513.

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 earlier European Union trade mark registration No 12 672 044 for the figurative mark and earlier European Union trade mark registration No 12 848 057 for the figurative mark .

However, the outcome cannot be different in respect of these earlier marks, since European Union trade mark registration No 12 672 044 for the figurative mark is less similar to the contested mark, because it is composed of a highly stylised figurative element in which it is difficult to discern any number or letter clearly, and European Union trade mark registration No 12 848 057 for the figurative mark covers the same or a narrower scope of the goods and services (with the sole exception of tarpaulins in Class 22, which are clearly dissimilar to all the contested goods in Classes 7 and 9 as they do not coincide in any criteria). Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier European Union trade mark No 11 715 513 for the figurative mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation and enjoys a high degree of recognition among the relevant public in Poland for part of goods for which the opponent has claimed reputation, namely articles of sportswear in Class 25.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The goods for which reputation was proven are the following:

Class 25: Articles of sportswear.

The remaining contested goods are the following:

Class 7: Woodworking machines; accessories and tools for woodworking machines.

Class 9: Weighing, signalling, checking (supervision) instruments; control apparatus (regulators); precision measuring apparatus; programmable controllers; electronic controllers; all of the aforesaid goods being for the woodworking industry and for woodworking machines.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)

The Opposition Division considers that there is no obvious link with the reputed goods articles of sportswear of the earlier mark and the contested goods. In particular, the contested goods are rather specialised goods and are very removed from the earlier reputed ones. Also, they are rendered in distinct and differentiated areas, namely in sports shops on one hand and in hardware/woodworking/DIY stores on the other. The later mark is unlikely to bring the earlier mark to the mind of the relevant public, even if the relevant section of the public for the goods covered by the conflicting marks overlaps insofar as the specialised relevant public of the contested goods - by definition - is also part of the general public, which constitutes the relevant public of the opponent’s goods for which the earlier mark enjoy a reputation. Moreover, the opponent was unable to provide any good reason or convincing arguments why the relevant public targeted by the contested sign would make a connection with the earlier mark.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

Therefore, the opposition is not well founded under Article 8(5) EUTMR and the opposition must be rejected in its entirety.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Begoña URIARTE VALIENTE

Helen Louise MOSBACK

Maria del Carmen COBOS PALOMO

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.