OPPOSITION No B 3 049 842

Jan Budde, Dorfstraße 11, 25462 Rellingen, Germany (opponent), represented by Glawe, Delfs, Moll, Rothenbaumchaussee 58, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Dongguan Woxiu Trading Co. Ltd, R703, Wanke Building,Hongqi Road,Nancheng District, Dongguan City,Guangdong Province, People’s Republic of China (applicant), represented by Arpe Patentes y Marcas S.L., C/Proción 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative).

On 25/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 842 is partially upheld, namely for the following contested goods:

Class 25: Shirts; Short-sleeve shirts; Knitwear [clothing]; Layettes [clothing]; Infants' shoes; Clothing; shoes; Boots; Lace boots; Sports Shoes; Mountaineering shoes; rainshoes; Caps [headwear]; Stockings; Gloves [clothing]; Scarfs; bow ties; Belts [clothing]; clothing; Shower caps; Sleep masks.

2. European Union trade mark application No 17 619 024 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 17 619 024 ‘Amy Attack’ (word). The opposition is based on, inter alia, international trade mark registration No 1 301 835 designating the European Union ‘ATTACK’ (word). The opponent invoked Article 8(1)(a) and (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 international trade mark registration No 1 301 835 designating the European Union.

a) The goods

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

Class 25: Clothing, footwear, headgear; all the aforementioned goods also for use in sports, in particular gloves for gymnastics.

Class 28: Articles for gymnastics and sports.

The contested goods are the following:

Class 25: Shirts; Short-sleeve shirts; Knitwear [clothing]; Layettes [clothing]; Infants' shoes; Clothing; shoes; Boots; Lace boots; Sports Shoes; Non-slipping devices for footwear; Mountaineering shoes; rainshoes; Caps [headwear]; Stockings; Gloves [clothing]; Scarfs; bow ties; Belts [clothing]; clothing; Shower caps; Sleep masks.

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

The term ‘in particular’ and, by analogy the term ‘also’, used in the opponent’s list of goods, indicate that the specific goods (goods also for use in sports, in particular gloves for gymnastics) are only examples of items included in the category clothing, footwear, headgear and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Moreover, 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.

Thus, the contested shirts; short-sleeve shirts; knitwear [clothing]; layettes [clothing]; clothing; stockings; gloves [clothing]; scarfs; bow ties; belts [clothing]; clothing; sleep masks are identical to the opponent’s clothing, either because they are identically included in both lists, or because the contested goods are included in the broad category of the opponent’s clothing.

Likewise, the contested infants' shoes; shoes; boots; lace boots; sports shoes; mountaineering shoes; rainshoes are included in the broad category of the opponent’s footwear and are considered identical.

For the same reasons the contested caps [headwear]; shower caps are identical to the opponent’s headgear.

However, the contested non-slipping devices for footwear are considered dissimilar to any of the opponent’s goods. The contested non-slipping devices for footwear are accessories for footwear that can be bought to complement or improve its function, especially on rough or demanding surfaces such as rough terrain. The nature of these goods while compared with the opponent's goods in Class 25 is different. They serve different purposes and are not usually made by the same manufacturers. These contested goods are also dissimilar to the opponent's goods in Class 28. Apart from being different in nature, they serve different needs. Furthermore, the method of use of those goods is different. They are neither in competition with, nor complementary to, each other.

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 directed at the public at large.

The degree of attention is average.

c) The signs

ATTACK	Amy Attack
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 elements of the marks 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.

Since both marks are word marks and since in case of word marks the protection is sought for the word as such and not its written form, differences in the use of lower or upper case are immaterial. Moreover, the signs have no elements that could be considered dominant (visually eye-catching).

The common element ‘ATTACK’ will be understood as an aggressive and violent act against a person or place by the relevant public. The element ‘AMY’ of the contested sign will be perceived as a female name. Both elements are distinctive to an average degree.

Visually and aurally, the earlier mark and the contested sign coincide in the word ‘ATTACK’, which is the sole word element of the earlier mark and the second word element of the contested sign. Thus, the marks are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a meaning of an aggressive and violent act against a person or place, 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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 signs are visually, aurally and conceptually similar to an average degree. The goods are partly identical and partly dissimilar.

The earlier mark has an average degree of distinctiveness and the relevant public will display an average degree of attention.

The fact that the earlier mark is entirely included in the contested sign, in which it retains an independent and distinctive role, leads to the conclusion that the signs are sufficiently similar overall to conclude that the relevant public might believe that the goods found to be identical have the same trade origin or that the undertakings from which they originate are economically or industrially linked.

Moreover, it is settled case-law that, when the goods covered by the marks at issue are identical, the degree of difference between the signs must be high to exclude a likelihood of confusion (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53).

In the fashion industry, it is not uncommon for the same mark to be configured in various ways according to the products it designates. In that sector, it is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various clothing lines from one another, in particular female and male clothing (25/05/2012, T‑233/10, Jumpman, EU:T:2012:267, § 53). In the present case, consumers may legitimately believe that the contested sign denotes a new line of goods provided under the opponent’s mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 301 835 designating the European Union. 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 from the above that the contested trade mark must be rejected for the goods found to be identical 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 the earlier German trade mark registration No 302 015 055 550. Since this mark is identical to the one which has been compared and cover the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the remaining goods are obviously not identical.

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

Justyna GBYL

Anna BAKALARZ

Katarzyna ZANIECKA

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.