OPPOSITION No B 3 049 870

Liga Nacional de Fútbol Profesional, Hernández de Tejada, 10, 28027 Madrid, Spain (opponent), represented by Casas Asin S.L., Av. San Francisco Javier 9, Edificio Sevilla 2, 8ª Planta, Oficina 7, 41018, Sevilla, Spain (professional representative)

a g a i n s t

Shenzhen Zhouwu Technology Co. Ltd., 2/F Bldg. C, GeTaiLong Industrial Park, No. 227, Bulong Rd., Bantian St., Longgang, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Rolim, Mietzel, Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212, Düsseldorf, Germany (professional representative).

On 30/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 870 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 870 809 for the word mark ‘CLASICHIC’. The opposition is based on European Union trade mark registration No 12 820 247 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Athletic uniforms; athletic clothing; children's clothing; infants' clothing; fashion hats; clothing layettes; corselets; dresses; dressing gowns; footwear; hosiery; panties; skirts; slips; sports jerseys; tights; tops; underpants; underwear.

Footwear is identically contained in both lists of goods.

The contested athletic uniforms; athletic clothing; children's clothing; infants' clothing; clothing layettes; corselets; dresses; dressing gowns; hosiery; panties; skirts; slips; sports jerseys; tights; tops; underpants; underwear are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested fashion hats are 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 directed at the public at large.

The degree of attention is considered to be average.

c) The signs

	CLASICHIC
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).

When assessing the similarity of the signs, an analysis of whether the coinciding / differing components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive or weak elements.

The earlier mark is composed of the verbal element ‘EL CLÁSICO’ in black, fairly standard letters depicted over two lines, where the element ‘EL’ on the first line is preceded by a figurative element consisting in the depiction of a football surrounded by seven rectangular elements in different colours. The mark has no elements which are clearly more dominant (visually eye-catching) than other elements.

The term ‘EL’ will be perceived by a part of the public, such as the Spanish-speaking part, as the masculine form of the definitive article in Spanish, while another part of the public will not attribute a meaning to this element. For the part of the public that will understand the meaning of ‘EL’, it will be given less attention in the mark because it is only used before a word to limit or individualise its meaning and does not in itself introduce any particular and distinctive concept. For the rest of the public it is meaningless and therefore, it is considered to be distinctive to an average degree.

The word ‘CLÁSICO’ of the earlier mark will be perceived throughout the European Union as referring to something that is simple and traditional and is not affected by changes in fashion due to the similarity of this word to its equivalents in the respective languages (e.g. ‘clássico’ in Portuguese, ‘classico’ in Italian, ‘classic’ in English, ‘classique’ in French, ‘clasic’ in Romanian, ‘klassisch’ in German, etc.). Although the word may have other meanings, in relation to the goods at issue this meaning is the one that will come to consumers’ minds first. Therefore, this word is considered weak since it alludes to the characteristics of the goods, namely that they are clothing/headgear/footwear of a classic style/cut.

The figurative element of the earlier mark depicting a football surrounded by colourful rectangles will be perceived as referring to the sport of football and it can also allude to the fact that the relevant goods are sport articles suitable for the sport of football. Nevertheless, despite that semantic association, the mark’s figurative element is not exclusively composed of standard and commonplace elements – it cannot be denied that it features a specific combination of colours and shapes and, as a whole, has a certain, albeit weak, degree of distinctiveness.

Nevertheless, it should be noted that 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).

The contested sign, ‘CLASICHIC’, as a whole, does not have any meaning for the public in the relevant territory.

Nevertheless, it should be noted that the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Therefore, taking into account the aforementioned principle, it is considered that the relevant consumers will identify at least the element ‘CLASIC’ at the beginning of the sign and will perceive it with the same meaning explained above in relation to the word ‘CLÁSICO’ due to the same reasons outlined above (it being close to equivalents of this word in the various respective languages). The considerations about its distinctiveness equally apply for the contested mark and the relevant contested goods.

Furthermore, a part of the relevant public familiar with its meaning may identify the word ‘CHIC’ at the end of the contested sign despite the fact that the letter ‘C’ is shared between the words ‘CLASIC’ and ‘CHIC’ as these are both existent words in some languages.

