Black Snow | Decision 2708942

Date Published: Oct 1, 2017

OPPOSITION No B 2 708 942

CAB 5-4, 125 chemin des Tissourds, 74400 Chamonix, France (opponent), represented by Wilson & Berthelot, 22, rue Bergère, 75009 Paris, France (professional representative)

a g a i n s t

Stefan Mädl, Dr.-Kilian-Straße 3, 92637 Weiden, Germany (applicant), represented by Cornelius Matutis, August-Bebel-Str. 27, 14482 Potsdam, Germany (professional representative).

On 08/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 942 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 107 162. The opposition is based on international trade mark registration No 1 177 827 designating the European Union. 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.

1. The goods

The goods on which the opposition is based are, among others, the following:

Class 9: Helmets, vests, elbow and knee pads for protective use in sports; helmets for skiing, helmets for hockey, bicycle helmets; sunglasses, ski goggles; ski masks; directional compasses, magnifying glasses [optical]; walkie-talkies; binoculars; life-saving devices in the event of an avalanche, namely locating apparatus and instruments, signaling whistles and signal alarms; cases especially made for photographic apparatus and instruments; covers and cases for mobile telephones and computers; cell phone straps; headphones; software for computer games and mobile telephones.

Class 28: Sports articles excluding clothing, footwear and mats; skis, bindings and poles for Alpine skiing and Nordic skiing, ski brakes; seal skins (ski coverings); snowboards, snowboard bindings; covers and cases especially designed for skis and snowboards; sledges; protective padding (parts of sports suits); bags for carrying sporting articles; surfboards, body boards, kneeboards, wakeboards, sailboards, water skis, skateboards, kiteboards.

The contested goods are the following:

Class 9: Clothes for protection against injury; spectacles [optics]; protective eyewear; helmets for use in sports; head protection; sports eyewear; protective helmets for sports; sports glasses.

Class 28: Knee guards [sports articles]; protective supports for shoulders and elbows [sports articles]; shin guards [sports articles]; sporting articles and equipment; shock absorption pads for protection against injury [sporting articles].

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 9

Helmets for use in sports are identically contained in both lists of goods (including synonyms).

The contested protective helmets for sports include, as a broader category the opponent’s helmets for skiing. 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 head protection include, as a broader category the opponent’s helmets for skiing. 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 clothes for protection against injury include, as a broader category the opponent’s vests for protective use in sports. 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 spectacles [optics] include, as a broader category the opponent’s sunglasses. 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 protective eyewear; sports eyewear; sports glasses include, as broader categories the opponent’s ski goggles. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 28

The contested knee guards [sports articles]; protective supports for shoulders and elbows [sports articles]; shin guards [sports articles]; shock absorption pads for protection against injury [sporting articles] are included in the broad category of the opponent’s sports articles excluding clothing, footwear and mats. Therefore, they are identical.

The contested sporting articles and equipment include, as a broader category the opponent’s sports articles excluding clothing, footwear and mats. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 identical are directed at the public at large. The degree of attention may vary from average to high as some of the goods may be rather expensive and all the goods are intended to protect the eyes or body of the person using these goods, like for example headgear which is supposed to save lives in case of accidents. The attention will therefore vary from average to high.

3. The signs

BLACK CROWS	Black Snow
Earlier trade mark	Contested sign

The relevant territory is the European Union.

In the case of word marks, it is irrelevant whether they are in upper or lower case letters, since the word as such is protected and not its written form. Therefore, it is immaterial whether the letters are represented in upper or lower case.

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).

‘Black’ is a word of basic English vocabulary, or anglicism, which has entered the languages of the European Union (the Court accordingly considered the colour ‘Red’ to be part of basic English vocabulary and therefore to be generally comprehensible: 28.09.2011, T-356/10, Victory Red, EU:T:2011:543, § 45). In relation to the relevant goods it only describes the colour of the protective gear in Classes 9 and 28 and is considered to be entirely non-distinctive.

The verbal element ‘snow’ in the contested sign will be understood by the English-speaking public as ‘the partially frozen vapour of the atmosphere falling in flakes characterized by their whiteness and lightness; the fall of these flakes, or the layer formed by them on the surface of the ground’ (see Oxford English Dictionary). It is considered descriptive for the protective gear which could be specially adapted for the use in snow. For the remaining part of the public it has no meaning and is, therefore, distinctive. However it also has to be mentioned that, as a whole, the contested mark is fully distinctive for the English-speaking public as the concept of the sign refers to snow of the colour black, which is rather unusual and distinctive for the goods applied for.

The element ‘CROWS’ of the earlier mark will be understood as ‘a bird of the genus Corvus’ (see Oxford English Dictionary) by the English-speaking public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. For the remaining part of the public it has no meaning and is, therefore, distinctive.

Visually, the signs coincide in the non-distinctive word ‘BLACK’ and in the string of letters ‘OW’ in the second verbal element in both signs. They differ however in the rest.

Therefore, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllable ‘Black’, which is still considered to be non-distinctive and in the letters ‘ow’ in the second verbal element in both signs. The pronunciation differs in the rest, namely the letters ‘CR’ at the beginning of the second verbal element and ‘S’ at the end of the second verbal element in the older sign and ‘SN’ at the beginning of the second verbal element in the contested sign.

Therefore, the signs are similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark will be perceived by the English-speaking public as ‘black birds of the species Corvus’ while the contested mark will be perceived as ‘snow in the colour black’. Thus, as for the English-speaking public the signs will be associated with a dissimilar meaning, the signs are not conceptually similar. For the non-English speaking part the signs are conceptually not similar. Although the coinciding word ‘black’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the other distinctive verbal elements, none of which has a meaning for the non-English speakers. Therefore, the conceptual comparison does not influence the comparison of the signs for the non-English speaking part of the public.

As the signs have been found similar in at least one aspect of the comparison, 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.

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are identical. The level of attention is considered to vary from average to high.

The similarities between the signs, which have been duly established above, mainly concern an element which is not distinctive. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

For the non-English speaking public, in spite of the coincidence in the element BLACK, there is no likelihood of confusion because BLACK is not distinctive for protective gear in Classes 9 and 28 as it only describes the colour of these goods. The second verbal element only coincides in two out of four, respectively five letters. Thus, there can be no likelihood of confusion between the marks for the non-English speaking public.

For the English-speaking public, who would not understand the verbal element ‘black’ as referring to the colour of the goods because both marks as a whole convey a clear concept (black crows versus snow in the colour black), there is also no likelihood of confusion as the signs convey different concepts.

The different elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing also in mind that the common element BLACK is descriptive for part of the public and for the part for which it is not descriptive the signs are conceptually dissimilar.  

Considering all the above, there is no likelihood of confusion on the part of the public, even for identical goods. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Tobias KLEE

Lars HELBERT

Swetlana BRAUN

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.