BLACK FRIDAY SPORT | Decision 2714536
Date Published: Sep 28, 2017
OPPOSITION No B 2 714 536
MR Verwaltungs GmbH, Stettiner Straße 4, D-33161 Hövelhof, Germany (opponent), represented by Horak Rechtsanwälte, Georgstr. 48, 30159 Hannover, Germany (professional representative)
a g a i n s t
Sport's Globe Total S.L., Carrer de Consell de Cent 118, 1r1a, 08015 Barcelona, Spain (applicant).
On 05/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 714 536 is totally upheld for all the contested goods and services
2. European Union trade mark application No 15 263 049 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 and services of European Union trade mark application No 15 263 049. The opposition is based on German trade mark registration No 3020 130 575 741. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; Cash registers, calculating machines, drainers for use in photography; electrical distribution boxes; totalisators; adding machines; aerometers; Accumulators, electric; batteries, electric, for vehicles; battery jars; accumulator boxes; couplers (acoustic- ); alarm apparatus; whistle alarms; alarm bells, electric; alcoholmeters; ammeters; testing apparatus not for medical purposes; anemometers; armatures (electricity); starter cables for motors and engines; anodes; anode batteries; answering machines; connector boxes (electricity); connections for electric lines; aerials; anticathodes; apertometers (optics); x-rays producing apparatus and installations, not for medical purposes; apparatus and instruments for astronomy; distance recording apparatus; apparatus for measuring the thickness of skins; oxygen transvasing apparatus; appliances for measuring the thickness of leather; railway traffic safety appliances; mirrors for inspecting work; asbestos clothing for protection against fire; asbestos gloves for protection against accidents; breathing apparatus for underwater swimming; breathing apparatus, except for artificial respiration; Respiratory masks, other than for artificial respiration; respirators for filtering air; thermionic valves (radio); shutter releases [photography]; balancing apparatus; steering apparatus, automatic, for vehicles; azimuth instruments; barometers; batteries, electric;limiters (electricity); light meters; petrol gauges; observation instruments; betatrons; phototelegraphy apparatus; screens (computers); video telephones; plumb bobs; galena crystals (detectors); plumb lines; diaphragms (photography); anti-glare glasses; anti-glare screens; blinkers (signalling lights); lightning conductors; flash-lights (photography); flash-bulbs (photography); letter scales; spectacles; spectacle cases; spectacle frames; spectacle lenses; weighbridges; compact disc players; Chips (integrated circuits); chronographs (time recording apparatus); magnetic encoders; encoded identification cards; encoded service cards; compact discs (read-only memory); compact discs (audio-video); computer programs, recorded; computer programs (downloadable); computer software (recorded); decorative magnets; photographic transparencies; slide projectors; densimeters; theft prevention installations, electric; anti-theft warning apparatus; diffraction apparatus (microscopy); dictating machines; light regulators (dimmers) (electric); alidades; floppy disks; floppy disc drives; fuse wire; revolution counters; choking coils (impedance); printers for computer; pressure measuring apparatus; pressure indicators; automatic indicators of low pressure in vehicle tyres; darkroom lamps (photography); darkrooms (photography); DVD players; dynamometers; egg-candlers; socks, electrically heated; electric installations for the remote control of industrial operations; Electric couplings; electric transformers; electric wires; electric cables; electric capacitors; electrolysers; electromagnetic coils; electronic display boards; electronic publications (downloadable); electronic security tags for goods; electronic pens (visual display units); electronic pocket translators; electronic diaries; fences, electrified; distance measuring apparatus; discharge tubes, electric, other than for lighting; demagnetizing apparatus for magnetic tapes; anti-interference devices (electricity); thread counters; ticket dispensers; milage recorders for vehicles; invoicing machines; false-coin detectors; field glasses; binoculars; telescopes; telerupters; teleprinters; telephone apparatus; electro-dynamic apparatus for the remote control of railway points; remote control apparatus; igniting apparatus, electric, for igniting at a distance; fire boats; fire blankets; fire extinguishers; fire alarms; fire beaters; clothing for protection against fire; garments for protection against fire; fire engines; exposed films; cinematographic cameras; film cutting apparatus; filters for respiratory masks; filters [photography]; fluorescent screens; cameras [photography]; photovoltaic cells; photocopiers (photographic, electrostatic, thermic); photometers; apparatus to check franking; hands-free kits for phones; frequency meters; spark-guards; masts for wireless aerials; radiotelephony sets; radiotelegraphy sets; galvanic cells; galvanic batteries; galvanometers; gasometers; printed circuits; automated teller machines; coin-operated mechanisms for television sets; Juke boxes (musical); money counting and sorting machines; speed indicators; speed checking apparatus for vehicles; speed measuring apparatus (photography); speed regulators for record players; workmen's protective face-shields; weights; screw-tapping gauges; grids for batteries; glass covered with an electrical conductor; retorts; semiconductors; holders for electric coils; wrist rests for use with computers; high-frequency apparatus; altimeters; holograms; dog whistles; inductance coils (electricity); integrated circuits; interfaces (for computers); ionisation apparatus, not for the treatment of air or water; electricity conduits; identification threads for electric wires; identification sheaths for electric wires; wire connectors (electricity); sheaths for electric cables; calipers; calibrating rings; integrated circuit cards [smart cards]; cassette players; carriers for dark plates [photography]; cathodes; boiler control instruments; cinematographic films [exposed]; switchboxes (electricity); optical character readers; terminals (electricity); push buttons for bells; bells [warning devices]; slope indicators; pince-nez; pince-nez cases; pince-nez mountings; pince-nez chains; pince-nez cords; knee-pads for workers; coaxial cables; collectors, electric; compasses; contacts, electric; contact lenses; containers for contact lenses; headphones; couplers [data processing equipment]; Correcting lenses [optics]; cosmographic instruments; gasoline gauges; bulletproof waistcoats; copper wire, insulated; chargers for electric batteries; surveying instruments; lasers, not for medical purposes; laser pointers (luminous pointers); magic lanterns; loudspeakers; cabinets for loudspeakers; gauges; jigs (measuring instruments); conductors, electric; conduits (electric); readers (data processing equipment); luminous beacons; luminous signs; optical fibres (light-conducting filaments); blueprint apparatus; heliographic apparatus; photometers; rulers [measuring instruments]; punched card machines for offices; logs (measuring instruments); sounding apparatus and machines; air analysis apparatus; magnifying glasses (optics); magnetic tapes; magnetic tape units for computers; magnetic data carriers; magnetic wires; magnets; disks magnetic; solenoid valves (electromagnetic switches); pressure gauges; marking buoys; solderers' helmets; rules (measuring instruments); dressmakers' measures; material for electricity mains (wires, cables); mathematical instruments; mousepads (mousemats); mechanisms for counter-operated apparatus; megaphones; quantity indicators; levelling staffs (surveying instruments); plane tables (surveying instruments); metal detectors for industrial or military purposes; meteorological balloons; meteorological instruments; metronomes; microphones; micrometers; micrometer screws for optical instruments; microtomes; mobile telephones; modems; editing appliances for cinematographic films; teeth protectors; juke boxes (musical); nose clips for swimmers; nautical apparatus and instruments; navigation apparatus for vehicles (on-board computers); navigational instruments; fog signals, non-explosive; inclinometers; neon signs; surveyors' levels; levelling instruments; verniers; objectives [lenses] (optics); lenses for astrophotography; ohmmeters; earplugs for divers; octants; instruments containing eyepieces; eye-pieces; optical goods; optical apparatus and instruments; optical data carriers; optical fibre cables; optical condensers; lanterns (optical -); optical lenses; optical discs; optical glass; oscillographs; ozonisers (ozonators); parking meters; pedometers; periscopes; pagers; planimeters; plates for batteries; record players; juke boxes for computers; plotters; polarimeters; Prisms (optics); projection apparatus; projection screens; pyrometers; radar apparatus; radiological apparatus for industrial purposes; radios; vehicle radios; frames for photographic transparencies; centering apparatus for photographic transparencies; screens for photoengraving; smoke detecting apparatus; abacuses; calculating disks; slide-rules; reflecting discs, for wear, for the prevention of traffic accidents; refractometers; refractors; stage lighting regulators; head-cleaning tapes; cleaning apparatus for sound recording discs; Riding helmets; relays, electric; life buoys; life rafts; fire escapes; life nets; safety tarpaulins; lifebelts; lifesaving apparatus and equipment; rheostats; Levels (instruments for determining the horizontal); hemline markers; roentgen apparatus not for medical purposes; x-ray photographs, other