The element ‘CHIC’, originally a French word meaning ‘elegant, stylish’, has become part of the vocabulary in several other languages such as English, Spanish, Italian, while in other languages this word, or the letters ‘HIC’ at the contested sign, will be perceived as meaningless. For the relevant public that will identify and understand the element ‘CHIC’ in the contested sign as a reference to elegant or stylish, it is considered weak as it has a certain laudatory significance in relation with the relevant goods, whereas the letters ‘CHIC’ or ‘HIC’ have a normal degree of distinctiveness for the part of the public for which they do not convey any meaning.

Visually, the signs coincide in the letters ‘CLASIC’ which form weak elements in the marks in relation to the goods at issue. However they differ in the accent on the letter ‘A’ in the earlier mark which has minimal impact and in the last letter ‘O’ in the word ‘CLÁSICO’ of the earlier mark, as well as in the additional letters ‘HIC’ at the end of the contested sign and the first word ‘EL’ of the earlier mark.

They also differ in the figurative element and the stylisation of the earlier sign. Although, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, the particular graphical depiction of the marks also has to be given appropriate significance when the visual impact of the marks is considered. An examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details.

Consequently, taking into account all the elements of the marks that influence the consumer’s visual perception of them and bearing in mind the limited distinctiveness of the elements ‘CLÁSICO’ / ‘CLASIC’, it is considered that the marks are visually similar to only a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the best case scenario in the sound of the letters ‘CLASIC’. The presence or absence of an accent on the letter ‘A’ in the marks does not create a perceptible aural difference between the marks.

However, the pronunciation of the marks differs in the sound of the last letters ‘O’ in the word ‘CLÁSICO’ and the first word ‘EL’ of the earlier mark, as well as in the additional letters at the end of the contested sign which may be read either as ‘HIC’ or read together with the preceding letter ‘C’ and read as ‘CHIC’. Moreover the signs have different lengths, number of syllables and aural rhythm.

Therefore, bearing in mind the limited distinctiveness of the elements ‘CLÁSICO’ / ‘CLASIC’ of the marks, it is considered that the signs under comparison are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The marks coincide in the concept conveyed by the elements ‘CLÁSICO’ of the earlier mark and ‘CLASIC’ of the contested sign, which are weak in both marks. The signs differ in the concepts conveyed by their remaining verbal and figurative elements, which are also of reduced distinctiveness.

Bearing in mind the limited distinctiveness of the common concept of the marks, they are conceptually similar to only a low 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 claimed that the earlier trade mark enjoys enhanced distinctiveness and that it owns a family of ‘La Liga’ trade marks. However, it 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. Considering what has been stated above in section c) of this decision; the distinctiveness of the earlier mark must be seen as lower than average for all the goods in question.

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, and 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).

In the present case the goods are identical and target the public at large with an average degree of attention. However, the signs are considered visually, aurally and conceptually similar to only a low degree because the sequence of letters in common, ‘CLASIC’, form or are part of weak elements of the marks with reduced impact on their overall impressions.

An examination of the similarity of the signs must take account of the overall impressions produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details.

The differences between the signs have a sufficiently significant impact on the overall impressions of the signs to outweigh the commonalities arising from their common letters which are weak so that the likelihood that consumers may associate the goods at issue with the same or economically linked undertakings can safely be excluded, even in relation to identical goods.

It remains necessary to consider the opponent’s argument that the earlier trade mark is part of a ‘family of marks’ with the same word component, ‘EL CLÁSICO’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same verbal component, will be led to believe that the goods identified by that mark may also come from the opponent.

The concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T 194/03, Bainbridge, EU:T:2006:65).

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of trade marks since it did not file any evidence to support its claims.

Therefore, this argument of the opponent must be rejected as unfounded.

In its observations the opponent claims that the contested EUTM application should be refused also under Article 7 EUTMR.

In that regard, it must be clarified that under Article 45 EUTMR, third parties can make observations explaining why the EUTM application should not be registered based on one of the absolute grounds of Article 7 EUTMR. An opposing party in opposition proceedings is entitled to submit third party observations. However, it should do so in a manner that leaves no doubt that they are third party observations.

In the present proceedings, the opponent has not expressly mentioned that it wishes to make third party observations under Article 45 EUTMR. The submissions of the opponent contain a mere mention to Article 7(1)(b) and (c) EUTMR without any reference to the contents of Article 45 EUTMR. Consequently, the submissions of the opponent are not regarded as observations by third parties under Article 45 EUTMR.

Therefore, this argument of the opponent must be dismissed.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 27/06/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 02/11/2018.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Begoña URIARTE VALIENTE

Boyana NAYDENOVA

Kieran HENEGHAN

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.