OPPOSITIONS No B 2 962 523 and B 2 962 705

Adidas AG, Adi-Dassler-Str. 1, 91074, Herzogenaurach, Germany and Adidas International Marketing B.V., Atlas Arena, Afrika Building Hoogoorddreef 9a, 1101 BA Amsterdam ZO, Netherlands (opponents) represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Manufacturas Clima S.A., Calle Dos de Mayo 195, 08013 Barcelona, Spain (applicant), represented by Sugrañes Patentes y Marcas, Calle de Provenza 304, 08008 Barcelona, Spain (professional representative).

On 29/01/2019, the Opposition Division takes the following

DECISION:

1. Oppositions No B 2 962 523 and B 2 962 705 are upheld for all the contested goods, namely

Class 25: Clothing; footwear; headgear; rainproof clothing; aqua shoes; waterproof capes; rainproof jackets; waterproof thermal headgear; waterproof trousers; rainproof clothing; weatherproof clothing.

2. European Union trade mark application No 16 746 505 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 940.

REASONS

The opponents filed oppositions against some of the goods of European Union trade mark application No 16 746 505 , namely against all the goods in Class 25. The opposition are based on, inter alia, European Union trade mark registration No 11 784 246 CLIMAHEAT. The opponents invoked Article 8(1)(b) and Article 8(5) EUTMR.

Preliminary Remarks — Joinder of Proceedings

On 29/01/2018 the opponents requested to join the proceedings of oppositions No B 2 962 523 and B 2 962 705.

Pursuant to Article 9(1) EUTMDR,

where a number of oppositions have been entered in respect of the same application for the registration of an EU trade mark, the Office may examine them in one set of proceedings. The Office may subsequently decide to examine those oppositions separately.

The oppositions in question fulfil the relevant requirements, since they are directed against the same EUTM application and there is an economic link between the opponents, which have the same representative. Therefore, the Opposition Division has joined the opposition proceedings.

For procedural economy reasons the Opposition Division will further use the singular form ‘opponent’ when refereeing to both opponents.

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 are based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the oppositions in relation to the opponent’s European Union trade mark registration No 11 784 246 ‘CLIMAHEAT’.

a) The goods

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

Class 25: Clothing, footwear, headgear; non-slipping devices for footwear; layettes [clothing]; babies’ pants [clothing]; bath robes; bathing caps; swimsuits; bath sandals; bath slippers; bandanas [neckerchiefs]; berets; leg warmers; brassieres; smocks; boas [necklets]; teddies [undergarments]; furs [clothing]; collar protectors; shoulder wraps; bodices [lingerie]; outerclothing; footwear uppers; hosiery; suspenders; hoods [clothing]; belts [clothing]; ready-made clothing; corselets; neckties; shower caps; esparto shoes or sandals; gabardines [clothing]; knitwear [clothing]; money belts [clothing]; hat frames [skeletons]; clothing for gymnastics; gymnastic shoes; heels; scarfs; gloves [clothing]; combinations [clothing]; shirts; short-sleeve shirts; heelpieces for stockings; heelpieces for footwear; hats; paper hats [clothing]; top hats; headbands [clothing]; headgear for wear; fittings of metal for footwear; inner soles; shirt yokes; jackets [clothing]; stocking suspenders; stuff jackets [clothing]; jerseys [clothing]; dresses; skull caps; dressing gowns; chasubles; motorists’ clothing; clothing; clothing of imitations of leather; clothing of leather; paper clothing; cap peaks; wooden shoes; camisoles; corsets [underclothing]; breeches for wear; half-boots; suits; stockings; garters; boots; boot uppers; ascots; leggings [trousers]; liveries; detachable collars; cuffs; maniples; coats; mantillas; miters [hats]; muffs [clothing]; caps [headwear]; tips for footwear; wimples; studs for football boots; pants; underwear; singlets; slips [undergarments]; petticoats; ear muffs [clothing]; jumper dresses; topcoats; galoshes; trousers; slippers; tights; parkas; pelisses; shirt fronts; pocket squares; ponchos; pullovers; pyjamas; waterproof clothing; lace boots; skorts; skirts; sandals; saris; sarongs; footwear; shoes; welts for footwear; aprons [clothing]; pelerines; shawls; sashes for wear; ski gloves; ski boots; sleep masks; bibs, not of paper; underpants; spats; veils [clothing]; socks; sock suspenders; dress shields; gaiter straps; boots for sports; sports shoes; girdles; fur stoles; beach clothes; beach shoes; sweaters; tee-shirts; togas; sweat-absorbent stockings; anti-sweat underwear; turbans; uniforms; masquerade costumes; vests; fishing vests; ready-made linings [parts of clothing]; football boots; footmuffs, not electrically heated; mittens; wet suits for water-skiing; cyclists’ clothing; pockets for clothing; soles for footwear; visors [headwear]; bathing trunks.