than for medical purposes; x-ray films, exposed; x-rays tubes not for medical purposes; radiological screens for industrial purposes; cathodic anti-corrosion apparatus; saccharometers; egg timers (sand glasses); needles for record players; satellites for scientific purposes; satellite navigational apparatus; glazing apparatus for photographic prints; acid hydrometers; acidimeters for batteries; scanners [data processing equipment]; acoustic conduits; diaphragms (acoustics); sound locating instruments; horns for loudspeakers; plugboards; switches; switches, electric; electric apparatus for commutation; distribution consoles (electricity); control panels (electricity); slide calipers; marine compasses; naval signalling apparatus; mechanical signs; screens (photography); fuses; steelyards (lever scales); coin-operated mechanisms for gates for car parking facilities; protective suits for aviators; gloves for protection against x-rays for industrial purposes; protective helmets; safety helmets for sports; protection devices against x-rays, not for medical purposes; life jackets; transmitters of electronic signals; sounding leads; sounding lines; sextants; safety restraints (other than for vehicle seats and sports equipment); signals, luminous or mechanical; signalling buoys; electro-dynamic apparatus for the remote control of signals; signal bells; signal lanterns; signalling whistles; signalling panels, luminous or mechanical; wafers for integrated circuits; simulators for the steering and control of vehicles; sirens; smartcards (cards with integrated circuits); solar collectors for electricity generation; sonars; solar batteries; sunglasses; sundials; battery chargers; voltmeters; voltage regulators for vehicles; spectrograph apparatus; spectroscopes; cases especially made for photographic apparatus and instruments; furniture especially made for laboratories; spherometers; mirrors (optics); computer games (Programs for -); sports spectacles; speaking tubes; sprinkler systems (fire protection); electric coils; spools (photography); stands for photographic apparatus; tripods for cameras; time clocks (time recording devices); sockets; socket covers; stereoscopes; stereoscopic apparatus; actinometers; marking gauges (joinery); bar code readers; current limiters for lighting apparatus; current rectifiers; electricity conduits; conductor rails for spotlights; circuit closers; circuit breakers; electric loss indicators; converters, electric; inverters (electricity); viewfinders, photographic; sulphitometers; buzzers; buzzers electric; tachometers; metronomes; hand-held calculators; diving suits; gloves for divers; divers' masks; taximeters; particle accelerators; telephone sets; telephone wires; telephone receivers; telephone transmitters; telegraph wires; telegraphs (apparatus); teleprompters; telescopes; theodolites; thermostats; thermostats for vehicles; tone arms for record players; sound recording films; sound recording apparatus; tape-recorders; sound locating instruments; sound carriers; sound transmitting apparatus; sound amplifiers; sound-reproducing apparatus; portable stereos; walkie talkies; transistors (electronic); drying apparatus for photographic prints; drying racks (photography); peepholes (magnifying lenses) for doors; electric door bells; power surge protection equipment; monitoring apparatus, electric; training dolls for resuscitation (instructional apparatus); filters for ultraviolet rays, for photography; clothing for protection against accidents; shoes for protection against accidents, irradiation and fire; gloves for protection against accidents; nets for protection against accidents; protection devices for personal use against accidents; teaching apparatus; audiovisual teaching apparatus; urinometers; vacuum gauges; variometers; pressure indicator plugs for valves; junction sleeves for electric cables; connectors (electricity); enlarging apparatus (photography); traffic light apparatus (signalling devices); surveying apparatus and instruments; surveying chains; shutters (photography); amplifier tubes or amplifier lamps, distribution boxes (electricity); electricity distribution boards; videotapes; video display screens; video cameras; video cassettes; video recorders; video game cartridges; viscosimeters; voltmeters; apparatus for changing record player needles; scales; voting machines; heat regulating apparatus; vehicle warning triangles; washing trays (photography); water level indicators; water depth meters; spirit levels; intercommunications apparatus; wavemeters; resistances, electric; anemometers; wind socks for indicating wind direction; carpenters' rules; protractors [measuring instruments]; rods for water diviners; counters; meters; animated cartoons; time recording apparatus; time switches, automatic; reducers (electricity); sighting telescopes for firearms; compasses (measuring instruments); batteries for lighting; cyclotrons.
