ASTANA | Decision 2660903 - Abacanto Sa v. MULTISPORTS MARKETING, S.L.U.

Date Published: Sep 28, 2017

OPPOSITION No B 2 660 903

Abacanto SA, 34a Bd. Grande Duchesse Charlotte, 1330 Luxembourg, Luxembourg (opponent), represented by Ipside, 29, rue de Lisbonne, 75008 Paris, France (professional representative)

a g a i n s t

Multisports Marketing S.L.U., Calle Aribau 161 08036 Barcelona, Spain (applicant) represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative).

On 23/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 660 903 is partially upheld, namely for the following contested goods:

Class 9: Data processing equipment; computers; computer software.

2.        European Union trade mark application No 14 761 811 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 14 761 811. The opposition is based on EU trade mark registration No 9 830 472. The opponent invoked Article 8(1)(b) and 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.

1. The goods

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

Class 12: Vehicles; Apparatus for locomotion by land, air or water; Bicycles; Bicycle bells; Bicycle brakes; Bicycle chains; Bicycle frames; Bicycle handle bars; Bicycle pumps; Bicycle rims; Bicycle saddles; Bicycle spokes; Bicycle stands; bicycle tires [tyres].

Class 25: Clothing, footwear, headgear; Cyclist’s clothing; Cycling shirt; sport jerseys; Cycling jerseys; cycling shoes.

Class 28: Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees; Cycling articles; Bags especially designed for cyclist accessories.

The contested goods are the following:

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery; Essential oils; Cosmetics; Hair lotion; Dentifrices.

Class 5: Pharmaceutical preparations; Veterinary preparations; Sanitary preparations for medical purposes; Foodstuffs and dietetic substances for medical or veterinary purposes; Baby food; Dietary supplements for humans and animals; Plasters; Materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides; Herbicides.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers; Calculators; Data processing equipment; Computers; Computer software; Fire-extinguishing apparatus.

Class 14: Jewellery, precious stones; Horological and chronometric instruments; Precious metals and their alloys.

Class 16: Paper, cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), all the aforesaid goods relating to the organisation of professional sporting events and the promotion and representation of professional athletes; Instructional and teaching material (except apparatus), plastic materials for packaging (not included in other classes), printers’ type and printing blocks, all the aforesaid goods relating to the organisation of professional sporting events and the promotion and representation of professional athletes.

Class 18: Hides; Imitation leather; Animal skins, hides; Trunks(luggage); Valises; Umbrellas; Parasols; Walking sticks; Whips; Saddlery.

Class 32: Beer; Mineral and aerated waters and other non-alcoholic beverages; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

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 preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The opponent’s games in Class 28 are similar to the contested data processing equipment; computers; computer software in Class 9. First, these goods are complementary to each other, since software is essential for the functioning of an electronic game, for example. Furthermore, the goods may have the same nature and be manufactured by the same companies.

However, the rest of the contested goods in Class 9 and all of those in the other classes are different from the goods for which the earlier mark is registered.

On the one hand, the opponent’s goods in Class 12 are items related to the transport of people, animals or things and different parts of or items relating to bicycles. The opponent’s goods in Class 25 are clothing, footwear and headgear. Finally, the opponent’s goods in Class 28 include goods serving recreational purposes as games and playthings. This class also includes gymnastic and sporting articles and decorations for Christmas trees.

On the other hand, the contested goods are in Classes 3, 5, 9, 14, 16, 18 and 32. First, the goods in Class 3 include preparations relating to cosmetics, personal hygiene, and general cleaning or polishing. Some are associated with personal care and enhancement and others are cleaning preparations, such as shoe polish and scouring and abrasive preparations. Second, the goods in Class 5 are medicines and medicine-related goods for humans or animals, dietetic food and substances adapted for medical use, food for babies, sanitary preparations, plasters, materials for dressings, disinfectants and preparations for destroying vermin, fungicides and herbicides. Third, the rest of the contested goods in Class 9 (scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers; calculators; fire) are in the field of technology. Fourth, the goods in Class 14 consist of jewellery, precious stones, horological and chronometric instruments, precious metals and their alloys. Fifth, the goods in Class 16 include common consumer goods that are produced by many manufacturers in the paper and printed products industry. Sixth, the contested goods in Class 18 are imitation leather, animal skins, hides, luggage, umbrellas, parasols, walking sticks, whips and saddlery. Finally, the contested goods in Class 32 are, inter alia, beers, non-alcoholic beverages, mineral water and fruit juices.

