OPPOSITION No B 2 948 480

Sik Makas Giyim Sanayi Ve Ticaret Anonim Sirketi (TR), Evren Mah. Gülbahar Cad. Gültepe Sk. No.7 Günesli, 34540 Istanbul, Turkey (opponent), represented by Pfenning, Meinig & Partner mbB, Joachimsthaler Str. 10-12, 10719 Berlin, Germany (professional representative)

a g a i n s t

Functional Training Technologies Corporation Ltd., 58 High Street London, Wimbledon SW19 5EE, United Kingdom (applicant).

On 16/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 948 480 is upheld for all the contested goods, namely:

Class 25: Clothing; footwear; headgear.

2. European Union trade mark application No 16 722 522 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 722 522 ‘ECross’ (word mark) namely against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 3 751 691 ‘CROSS JEANS’ (word mark). 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 European Union trade mark registration No 3 751 691 ‘CROSS JEANS’.

1. The goods

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

Class 25: Denim clothing, sportswear, belts, shoes, footwear (included in Class 25), headgear.

The contested goods are the following:

Class 25: Clothing; Footwear; Headgear.

Headgear and footwear are identically included in both lists of goods.

Moreover, the contested clothing includes, as a broader category, the opponent’s denim clothing and sportswear. As the Opposition Division cannot dissect ex officio the broad category of the contested goods, these goods are considered 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 displaying an average degree of attention (16/10/2013, zoo sport, EU:T:2013:531, § 42, confirmed by 15/07/2014, C‑675/13 P, zoo sport, EU:C:2014:2079).

3. The signs

CROSS JEANS	ECross
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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.

The marks under comparison consist of elements that are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

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).

From the outset, it is noted that the marks being word marks, their representation in upper or lower cases letters is irrelevant.

The earlier mark consists of two words ‘CROSS’ and ‘JEANS’.

The element ‘CROSS’ refers inter alia, in English, to a shape that consists of a vertical line or piece with a shorter horizontal line or piece across it. Since it has no exact meaning in relation to the goods in question, it is distinctive, as the opponent rightly argues.

The element ‘JEANS’ designates the cotton fabric known as ‘denim’. As it is descriptive of the (combined) material of which the denim clothing; sportswear, belts, shoes, footwear (included in class 25), headgear for which the earlier mark is registered are or could be made (18/05/2016, R 1777/2015-2, JEANS ONLY (fig.) / ONLY; 10/11/2011, R 1022/2010-2 AMICIJEANS (fig.) / AMICHI (fig.) and others, § 19; 14/09/2000, R 0153/2000-1, ONLY JEANS WEAR, § 12; and, by analogy, 13/07/2004, T‑115/03, Gas Station, EU:T:2004:236, § 34), it lacks any distinctive character in relation to the goods in question.

It follows from the above that ‘CROSS’ is the most distinctive element of the earlier mark.

The contested sign is a word mark consisting of a single element, which, however, is very likely to be dissected into two elements, namely, the letter ‘E’ and the word ‘CROSS’. As regards the letter ‘E’, the opponent claims that it is commonly used to denote functional articles of clothing, footwear and headgear that are able to have electronics embedded in them, so that it is descriptive of the goods in question. In support of this argument, reference is made to an article dealing with e-textiles, published on Wikipedia (https://en.wikipedia.org/wiki/E-textiles).

However, such meaning of the letter ‘E’ in relation to clothing, footwear and/or headgear is not so common as to allow the conclusion that a significant part of the public will understand it as indicating that the goods in question contain electronic components and, consequently, the consumers will not perceive it as descriptive or even allusive of one of their characteristics. As a result, its distinctiveness must be seen as average.

The word ‘CROSS’ is also, as stated above, distinctive in relation to these goods.

Therefore, the contested sign has no element that could be considered clearly more distinctive than others.

Visually, the signs coincide in the distinctive word element ‘CROSS’. However, they differ in the letter ‘E’, in their respective arrangements, namely in the position of the element ‘CROSS’ that the signs have in common, which is placed in the first position in the earlier mark but in the second position in the contested sign.

Bearing in mind what has been said above regarding the most distinctive and dominant elements of the signs, it is considered that the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the word ‘CROSS’, present identically in both signs. It differs in the sound of the word ‘JEANS’ of the earlier mark and the letter ‘e’ of the contested sign.

Bearing in mind that the element ‘JEANS’ of the earlier mark will not be given any trade mark significance and that the element ‘CROSS’, that the signs have in common, is distinctive, the marks have at least an average degree of aural similarity.

Conceptually reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are similar to the extent that both convey the concept of ‘CROSS’. Moreover, in view of its lack of distinctiveness, the element ‘JEANS’ of the earlier mark will not be given any trade mark significance and, consequently, has no influence on the comparison of the signs from the conceptual point of view. Finally, except for the residual part of the public that might perceive the letter ‘e’ as a reference to electronics, this element of the contested sign does not convey any concept beyond that of the fifth letter of the Latin alphabet. As a result, in any event, it is considered that it does not offset the conceptual similarity conveyed by the element ‘CROSS’ that the signs have in common.

Therefore, the signs are at least conceptually similar to a high 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 relevant public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a descriptive and non-distinctive element for the relevant goods in the mark as stated above in section c) of this decision.

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

In the present case, the goods in question are identical and the earlier mark enjoys an average degree of distinctiveness. The signs in conflict have been found to have visually an average degree of similarity, phonetically at least an average degree of similarity and conceptually to have a high degree of similarity.

Taking into account all the above and in particular the fact that the marks coincide in the distinctive element ‘CROSS’, it is considered that the differing elements are not capable of dispelling a likelihood of confusion between the marks in question.

Indeed, the element ‘jeans’ will not be given any trade mark significance. Moreover, the letter ‘e’ of the contested sign alone cannot counteract the visual, aural and conceptual similarities between the signs provided by the coinciding distinctive element ‘CROSS’, and serve to exclude a likelihood of confusion in the context of identical goods.

Taking account 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), it is considered highly conceivable that the relevant consumer, displaying in the present case an average degree of attention, could perceive the contested mark as a sub-brand, or a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Therefore, there is a likelihood of confusion, at least on the part of the English-speaking part 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.

It follows that the contested trade mark must be rejected for all the contested goods.

As the opposition as based on the earlier European Union trade mark registration No 3 751 691 leads to the success of the opposition in its entirety and to the rejection of the contested trade mark for all of the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Nicole CLARKE

Marine DARTEYRE

Julie, Marie-Charlotte HAMEL

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.