OPPOSITION No B 3 062 778

Sparring Partners Limited, 4th Floor, Brownlow House, 50-51 High Holborn, London WC1V 6ER, United Kingdom (opponent), represented by Mishcon de Reya LLP, Africa House, 70 Kingsway, London WC2B 6AH, United Kingdom (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 31/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 778 is partially upheld, namely for the following contested goods:

Class 9: Calculating machines; data processing apparatus; computer peripheral devices; computer software applications, downloadable; tablet computers; Global Positioning System [GPS] apparatus; intercommunication apparatus; audio- and video-receivers; cameras [photography]; smartwatches.

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, inter alia, European Union trade mark registration No 11 190 386 for the word mark ‘GYMBOX’. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR in relation to this earlier mark, and Article 8(4) EUTMR in relation to the earlier unregistered word mark ‘GYMBOX’.

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 11 190 386 for the word mark ‘GYMBOX’.

1. The goods and services

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

Class 9: Sunglasses; pre-recorded video tapes, discs and cassettes; DVD's, computer games, software, electronic publications.

Class 25: Clothing, footwear and headgear.

Class 41: Health club services; provision of gym facilities; training services relating to health and fitness; provision of instruction and training in relation to sports, yoga and aerobics; provision of entertainment, sporting and cultural activities; rental of sports equipment; sports club facilities; provision of swimming bath facilities; gymnasium instruction; information and advice relating to all the aforesaid services; all the aforesaid services also provided online, from a computer database, from the Internet, via mobile telephone or by other means of communication.

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; 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.

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.

The contested computer software applications, downloadable are included in the broad category of the opponent’s software. Therefore, they are identical.

The contested calculating machines; data processing apparatus; computer peripheral devices; tablet computers; Global Positioning System [GPS] apparatus; intercommunication apparatus; audio- and video-receivers; cameras [photography]; smartwatches are similar to the opponent´s software as they usually coincide in producer and relevant public and can be sold via the same distribution channels. Furthermore, they are complementary.

The contested surveying apparatus and instruments; light-emitting electronic pointers; battery chargers; electronic collars to train animals; materials for electricity mains [wires, cables]; semi-conductors are dissimilar to all of the opponent’s goods and services in Classes 9, 25 and 41, which consist of sunglasses, recorded media, software, electronic publications, clothing, footwear and headgear, and health/fitness-related services. These goods and services have nothing in common. They are of a different nature, they have different purposes, as well as method of use. They are not complementary nor in competition. They do not share the same distribution channels or target the same consumers, and they are produced by different companies.

2. The signs

GYMBOX	GYM BOX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The signs differ only in the space between the elements ‘GYM’ and ‘BOX’: the earlier mark is written as one verbal element, whereas the contested mark is written as two. However, this difference is minor and could even be overlooked by the relevant public, since semantically there is no difference between the two, and therefore no reason to notice the space or lack thereof.

The common elements ‘GYM’ and ‘BOX’ will be understood by English-speakers as well as non-English speakers familiar with the sporting world. However, it is not necessary to enter into an assessment of the distinctiveness of these elements in respect of any part of the public as they are identical in both cases.

Consequently, the signs are conceptually and aurally identical whilst, due to the difference in the space between the elements, they are visually extremely highly similar.

3. 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/or 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).

As illustrated in the comparison of signs, their near identity implies that consumers will not be able to distinguish between them. This conclusion would hold true even if the distinctiveness of the coinciding element(s) and the earlier mark as a whole was very low and irrespective of the degree of attention and the sophistication of the relevant public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 190 386.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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.

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 goods are obviously not identical.

The examination of the opposition as regards these dissimilar goods will proceed for the remaining two grounds invoked by the opponent.

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.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

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

On 06/09/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended and finally expired on 11/03/2019.

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.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent also based the opposition on the non-registered trade word mark ‘GYMBOX’ used in Austria, Croatia, Belgium, Bulgaria, Czech Republic, Cyprus, EUIPO (sic), Estonia, Germany, France, Finland, Denmark, Greece, Italy, Latvia, Hungary, Ireland, Lithuania, Netherlands, Romania, Spain, United Kingdom, Slovenia, Malta, Luxembourg, Poland, Portugal, Slovakia and Sweden for gym and health club services and related goods and services.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 95(1) EUTMR, as indicated above, 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 submitted 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.

As mentioned above, and according to Article 7(1) and (2) EUTMDR, the opposing party is given the opportunity to present any and all facts, evidence and arguments in support of its opposition within a time limit specified by the Office.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 06/09/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended and finally expired on 11/03/2019.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded also 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. 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

Alicia BLAYA ALGARRA

Helen Louise MOSBACK

Claudia SCHLIE

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.