The contested goods are the following:

Class 25: Clothing; footwear; headgear; rainproof clothing; aqua shoes; waterproof capes; rainproof jackets; waterproof thermal headgear; waterproof trousers; rainproof clothing; weatherproof clothing.

Clothing; footwear; headgear are identically contained in both lists of goods.

The contested rainproof clothing (repeated twice) and weatherproof clothing are synonyms of the opponent’s waterproof clothing. Therefore, they are identical.

The contested waterproof trousers; waterproof capes; rainproof jackets are included in the broad category of the opponent’s waterproof clothing. Therefore, they are identical.

The contested aqua shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested waterproof thermal headgear is included in the broad category of the opponent’s headgear. Therefore, they are identical.

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 are mainly directed at the public at large. The degree of attention is considered to be average.

c) The signs

CLIMAHEAT
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

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

The signs’ coinciding element ‘CLIMA’ is meaningful in certain territories, for example in those countries where English, Italian or Spanish (given the similarity with the corresponding English word ‘climate’) are understood. In those countries it will be perceived, inter alia, with the meaning of ‘weather condition’. In addition, the earlier trade mark ‘CLIMAHEAT’ might be perceived by the English-speaking consumers as a combination of the words ‘clima’ (with the meaning described above) and ‘heat’, namely ‘to make warm or hot’. Since these meanings may affect the distinctiveness of the signs, it is appropriate to focus the comparison of the marks on the part of the public for which the word ‘CLIMA’ and ‘HEAT’ do not convey any particular meaning, such as for the Polish-speaking part of the public; where the likelihood of confusion may be higher.

As the verbal elements ‘CLIMAHEAT’ of the earlier mark and ‘CLIMA’ of the contested application have no meaning for the relevant public, they are distinctive.

Conversely, the element ‘COLOURS’ of the contested sign will be associated by the relevant public with the ‘tonality of something’ as this element is very close to the equivalent words in the official languages of the relevant territory, such as ‘kolor’ in Polish. Bearing in mind that the relevant goods are garments, this element is non-distinctive for all the goods since it merely describes their coloured nature.

The element CLIMA in the contested sign is the dominant element as it is the most eye-catching.

The verbal elements of the contested sign are included in a black octagon. 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).

For the assessment of the visual and aural similarity of the marks in question, it must be borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the letters ‘CLIMA’. However, they differ in the last four letters ‘HEAT’ of the earlier trade mark and in the contested sign’s word ‘colours’ as well as in its graphical element and stylisation.

Therefore, taking into account the above principles and assertions on the distinctiveness and dominance of the signs’ elements, they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘CLIMA’. However, the pronunciation differs between the sound of the last four letters ‘HEAT’ of the earlier trade mark and the sound of the contested sign’s word ‘colours’.

Therefore, taking into account the above principles and assertions on the distinctiveness and dominance of the signs’ elements, they are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the descriptive element ‘colours’ of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case the goods are identical. They target the general public, who will pay an average degree of attention.

The signs in conflict are visually and aurally similar to an average degree while not conceptually similar. In particular, the contested sign’s distinctive and dominant verbal component ‘CLIMA’ is entirely reproduced in the first five letters of the earlier trade mark.

Taking all of the above into account, the differences between the signs — which only lie in the last four letters HEAT of the earlier trade mark and in the contested sign’s less relevant graphical element and its secondary and descriptive component ‘colours’ — are clearly not sufficient to outweigh the visual and aural similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical goods are likely to think that they come from the same undertaking or from economically linked undertakings.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the term ‘CLIMA’. In support of its argument the applicant refers to several trade mark registrations in European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘CLIMA’. Under these circumstances, the applicant’s claims must be set aside.

The applicant also 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.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings as they refer to the degree of distinctiveness of term such as ‘ESPRESSO’, ‘GLUCO’ and ‘PLUS’, which are not part of the signs at issue.

Considering all the above, there is a likelihood of confusion on the part of the public for which the word ‘CLIMA’ and ‘HEAT’ do not convey any particular meaning, such as for the Polish-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.

Therefore, the oppositions are well founded on the basis of the opponent’s European Union trade mark registration No 11 784 246. It follows that the contested trade mark must be rejected for all the contested goods.

Since the oppositions are successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 11 784 246 leads to the success of the oppositions and to the rejection of the contested trade mark for all the goods against which the opposition were 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).

Since the opposition are fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the oppositions, namely Article 8(5) EUTMR.

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. In the case of a joinder under Article 9(1) EUTMDR, where the oppositions are successful, the Office will fix both opposition fees (one for each opposition) but only one representation fee.

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

Andrea VALISA

Aldo BLASI

Edith Elisabeth VAN DEN EEDE

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.