BODY ZONE | Decision 2613910

Date Published: Sep 28, 2017

OPPOSITION No B 2 613 910

KappAhl Sverige AB, Idrottsvägen 14, 431 24 Mölndal, Sweden (opponent), represented by Awapatent AB, Södra Hamngatan 37-41, 404 28 Göteborg, Sweden (professional representative)

a g a i n s t

Malu N.V., Nijverheidsstraat 29, 2570 Duffel, Belgium (holder), represented by Gevers, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium (professional representative)

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 613 910 is partially upheld, namely for the following contested goods:

Class 18:         Sports bags not included in other classes.

Class 25:        Clothing, namely bath clothing, sports and leisure clothing, sweatbands and wristbands, footwear, headgear.

2.        International registration No 1 236 528 is refused protection in respect of the European Union for all of 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 international registration designating the European Union No 1 236 528. The opposition is based on, inter alia, international trade mark registration No 734 887 designating Austria, the Czech Republic, Denmark, Estonia, Germany, Hungary, Latvia, Lithuania, Romania and Slovakia. 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 international trade mark registration No 734 887 designating Germany. The opponent invoked Article 8(1)(b) EUTMR.

1. The goods

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

Class 14: Goods in precious metals or coated therewith for household use and for decoration, not included in other classes, jewellery, horological and chronometric instruments.

Class 25: Clothing, footwear, headgear, gloves, belts, ties, scarves.

The contested goods are the following:

Class 18: Travelling bags, sports bags not included in other classes, umbrellas.

Class 24: Textile products, namely fabrics, towels, cloths.

Class 25: Clothing, namely bath clothing, sports and leisure clothing, sweatbands and wristbands, footwear, headgear.

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.

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 holder’s list of goods, shows that 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. Therefore, the scope of protection in Class 24 is limited to fabrics, towels and cloths, and that in Class 25 to bath clothing, sports and leisure clothing, sweatbands and wristbands, footwear, headgear.

Contested goods in Class 18

The contested sports bags not included in other classes are related to the opponent’s articles of clothing, headgear and footwear in Class 25, which are – besides being used to cover parts of the human body – also articles of sports fashion. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of outer sports clothing, headgear and also footwear as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of sports clothing, headgear and footwear to directly produce and market related goods such as sports bags. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

Umbrellas are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod. The nature of these goods is very different from that of the opponent’s goods in Classes 14 and 25. They serve very different purposes (embellishment; measuring, keeping, and indicating time; covering the human body versus protection from rain/sun). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.

The same reasoning applies to travelling bags. These goods are considered dissimilar to the opponent’s goods in Classes 14 and 25. Travelling bags are for carrying things when travelling and do not satisfy the same needs as goods in precious metals or coated therewith for household use and for decoration, not included in other classes, jewellery, horological and chronometric instruments or clothing, headgear and footwear, gloves, belts, ties or scarves. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary.

Contested goods in Class 24

The main point that textile products, namely fabrics, towels, cloths have in common with the opponent’s clothing, footwear, headgear, gloves, belts, ties, scarves is that they are or can be made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes and therefore their method of use is different.

Moreover – contrary to the opponent’s arguments – they usually have different distribution channels and sales outlets and are not manufactured by the same undertakings. Nowadays, all types of goods are offered for sale together on the internet. However, the relevant public is aware that the goods come from a multitude of independent undertakings.

Therefore, these goods are dissimilar.

Clearly the opponent’s goods in Class 14 are even further removed from the contested textile products, namely fabrics, towels, cloths. These goods have nothing in common because they serve very different purposes, are not manufactured by the same companies and do not coincide in any other criteria. Therefore, these goods are dissimilar.

Contested goods in Class 25

The contested clothing, namely bath clothing, sports and leisure clothing, sweatbands and wristbands are included in the opponent’s clothing and are therefore identical.

The contested footwear and headgear are identically included in both lists of 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 or similar are directed at the public at large. The degree of attention is considered average.

3. The signs

BODY ZONE
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).

The earlier mark is a word mark consisting of the verbal elements ‘BODY ZONE’.

The contested sign is a figurative mark consisting of the verbal elements ‘BODY ZONE’ in upper case letters placed in a banal rectangle in which the word ‘BODY’ is placed above the word ‘ZONE’.

The coinciding elements ‘BODY ZONE’, taken as a whole, will be perceived in the relevant territory, where English is widely understood, as an expression referring to ‘the area or region of the body’. However, as this expression is not sufficiently direct in relation to the relevant goods, it is not descriptive, allusive or otherwise weak and therefore enjoys a normal degree of distinctiveness’

Even though the word ‘BODY’ in the contested sign is larger than the word ‘ZONE’, the Opposition Division considers that neither element is more dominant than the other, because the word ‘ZONE’ is depicted in white on a black background, so it stands out as much as the word ‘BODY’, which is depicted in thinner black letters.

Visually, the signs coincide in the expression ‘BODY ZONE’, which, as stated above, has an average degree of distinctiveness, taken as a whole. The contested sign differs from the earlier mark in its figurative element, namely a banal rectangle, which has only a limited impact on the overall impression created by the contested sign. In addition, there is a point of visual difference insofar as the verbal elements in the contested sign are depicted in a slightly stylised manner. However, the earlier mark is a word mark, and in word marks the word as such is protected and not its written form.

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). Therefore, the coinciding verbal element ‘BODY ZONE’ will clearly have a stronger impact on the consumers than the fairly simple stylisation of the contested mark.

Therefore, the signs are considered visually similar to a high degree.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the meaning of the expression ‘BODY ZONE’ as a whole. As the verbal elements of the signs are identical and the figurative element of the contested sign does not convey any meaning, the signs are conceptually identical.

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.

5. Global assessment, other arguments and conclusion

When determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison 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).

In the present case, the conflicting goods are partly similar, partly identical and partly dissimilar. The degree of attention paid by the relevant public is average, and the marks are visually highly similar and aurally and conceptually identical.

The earlier mark and the verbal element of the contested sign are identical. Regarding the graphic depiction of the contested sign, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Therefore, the graphic depiction of the contested sign is not sufficiently striking to enable consumers to distinguish between the signs. Furthermore, consumers will probably perceive the contested sign as a figurative version of the earlier mark.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 734 887 designating Germany. It follows from the above that the contested trade mark must be rejected for the goods found to be similar and identical 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 opponent has also based its opposition on the following earlier trade marks:

• Swedish registration No 223 653 ‘BODY ZONE’ for clothing in Class 25;

• Swedish registration No 349 197 ‘BODY ZONE’ for clothing, footwear, headgear, gloves, clothing, belts (clothing), ties, mufflers and scarves in Class 25;

• Finnish registration No 104 024 ‘BODY ZONE’ for all goods in Class 25;

• Polish registration No 139 813 ‘BODY ZONE’ for clothing, footwear, headgear in Class 25;

• international registration No 734 887 ‘BODY ZONE’ designating the Czech Republic, Lithuania, Latvia, Slovakia, Estonia and Hungary for goods in precious metals or coated therewith for household use and for decoration, not included in other classes, jewellery, horological and chronometric instruments in Class 14 and clothing, footwear, headgear, gloves, belts, ties, scarves in Class 25;

• international registration No 734 887 ‘BODY ZONE’ designating Austria, Denmark and Romania for clothing, footwear, headgear, gloves, belts, ties, scarves in Class 25.

These earlier rights invoked by the opponent cover the same scope of goods as, or a narrower scope of goods than, the mark already compared above. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Julie GOUTARD

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.