OPPOSITION No B 3 062 573

Gymboss, LLC, 916 North Riverside Avenue, 48079 St. Clair, Michigan, United States of America (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Shenzhen CooSpo Tech Co., Ltd., Room 401, Lingyun Building Honglang North 2nd Rd., Bao'an District, Shenzhen, Guangdong, People´s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 11/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 573 is partially upheld, namely for the following contested goods:

Class 9: Pedometers; monitoring apparatus, electric.

2. European Union trade mark application No 17 902 207 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 17 902 207 for the word mark ‘GYM BOX’. The opposition is based on European Union trade mark registration No 9 980 749 for the word mark ‘GYMBOSS’. 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.

a) The goods

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

Class 9: Timers used for interval timing in sports training.

The contested goods are the following:

Class 9: Calculating machines; data processing apparatus; computer peripheral devices; computer software applications, downloadable; tablet computers; surveying apparatus and instruments; pedometers; light-emitting electronic pointers; battery chargers; Global Positioning System [GPS] apparatus; intercommunication apparatus; monitoring apparatus, electric; audio- and video-receivers; cameras [photography]; electronic collars to train animals; materials for electricity mains [wires, cables]; semi-conductors; smartwatches.

As a preliminary remark, 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.

As a starting point, it would be convenient to define the goods protected by the earlier mark, namely, timers used for interval timing in sports training.

In their broadest sense, the opponent´s goods are measuring instruments, automatic mechanisms for activating a device at a present time. In the present case, they are used for interval timing in sport training.

The contested monitoring apparatus, electric are devices used for observing, checking, or keeping a continuous record of something. Some apparatus check by measuring, and one of the variables that can be measured by these apparatus is time, for example, to monitor the duration of the different intervals in high intensity interval training. Therefore, it is considered that the opponent's timers used for interval timing in sports training are included in the broader category of the contested monitoring apparatus, electric. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested pedometers are instruments for estimating the distance travelled on foot by recording the number of steps taken. To that extent, they are, similar to low degree to the opponent´s timers used for interval timing in sports training. They are both measuring apparatus used for fitness so they could have the same producer, public and outlets (being sold in sport shops).

The rest of the contested goods, namely calculating machines; data processing apparatus; computer peripheral devices; computer software applications, downloadable; tablet computers; surveying apparatus and instruments; light-emitting electronic pointers; battery chargers; Global Positioning System [GPS] apparatus; intercommunication apparatus; audio- and video-receivers; cameras [photography]; electronic collars to train animals; materials for electricity mains [wires, cables]; semi-conductors; smartwatches are all IT and audiovisual hardware or software, electrical components or electronic collars for animals.

As such, they clearly differ from the opponent´s goods in their natures, purposes and methods of use. Furthermore, they do not coincide in their distribution channels and the end users will not expect these goods to be made by the same or related enterprises. In addition, they are not in competition or complementary. The mere fact that some of the contested goods can be used, for instance, together with the opponent’s goods, such as data processing apparatus used together with timers used for interval timing in sports training to interpret the results, is insufficient by itself to find any degree of similarity between them.

Accordingly, and taking also into account the lack of any argumentation or evidence from the opponent to the contrary, all the abovementioned contested goods are considered dissimilar to the goods of the opponent.

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 in question are mainly directed at the public at large, but may also target business customers with specific professional knowledge or expertise (i.e. monitoring apparatus, electric). The degree of attention of both the general and the specialised public may vary from average to high, depending on the price, technological sophistication and frequency of purchase of the goods.

c) The signs

GYMBOSS	GYM BOX
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 words that make up both signs, ‘GYM’, ‘BOSS’ and ‘BOX’ are English words with a specific meaning. However, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the European Union for which the verbal elements at issue are meaningless. Following the approach adopted in decision B-3015628, the Opposition Division will make the present assessment according to the Polish- and Bulgarian-speaking parts of the public, as it considers that this increases the likelihood of confusion between the signs to occur.

According to the above, both ‘GYMBOSS’ and ‘GYM BOX’ are meaningless and therefore distinctive to an average degree.

Visually and aurally, the signs coincide in the presence and the pronunciation of the string of letters ‘GYMBO**’/’GYM BO*’; however they differ in their final letters ‘*****SS‘versus ‘*** **X’’ and in the fact that the earlier mark is composed of one verbal element while the contested sign is formed by two verbal elements.

Moreover, phonetically, the final sounds /SS/ and /X/ are pronounced in a very similar way (if not identically) by the public under consideration.

As consumers generally tend to focus on the beginning of a sign when they encounter a trade mark and taking into account the analysis above, the signs are visually similar to an average degree and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public under consideration. 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 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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as average.

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).

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).

The goods have been found to be partly identical or similar to a low degree and partly dissimilar and target both the general and the professional public displaying a degree of attention ranging from average to high. The earlier mark enjoys an average degree of distinctiveness.

The conflicting signs are visually similar to an average degree while aurally they share a high degree of similarity. Neither of the signs has a meaning for the public under consideration 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. Admittedly, the structure of the signs is different (as the earlier mark is composed of a single verbal element and the contested sign of two verbal elements); however, this fact is not strong enough to outweigh the obvious similarities between the signs (even for those goods found only similar to a low degree).

In addition, account should 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, in particular, the interdependence and imperfect recollection principles, the Opposition Division finds that there is a likelihood of confusion on the Polish- and Bulgarian-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 9 980 749. 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.

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.

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

Helen Louise MOSBACK

Alexandra APOSTOLAKIS

Alicia BLAYA ALGARRA

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.