OPPOSITION No B 3 015 628

Gym-Mark, Inc., 500 Howard Street, 94105, San Francisco, United States (opponent), represented by Bristows LLP, 100 Victoria Embankment, EC4Y 0DH, London, United Kingdom (professional representative)

a g a i n s t

Fitzen s.r.o., Thámova 166/18, 18600 Praha 8, Czech Republic (applicant), represented by Kamil Kolátor, Dobiášova 1264/29, 46006 Liberec, Czech Republic (professional representative).

On 04/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 015 628 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 077 116 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 077 116 for the word mark ‘GYMBEE’. The opposition is based on, inter alia, European Union trade mark registrations No 10 192 301 and No 417 378 for the word mark ‘GYMBOREE’. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR in relation to these earlier rights. In relation to the remaining earlier rights the opponent invoked also Articles 8(1)(b) and 8(4) 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 EUTM registrations No 10 192 301 and No 417 378.

a) The goods and services

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

EUTM registration No 10 192 301 for the word mark ‘GYMBOREE’:

Class 9: Computer software; computer application software for mobile phones and remote devices, namely, software for use in downloading, playing and reviewing audio, text and other digital content in the field of infant and child development, education and entertainment; magnetically encoded prepaid debit cards, stored value cards, loyalty cards, gift cards and credit cards; consumer coupons downloaded from a global computer network.

Class 35: Advertising; business management; business administration; office functions; promoting the goods and services of others by placing advertisements and promotional displays on an electronic site accessible through a computer network; providing on-line retailing services and on-line ordering services in the fields of clothing, accessories for clothing, sunglasses, toys, bags, books and pre-recorded CD’s and DVD’s; mail order catalogue services in the fields of clothing, accessories for clothing, sunglasses, toys, bags, books and pre-recorded CD’s and DVD’s; computer on-line ordering services in the fields of clothing, accessories for clothing, sunglasses, toys, bags, books and pre-recorded CD’s and DVD’s; organization, administration, operation and management of a customer loyalty, incentive, reward, gift and/or frequent buyer program; administration of a program for enabling participants to, obtain rebates, savings and discounts on merchandise for the purpose of promoting and rewarding loyalty; providing incentive award programs for customers through the distribution of prepaid stored value cards; providing incentive award programs for customers through the issuance and processing of loyalty coupons for frequent use of participating businesses; retail store services in the field of clothing and featuring a bonus incentive program for customers; advertising, marketing and promotional services in the field of clothing and accessories; business consulting services in the field of clothing, accessories, and children's educational and entertainment services; assistance in the running of businesses, consultations for the running of businesses, advice on the organization and running of businesses.

Class 42: Non-downloadable computer application software for mobile phones and remote devices, namely, software for use in downloading, playing and reviewing audio, text and other digital content in the field of infant and child development, education and entertainment.

EUTM registration No 417 378 for the word mark ‘GYMBOREE’:

Class 25: Clothing, footwear, headgear.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 41: Education: providing of training; entertainment; sporting and cultural activities.

The contested goods and services are the following:

Class 9: Computer software; Internet servers; Application software, Application software for mobile phones, Multi-media applications; Telecommunications software, software in the form of mobile device applications for receiving, transmitting and displaying data; Software for displaying and sharing the location of users and searching, detecting and interacting with other users and locations, computer applications software, namely downloadable mobile applications for smartphones for developing social networks using data based on locations; software for use in mobile marketing; Data processing apparatus and computers; Computer programs, recorded, Computer programs (downloadable software); Electronic publications.

Class 25: Clothing; Footwear; Athletics shoes; headgear; Finished garments (ready-made clothing), women's, children's and men's; Underwear, outerwear, sportswear; Swimming costumes; Underwear; Gloves [clothing], Tee-shirts; Vest tops; Shirts; Sweaters.

Class 28: Exercisers [expanders]; Appliances for gymnastics; Body-building apparatus and articles; Fitness exercise machines; Balance boards; Gymnastic and; Stationary exercise bicycles, Stationery exercise bicycles; Sports exercise equipment; Hanggliders; Punching bags; Bar-bells; Gymnastic and sporting goods; Components of body-building apparatus and fitness equipment and apparatus for physical exercise; Gymnastic and sporting articles and aids; Balls for games and gymnastics; Lightweight stretch sports mats; Relaxation and exercise mats; Sporting equipment included in this class for sports facilities, gymnasiums, body-building gyms, fitness centres, aerobics centres, spinning centres and swimming facilities; Shock absorbtion pads for protection against injury [sporting articles].