Class 35: Advertising; Business management; Business administration; Office functions; Updating of advertising material; Temporary personnel services; Cost price analysis; Business inquiries; Business management and organization consultancy; Procurement services for others [purchasing goods and services for other businesses]; Import-export agency services; Business consulting services; Business auditing; Business auditing; Computerised file management; Advertising agencies; Property development, namely organisational preparation of building projects; Tax consultancy, namely tax preparation; Auditing; Auctioneering; Transcription of communications [office functions]; Relocation services for businesses; Development of utilization concepts for real estate (facility management); Business investigations; Invoicing services (office functions); Compilation of statistics; Drawing up of business expert reports; Business efficiency expert services; Drawing up statements of account; Economic forecasting; Commercial information agencies; Consumers (Commercial information and advice for -) [consumer advice shop]; Invoicing; Photocopying services; Publication of publicity texts; Commercial or industrial management assistance; Business information; Commercial administration of the licensing of the goods and services of others; Attracting customers and customer care by means of mail advertising (mailings); Layout services for advertising purposes; Payroll preparation; Modeling for advertising or sales promotion; Marketing (market research); Market research; Opinion polling; Sales promotion for others; Data search in computer files for others; Business research; Public relations services; Organisation and arranging of advertising events; organizing and arranging Exhibitions for commercial or advertising purposes; business-organization consultancy; Organization consultancy; Organisational project management in the electronic data processing sector; Outsourcing services [business assistance]; Employment agencies; Personnel recruitment; Psychological testing for the selection of personnel; Personnel management consultancy; Maintenance of data in computer databases; Outdoor advertising; advertising planning services; Planning and monitoring of business developments with regard to organisational matters; business management assistance; Presentation of goods on communication media, for retail purposes; Price investigations for goods and services; Price comparison services; News clipping services; Shop window dressing; Typing services; Secretarial services; Sponsoring in the form of advertising; Sponsorship search; Shorthand; Systemization of information into computer databases; Telephone answering for unavailable subscribers; Billing of telephone costs; Telemarketing services; Word processing; Temporary personnel services; Business consultancy services; Organisation of trade fairsfor commercial or advertising purposes; Consumer consultancy; Dissemination of advertisements; Writing of publicity texts; Rental of office machines and equipment, included in class 35; Rental of photocopying machines; Rental of vending machines; Rental of sales stands; Rental of advertising space, including on the Internet (banner exchange); Publicity material rental; Rental of advertising time on communication media; Arranging subscriptions to telecommunication services for others; Providing of addresses for advertising purposes; Providing of business and commercial contacts, including via the Internet; negotiation of commercial transactions for others, also by means of e-commerce; Arranging cell phone contracts (for others); Arranging of contracts, for others, for the buying and selling of goods; Arranging of contracts for others for the provision of services; Arranging of contracts with electricity suppliers; Arranging advertising and promotional contracts, for others; Temporary personnel services; Arranging newspaper subscriptions for others; Direct mail advertising; Management of foreign business interests; Document reproduction; Administrative processing of purchase orders; Demonstration of goods for advertising services; Presentation of goods and services; Business appraisals; Compilation of information into computer databases.
