OPPOSITION No B 3 063 463

El Corte Ingles, S.A., Hermosilla, 112, 28009, Madrid, Spain (opponent), represented by J.M. Toro, S.L.P., Viriato, 56 - 1º izda, 28010, Madrid, Spain (professional representative)

a g a i n s t

Alessandro Rinaldi, Via Garibaldi 24/a, 35010, Cadoneghe (PD), Italy (applicant) represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831, Seregno (MB), Italy (professional representative).

On 12/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 463 is upheld for all the contested goods namely

Class 25: Sportswear.

2. European Union trade mark application No 17 899 020 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.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 899 020 namely, against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 4 273 611 . 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 4 273 611.

a) The goods

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Sportswear.

The contested sportswear is included in the broad categories of the opponent’s clothing, 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 for which the degree of attention is average.

c) The signs

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).

Both signs at issue include the word ‘WINNER’ which in the English language ‘WINNER’ (as a singular noun) means One who is victorious in a contest; a victor; esp. one who wins a game, a race, a prize, etc. (information extracted from Oxford English Dictionary on 08/07/2019 at https://www.oed.com/view/Entry/229372?redirectedFrom=winner#eid). This word appears in the genitive singular form ‘WINNER’S’ in the earlier mark and in the regular plural form ‘WINNERS’ in the contested sign.

Although the verbal element ‘WINNER’S’/’WINNERS’ bears no direct relation to the relevant goods, it alludes to a characteristic of the goods, namely, to facilitate victory or success in sports and so this element possesses slightly below-average distinctive character. For the remainder of the relevant public, which does not understand English, the verbal element is meaningless and so distinctive to an average degree.

In the earlier mark the verbal element ‘WINNER’S’ is depicted in a stylised type-face (of an essentially decorative nature) in the colours light green and dark green.

In the contested sign the verbal element ‘WINNERS’ is presented in a type-face to the left of which said verbal element appears a figurative element comprising the same stylised letter ‘W’ above which is placed a crown device and which is surrounded by the device of a laurel wreath.

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 figurative elements of a crown and of a laurel wreath are concepts commonly associated with victory, including in the field of sports, and therefore, the relevant public will perceive them as laudatory elements. For the English-speaking public they additionally support the concept behind the verbal element. As these two figurative elements allude to victory or success in sports, they possess slightly below-average distinctive character.

While the stylised letter ‘W’ bears no relation to the relevant goods and so is distinctive to a normal degree nevertheless it plays an ancillary role with respect to the verbal element as the public will perceive it just as the initial letter of that verbal element.

The marks have no elements that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in the letter sequence ‘WINNERS’. They differ in the respective figurative elements and in the apostrophe between the ‘R’ and the ‘S’ in the earlier mark.

Taking all the above into account, it is considered that the marks at issue are visually similar to an average degree.

Aurally, the signs at issue coincide in the sound of the letters ‘WINNERS’. The stylised letter ‘W’, appearing in the figurative element of the contested sign, is not likely to be pronounced as it will be perceived as just a repetition of the initial letter of the word and as part of the figurative element. Accordingly, the signs are phonetically identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived by English-speakers as referring to the same concept of winning they are semantically highly similar. In fact, it cannot be excluded that for at least part of the English-speaking public the significance of the apostrophe in the earlier mark may go unnoticed and, for such part, the signs will be semantically identical.

For the rest of the public, the contested sign conveys the concepts of the laurel and the wreath so 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.

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, for the non-English speaking part of the European Union the earlier trade mark as a whole bears no relation to the relevant goods and so its distinctiveness must be seen as normal while, for the English-speaking part, it is allusive and so possesses slightly-below average distinctiveness.

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).

Account is taken 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).

The signs at issue are visually similar to an average degree, aurally similar to at least a high degree, and either conceptually similar (for the English-speaking part of the European Union) or not conceptually similar (for the remaining non-English-speaking part).

The relevant goods are identical, the earlier mark possesses normal distinctive character for those who do not understand English and slightly-below average distinctiveness for English speakers, and the degree of attention of the relevant public is average.

The Office notes that 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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

That is particularly possible if account is taken of the fact that it is common in the clothing/sportswear sector, which is relevant in the present case, for the same mark to be configured in various different ways according to the goods which it designates or to particular periods in time (20/07/2017, T-521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 70 and the case-law cited).

Considering all the above, the Opposition Division finds that the differences between the two signs are insufficient to override the overall similarity between them such that there is a likelihood of confusion on the part of the relevant public. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 4 273 611.

It follows from the above that the contested trade mark must be rejected for the relevant goods.

As the earlier European Union trade mark registration No 4 273 611 leads to the success of the opposition and to the rejection of the contested trade mark for all 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

Catherine MEDINA

Kieran HENEGHAN

Martin INGESSON

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.