Class 41: Providing classes in the fields of fitness, exercise, and nutrition; Providing information via websites featuring information relating to exercise and physical fitness; Providing online training and information for course participants in the fields of fitness, exercise and nutrition; providing online training and information for exercise and fitness instructors in the field of fitness and exercise instruction methods; Physical fitness courses and instruction; Individual and group fitness training, individual and group physical fitness training; Personal trainer services; Fitness studios; Providing, arranging and conducting workshops, seminars and camps in the field of fitness and exercise; Providing fitness and sporting facilities for general physical fitness; Training of sports teachers; Sports camp services, Tuition in sports, Lecturing, Consultancy and providing information in the field of sports; Arranging and conducting educational, cultural and social events; Arranging and organization of sporting events and races; Arranging the providing of training and prevention in the field of healthy lifestyles and weight loss; Arranging weight-loss fitness courses and exercises; Organisation of training courses, seminars and conferences; Physical fitness centres; Operating sports and physical training facilities of all kinds; Brokering of information relating to sporting events; Management of sports clubs; Provision of facilities for tuition; Leasing and rental of sporting articles; Provision of apparatus for exercise.

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

the term ‘namely’, used in the applicant’s and opponent’s list of goods in Class 9 to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 9

The contested Computer software is identically mentioned in the opponent’s specification of the earlier EUTM registration No 10 192 301.

Likewise, the contested Application software for mobile phones; Multi-media applications; Telecommunications software, software in the form of mobile device applications for receiving, transmitting and displaying data; Software for displaying and sharing the location of users and searching, detecting and interacting with other users and locations, computer applications software, namely downloadable mobile applications for smartphones for developing social networks using data based on locations; software for use in mobile marketing overlap with the opponent’s computer application software for mobile phones and remote devices, namely, software for use in downloading, playing and reviewing audio, text and other digital content in the field of infant and child development, education and entertainment of the earlier EUTM registration No 10 192 301. Therefore, these goods are identical.

Software, or computer software, is an all-encompassing term that is used in contrast to hardware, which are the tangible components of a computer. It means that everything else in a computer that is not hardware is software.

The contested internet server is also called web server and it refers to server software, or hardware dedicated to running said software. A web server processes incoming network requests over HTTP and several other related protocols.

Therefore, the contested Internet servers; Application software; Computer programs, recorded, Computer programs (downloadable software) overlap with the broad category of or overlap with the opponent’s Computer software of the earlier EUTM registration No 10 192 301. Consequently, these goods are identical.

The contested Data processing apparatus and computers are similar to the opponent’s Computer software of the earlier EUTM registration No 10 192 301, as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The remaining contested Electronic publications are similar to the opponent’s Computer software of the earlier EUTM registration No 10 192 301, as they usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

Contested goods in Class 25

The contested clothing, footwear, headgear are identically mentioned in the opponent’s specification of the earlier EUTM registration No 417 378.

The contested Finished garments (ready-made clothing), women's, children's and men's; Underwear, outerwear, sportswear; Swimming costumes; Underwear; Gloves [clothing], Tee-shirts; Vest tops; Shirts; Sweaters are included in the opponent’s clothing of the earlier EUTM registration No 417 378. Therefore, they are identical.

The remaining Athletics shoes are included in the broad category of the opponent’s footwear of the earlier EUTM registration No 417 378. Consequently, they are identical.

Contested goods in Class 28

The contested Exercisers [expanders]; Appliances for gymnastics; Body-building apparatus and articles; Fitness exercise machines; Balance boards; Gymnastic and; Stationary exercise bicycles, Stationery exercise bicycles; Sports exercise equipment; Hanggliders; Punching bags; Bar-bells; Gymnastic and sporting goods; Gymnastic and sporting articles and aids; Balls for games and gymnastics; Lightweight stretch sports mats; Relaxation and exercise mats; Sporting equipment included in this class for sports facilities, gymnasiums, body-building gyms, fitness centres, aerobics centres, spinning centres and swimming facilities; Shock absorbtion pads for protection against injury [sporting articles] are included in the broad category of the opponent’s gymnastic and sporting articles not included in other classes of the earlier EUTM registration No 417 378. Therefore, they are identical.

The remaining Components of body-building apparatus and fitness equipment and apparatus for physical exercise are similar to the opponent’s gymnastic and sporting articles not included in other classes of the earlier EUTM registration No 417 378. The contested goods are often produced and/or sold by the same undertaking that manufactures the end product and target the same purchasing public, as in the case of spare or replacement parts. In the present case, the public may also expect the components to be produced by, or under the control of, the ‘original’ manufacturer, which is a factor that suggests that the goods are similar.