The contested goods serve entirely different purposes from any of the opponent’s goods. They do not have the same producers, their methods of use are different and they are neither in competition with nor complementary to each other.

Therefore, the Opposition Division finds these contested goods dissimilar to the goods for which the earlier mark is registered.

2. 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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high, depending on the frequency of their purchase, their particular characteristics and their price.

3. 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 are figurative marks, comprising the word ‘ASTANA’. In the earlier mark, above this word is a figurative device depicting a wing. Underneath the word is the verbal element ‘PROTEAM’ in a much smaller typeface.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

In the earlier mark, the word ‘ASTANA’, together with the figurative device, occupies a central position and its typeface is larger than that of the other verbal element. The other verbal component, ‘PROTEAM’, is written in a much smaller typeface. ‘ASTANA’ is therefore dominant (visually outstanding) in the overall impression of the mark.

‘ASTANA’, present in both signs, is the capital of Kazakhstan (information extracted from https://www.collinsdictionary.com/dictionary/english/astana).

Visually, the signs are similar to the extent that they coincide in ‘ASTANA’; moreover, these elements are in an identical typeface and with an identical curved line. However, they differ in the additional elements of the earlier mark, namely the figurative device in the shape of a wing and the additional word ‘PROTEAM’, in very small characters. The marks’ colours are also different.

The signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in ‘ASTANA’, present in both signs. The pronunciation differs in ‘PROTEAM’ of the earlier sign, which has no counterpart in the contested mark. However, this element, due to its size and position, will not be pronounced. Given this, the signs are aurally identical.

Conceptually, the public in the relevant territory will perceive the signs as referring to the capital of Kazakhstan. They differ in the concept of ‘PROTEAM’ (understood by the English-speaking part of the public, for example) and the figurative element of the wing, which are present in only the earlier mark. The meaning of ‘ASTANA’ will be perceived in both signs, the signs are conceptually similar to a high degree.

Taking into account the abovementioned coincidences, the signs under comparison are similar to a high degree. Therefore, the examination of likelihood of confusion will proceed.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

All the contested goods are dissimilar, with the exception of data processing equipment; computers; computer software, which are similar to the opponent’s goods.

The marks are similar to a high degree, as the most important element of the earlier mark and the only verbal element of the contested sign, ‘ASTANA’, are identical, although their colours are different. This difference and some conceptual differences between the signs are due to figurative and less dominant elements and it is considered that the circumstances of the present case are such that there is a risk of likelihood of confusion/association between the marks. This is because the coinciding element in the signs, ‘ASTANA’, plays an independent distinctive role in both signs. 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 that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

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

The examination will continue on the basis of the other ground claimed by the opponent, namely Article 8(5) EUTMR.

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.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 04/11/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 12:        Vehicles; Apparatus for locomotion by land, air or water; Bicycles; Bicycle bells; Bicycle brakes; Bicycle chains; Bicycle frames; Bicycle handle bars; Bicycle pumps; Bicycle rims; Bicycle saddles; Bicycle spokes; Bicycle stands; bicycle tires [tyres].

Class 25:        Clothing, footwear, headgear; Cyclist’s clothing; Cycling shirt; sport jerseys; Cycling jerseys; cycling shoes.

