B-SOUL | Decision 2761636
Date Published: Sep 22, 2017
OPPOSITION No B 2 761 636
SoulCycle Inc., 609 Greenwich Street, New York, New York 10014, United States of America (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)
a g a i n s t
Nan'an Ruizhan Bicycle Accessories Co. Ltd., Xilin Village, Honglai Town, Nan'an, Quanzhou Fujian, People’s Republic of China (applicant), represented by Teodoru I.P. SRL, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176 Bucharest, Romania (professional representative).
On 14/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 761 636 is upheld for all the contested goods.
2. European Union trade mark application No 15 462 963 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 462 963 for the word mark ‘B-SOUL’. The opposition is based on, inter alia, European Union trade mark registration No 14 563 647 for the word mark ‘SOUL’. 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 14 563 647.
- The goods
The goods on which the opposition is based are, among others, the following:
Class 18: Luggage, bags, wallets and other carriers; all purpose carrying bags; make-up bags sold empty; sport bags.
The contested goods are the following:
Class 18: School bags; tool bags, empty; backpacks; bags for climbers; bags for sports; beach bags; travelling bags; key bags; handbags.
Contested goods in Class 18
Bags for sports are identically contained in both lists of goods (including synonyms).
The contested travelling bags are included in the broad category of the opponent’s luggage. Therefore, they are identical.
The contested school bags; tool bags, empty; backpacks; bags for climbers; beach bags; key bags; handbags are included in the broad category of the opponent’s bags. Therefore, they are identical.
- 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 whose degree of attention is average.
- The signs
SOUL | B-SOUL |
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Since the common element ‘SOUL’ is meaningful in English, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.
The earlier mark is a word mark consisting of the word ‘SOUL’ which means ‘the spiritual or immaterial part of a human being or animal, regarded as immortal; a person’s moral or emotional nature or sense of identity; emotional or intellectual energy or intensity, especially as revealed in a word of art or an artistic performance; short for soul music; the essence or embodiment of a specified quality; a person regarded with affection or pity’ (definitions extracted from Oxford Dictionaries on 12/09/2017 at https://en.oxforddictionaries.com). In relation to the relevant goods, this element is distinctive.
The contested sign is also a word mark, consisting of the letter ‘B’ separated from the word ‘SOUL’ by a hyphen. Contrary to the opponent’s arguments, the Opposition Division does not consider that the public will perceive the letter ‘B’ as refering to ‘bags’. Therefore, this element is distinctive, as the word ‘SOUL’.
While it is true that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader, it must be stressed that this cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them. It remains that this circumstance is only one of the factors to take into consideration when evaluating the existence of a likelihood of confusion.
Visually, the signs coincide in the distinctive element ‘SOUL’ which forms a clearly perceptible independent element in the contested sign. The earlier mark is entirely included in the contested sign. The signs only differ in the element ‘B-’ of the contested sign. Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the distinctive element ‘SOUL’ present identically in both signs. The pronunciation only differs in the sound of the letter ‘B’ of the contested sign which has no counterpart in the earlier sign. Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since both signs coincide in the ‘SOUL’ concept, they are conceptually similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods are identical, the inherent distinctiveness of the earlier mark is normal and the degree of attention of the public is average.
The signs are visually, aurally and conceptually similar to a high degree on account of the distinctive element ‘SOUL’ which forms a clearly perceptible independent element in the contested sign.
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.
In the present case, the Opposition Division considers that the relevant consumer is likely to perceive the identical goods designated by the conflicting signs as belonging to product lines that come from the same undertaking or economically-linked undertakings. The relevant public may assume that the contested sign ‘B-SOUL’ represents a sub-brand of the earlier mark ‘SOUL’.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 563 647. It follows that the contested trade mark must be rejected for all the contested goods.
As the above mentioned earlier right 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
COSTS
According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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
Martina GALLE | Frédérique SULPICE | Begoña URIARTE VALIENTE |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.