Contested services in Class 41

The contested Providing classes in the fields of fitness, exercise, and nutrition; Providing information via websites featuring information relating to exercise and physical fitness; Providing online training and information for course participants in the fields of fitness, exercise and nutrition; providing online training and information for exercise and fitness instructors in the field of fitness and exercise instruction methods; Physical fitness courses and instruction; Individual and group fitness training, individual and group physical fitness training; Personal trainer services; Providing, arranging and conducting workshops, seminars and camps in the field of fitness and exercise; Training of sports teachers; Tuition in sports, Lecturing; Arranging and conducting educational events; Arranging the providing of training and prevention in the field of healthy lifestyles and weight loss; Organisation of training courses, seminars and conferences; Provision of facilities for tuition are included in the broad category of the opponent’s Education: providing of training of the earlier EUTM registration No 417 378. Consequently, they are identical.

The contested Arranging and conducting cultural and social events overlap with the opponent’s cultural activities of the earlier EUTM registration No 417 378. These services are identical.

The contested Fitness studios; Providing fitness and sporting facilities for general physical fitness; Sports camp services; Consultancy and providing information in the field of sports; Arranging and organization of sporting events and races; Arranging weight-loss fitness courses and exercises; Physical fitness centres; Operating sports and physical training facilities of all kinds; Brokering of information relating to sporting events; Management of sports clubs; Leasing and rental of sporting articles; Provision of apparatus for exercise overlap with the broad category of the opponent’s sporting activities of the earlier EUTM registration No 417 378. 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 and services found to be identical or similar are directed at the public at large and the professional public, for some services in Class 41 (Training of sports teachers). The degree of attention of the relevant public is normal.

c) The signs

EUTM registration No 10 192 301

EUTM registration No 417 378

GYMBOREE	GYMBEE
Earlier trade marks	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 Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the EU for which the verbal elements at issue are meaningless, such as the Polish-, Portuguese- and Bulgarian-speaking parts of the public, as it considers that this increases the likelihood of confusion between the signs.

The conflicting marks are word marks. As mentioned above, they are meaningless for the relevant parts of the public.

Visually and aurally, the signs coincide in the majority of their letters, namely, ‘G-Y-M-B-*-*-E-E’, which include their respective beginnings and this factor will have a greater impact on the relevant public. Furthermore, the signs also share their endings ‘E-E’. They only differ in two letters ‘O’ and ‘R’ of the earlier marks, which are placed in the middle of the sign.

The consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. Bearing in mind the coincidence in their beginnings, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a 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.

d) Distinctiveness of the earlier marks

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 marks have been extensively used and enjoy 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 marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks 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 on numerous elements and, in particular, 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 (recital 11 of the EUTMR). 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).

The goods and services are identical and similar. The earlier marks enjoy an average degree of distinctiveness.

The conflicting signs are visually and aurally similar to a high degree. Neither of them has any meaning and hence, the conceptual aspect does not influence the assessment of the similarity of the signs.

The signs in dispute coincide in the majority of their letters in particular, their respective beginnings are identical. This fact will have a greater impact on the relevant public when assessing a likelihood of confusion in the present case, as mentioned above. Furthermore, the signs coincide also in their endings. The difference between the signs is limited to two letters, namely ‘O’ and ‘R’ of the earlier marks, however this fact alone is not sufficient to overweigh the coincidence in the rest of the letters placed in identical position within the signs. Moreover, the differing letters are placed in the middle of the earlier marks, where the attention of the relevant public is not normally focused.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

Therefore, the Opposition Division considers that the visual and aural similarities between the signs are sufficient to lead to a likelihood of confusion between the marks for the Polish-, Portuguese- and Bulgarian-speaking parts of the public in relation to identical and similar goods and services. This conclusion is equally valid for the professional public (for some services in Class 41) that will display a normal degree of attentiveness in relation to the goods and services at issue. 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.

In its observations, the applicant argues that the element ‘GYM’ has no differentiating ability in the conflicting signs, and, therefore, it has a low distinctive character given that many trade marks include this element. Furthermore, the applicant claims that the relevant public will focus more on the remaining elements of the signs, namely ‘BOREE’ of the earlier marks and ‘BEE’ of the contested sign. In support of its arguments the applicant refers to several EU trade mark registrations: ‘GYMBIT’, ‘GYMBA’, ‘GYMBOX’, etc. As mentioned above, the present opposition has been analysed in relation to the Polish-, Portuguese- and Bulgarian-speaking parts of the public that will not extract the element ‘GYM’ from the remaining elements of the signs, ‘BOREE’ and ‘BEE’, as there is no logical reason to do so but rather perceive the signs in their totality.

Furthermore, 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 ‘GYM’. Under these circumstances, the applicant’s claims must be set aside.

Moreover, as argued by the applicant, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (judgment of 03/09/2009, C-498/07P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (judgment of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved. Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Consequently, taking into account the aforementioned, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 10 192 301 and No 417 378.

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

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

As the earlier European Union trade mark registrations No 10 192 301 and No 417 378 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Articles 8(4) and 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.

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

Gueorgui IVANOV

Monika CISZEWSKA

Jakub MROZOWSKI

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.