Class 28:        Games and playthings; Gymnastic and sporting articles not included in other classes; Decorations for Christmas trees; Cycling articles; Bags especially designed for cyclist accessories.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 11/08/2016, the opponent submitted the following evidence:

• Annex 1: a printout of the Wikipedia web page about Astana Pro Team.

• Annex 2: a report from COLIPED (Association of the European Two Wheeler Parts & Accessories Industry) showing figures for 2012. It shows that in 2012 bicycle manufacturers in the EU produced more than 11 million bicycles and that the total sales of bicycles in the EU in that year were almost 20 million. There is no reference to the ‘ASTANA’ trade mark.

• Annex 3: a printout of ‘Some cycling statistics’, from the EESC (European Economic and Social Committee), showing that in 2000 there were 200 million bicycles in the EU-15. There is no reference to the ‘ASTANA’ trade mark.

• Annex 4: ‘Racing calendar 2015’ from Cyclingnews.com showing that in that year there were 197 cycling races in Belgium, the Netherlands, France, Italy, the United Kingdom and Germany. Astana is the name of a team that has taken part in numerous races and cycling events. The annexes show that Astana was a participant in an average of 45 events in the EU.

• Annex 5: calendars for 2012, 2013, 2014, 2015 and 2016 of the races and cycling events in which the Astana team has participated.

- In 2012, it participated in 42 cycling events in the EU, including the Giro d’Italia, Tour de France, Vuelta a España and World Championship.

- In 2013, it participated in 49 cycling events in the EU, including the Giro d’Italia, Tour de France, Vuelta a España and World Championship.

- In 2014, it participated in 47 cycling events in the EU, including the Giro d’Italia, Tour de France, Vuelta a España and World Championship.

- In 2015, it participated in 42 cycling events in the EU, including the Giro d’Italia, Tour de France, Vuelta a España and World Championship.

- In 2016, the Astana team planned to participate in 51 cycling events, including the Giro d’Italia, Tour de France, Vuelta a España and World Championship.

• Annex 6: a printout from Wikipedia showing that the Astana team participated in the Liège-Bastogne-Liège 2012 , the Vattenfall Cyclassic 2013, the Vuelta a Burgos 2014, the Giro 2014 and the Strade Bianche contest 2015.

• Annex 7: pictures of a range of products bearing the mark ‘ASTANA’ together with a list of prizes won by the products’..

• Annex 8: Article 2.19 of the Benelux Convention on Intellectual Property, dated 01/10/2013.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

For a mark to have a reputation, it must be recognised by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and longstanding use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

In the present case, the documents submitted demonstrate that the opponent’s mark ‘ASTANA’ has some presence on the market. However, for a finding of reputation, not only does use of the mark have to be shown, but a certain threshold in terms of the relevant public’s knowledge of the mark must also be reached. What is important is the public awareness of the mark, rather than the availability of the goods.

The evidence is not sufficiently clear and convincing in this regard, as the opponent did not clearly establish all the facts necessary for it to be safely concluded that the earlier mark is known by a significant part of the public. Regarding the sales figures in Annex 2 submitted by the opponent, the opponent did not indicate how these relate to the trade mark ‘ASTANA’. The evidence filed by the opponent shows use of the mark for goods related to the cycling sector in the EU. However, to prove the reputation of a mark, it is not sufficient simply to show its use; rather, it must also be demonstrated that the relevant public recognises the mark. There is no consumer survey or other direct evidence as regards the knowledge of the marks among the public. The printouts from Wikipedia summarising the history of the mark ‘ASTANA’, the photographs of ‘ASTANA’ goods and the list of races in which the Astana team participated give no indication of the intensity of use or the knowledge of the mark on the part of the public and, in addition, they derive directly from the opponent. Consequently, their probative value is diminished accordingly. Again, none of the documents refers to the recognition of the earlier trade mark by the relevant end consumers, nor was evidence about the market share of the opponent’s goods filed. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as regards the dissimilar goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Cristina CRESPO MOLTÓ

José Antonio GARRIDO OTALOA

Loreto URRACA LUQUE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.