Class 41: Translation; Videotaping; Education information; Providing of training; Recreation information; Providing karaoke services; Vocational retraining; Vocational guidance [education or training advice]; Operating of a discotheque; Bookmobile services; Boarding schools; club services [entertainment or education]; Casino facilities [gambling] (Providing -); Camp services (Holiday -) [entertainment]; Health club services [health and fitness training]; Golf facilities (Providing -); Nursery schools; Museum facilities (Providing -) [presentation, exhibitions]; Night club entertainment; amusement arcade services; Providing sports facilities; Recording studio services; Management of music-halls; Amusement parks; Library services; Coaching [training]; Training (Practical -) [demonstration]; Electronic desktop publishing; Entertainer services; Providing recreation facilities; Gymnasium services; Recording studio and television studio services; Services of a publishing house (excluded printing services); News reporter services; Disc jockey services; Language interpreter services; Personal trainer services [fitness training]; Services of schools [education]; Zoological garden services; Sign language interpretation; Conducting fitness classes; Presentation of live show performances; Educational examination services; Organising of games in the Internet; Dance events; Entertainment ticket agency services; Photographic reporting; Subtitling; Academies [education]; Provision of tuition; Correspondence courses; Television entertainment; movie studios; Film production, other than advertising films; cinema presentations; Photography; Gambling; Gymnastic instruction; Publication of texts, other than publicity texts; Entertainment information; Calligraphy services; Music composition services; Layout services other than for advertising purposes; Microfilming; Modeling for artists; Video tape editing; Orchestra services; Production of music; Game services provided on-line from a computer network; Providing on-line electronic publications, not downloadable; On-line publishing of electronic books and periodicals; Organization and conducting of cultural and sporting events; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of concerts; Arranging and conducting of fashion shows for entertainment purposes; Arranging and conducting of symposiums; Organisation of fashion shows for entertainment purposes; Advisory services relating to education; Entertainment party planning; Human resources development by basic and advanced training; Booking of seats for shows; Production of shows; Publication of printed matter, including in electronic form, except for advertising purposes; Publication of periodicals and books in electronic form, including on the Internet; Religious education; Radio entertainment; Provision of training courses; Sporting and cultural activities; Dubbing services; Theatre productions; Animal training; physical fitness training; Physical education; Entertainment; Arrangement of sports competitions; Arranging and conducting of seminars; Workshops (Arranging and conducting of -) [training]; Arranging and conducting of colloquiums; Organisation of exhibitions for cultural or educational purposes; Organization of balls; Organization of lotteries; Arranging of beauty contests; Organization of shows [impresario services]; Competitions (Organization of -) [education or entertainment]; Script writing services; Editing of texts (except publicity texts); Rental of audio equipment; Rental of lighting apparatus for theatrical sets or television studios; Rental of stage scenery; Rental of video cameras; Rental of movie projectors and accessories; Rental of motion pictures; Rental of musical instruments; Rental of radio and television sets; Game equipment rental; Rental of toys; Rental of sports equipment, except vehicles; Rental of sports grounds; Rental of skin diving equipment; Rental of stadium facilities; Rental of tennis courts; Rental of stage scenery; Rental of sound recordings; Rental of camcorders; Publication of books; Videotape film production; Rental of video tapes; Rental of video cassette recorders; Timing of sports events; Circus performances; Production of radio and television programmes.
The contested goods and services are the following:
Class 25: Sport shoes; Sports clothing; Sportswear; Sports clothing; Articles of sports clothing; Footwear for sport; Sneakers; Sneakers [footwear].
Class 41: Organising of sports competitions and sports events.
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 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.
Contested goods in Class 25:
The contested sport shoes; sportswear; footwear for sport; sneakers; sneakers [footwear]. are similar to a low degree to the opponent´s shoes for protection against accidents in Class 9, as they both share the same nature, end users and method of use.
The contested sports clothing; sportswear; sports clothing; articles of sports clothing are similar to a low degree to the opponent´s clothes for protection against accidents in Class 9, as they both share the same nature, end users and method of use.
Contested services in Class 41:
The contested organising of sports competitions and sports events includes, as a broader category, or overlap with, the opponent’s arrangement of sports competitions. As the Office cannot dissect ex officio the broader category of the contested services, they are considered identical to the opponent´s services.
- 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 contested goods and services which are identical or similar to a low degree, are directed at the public at large, for example sneakers [footwear] in Class 25, and some are more specialised services directed at business customers with specific professional knowledge or expertise, for example organising of sports competitions in Class 41. The degree of attention may vary from average to above average. Some of the services involved are organised for a high number of people and need a lot organisational skill for arranging the place where the event takes place, contacting people interested, take security measures, etc. In these cases the level of attention will be above average.
- The signs
BLACK FRIDAY | |
Earlier trade mark | Contested sign |
The relevant territory is Germany.
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).
Part of the relevant public will understand the coinciding words ‘BLACK FRIDAY’ as a reference to the American tradition taking place the first day after Thanksgiving, noted as the first day of traditional Christmas shopping, during which crowds of consumers are drawn to special offers by retailers. This tradition has been adopted by many European countries and is reasonable to think that, at least a part of the public, is familiar with it in the German context. This verbal element enjoys an average degree of distinctiveness, as it will not be directly associated with the relevant goods and services.
The word ‘SPORT’, included in the contested sign, forms part of the German language and will be associated to all types of physical activity that people do to keep healthy or for enjoyment and will be immediately seen as a direct reference to the goods or services provided. Consequently it is devoid of any distinctive character.
Beside the verbal elements, the contested sign contains a representation of a chronometer with a running flame. In the context of the relevant goods and services, the figurative device is weak since it may be perceived as an apparatus that is used when doing sports, such as to measure the time while running. Moreover, 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).Therefore, the words ‘BLACK FRIDAY’ are the most distinctive ones.
Regarding the slightly fancy typeface in which the verbal elements of the contested sign are written, this stylisation must be considered not that overwhelming and it will not lead the consumer’s attention away from the words it is supposed to embellish.
Neither of the marks under comparison has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the verbal elements ‘BLACK FRIDAY’, meaning that the whole earlier mark is contained in the contested sign, being its most distinctive elements. They differ in the figurative element of the chronometer and the word ‘SPORT’ included in the contested sign. However, taking into account, that the differing verbal element is non-distinctive and the figurative element has a weak distinctive character for the goods and services at issue, the signs are visually similar to an above average degree.
Aurally, the pronunciation of the signs coincides in the sound of the words /BLACK/ and /FRIDAY/ and differs on account of the sound of the word /SPORT/, which is non-distinctive in relation to the goods and services in question. Therefore, the signs are similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Consequently, there is a conceptual similarity between the signs on account of the coinciding elements ‘BLACK FRIDAY’. They differ in the additional concepts present in the contested sign, conveyed by the non-distinctive element ‘SPORT’ and by the weak figurative device. However, these latter elements have less impact for the public. Therefore, the marks 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. The distinctiveness of the earlier mark must be seen as average for the relevant services.
e) Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
The goods and services have been found to be identical, similar to a low degree The level of attention varies from average to above average and the earlier mark has a normal degree of distinctiveness.
The marks are visually similar to an above average degree, aurally and conceptually (for a part of the public) to a high degree
In addition, account should also 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
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).
For the goods that are similar to a low degree, applying the interdependence principle, the presence of the word element ‘BLACK FRIDAY’ in both signs outweighs the low degree of similarity between some of the goods, and, therefore, a likelihood of confusion exists also for them.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or, even if only similar to a low degree, to the goods and services of the earlier trade mark.
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
Chantal VAN RIEL | Alexandra APOSTOLAKIS | Richard BIANCHI |
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