FITFLY | Decision 2660762

Date Published: May 17, 2018

OPPOSITION No B 2 660 762

IIC-Intersport International Corporation GmbH, Wölflistr. 2, 3006 Bern, Switzerland (opponent), represented by Wilson & Berthelot, 22, rue Bergère 75009 Paris, France (professional representative)

a g a i n s t

Shanghai Fitfly Intelligence Science & Technology Co. Ltd., Room 02-50 B1, No.270 Songhu Road, Yangpu District, Shanghai, People's Republic of China (applicant), represented by Würth & Kollegen, Sögestr. 48, 28195 Bremen, Germany (professional representative).

On 20/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 660 762 is upheld for all the contested goods, namely 

Class 9: Protective helmets; protective helmets for sports; protection devices for personal use against accidents; goggles for sports; anti-glare glasses; gloves for protection against accidents; goggles; protective masks; safety restraints, other than for vehicle seats and sports equipment; riding helmets.

2.        European Union trade mark application No 14 819 081 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 819 081, namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 2 679 215. 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 2 679 215. 

1. The goods

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

Class 9: Spectacles, particularly sports glasses and sun glasses; protective helmets for sports.

Class 25: Clothing, footwear, headgear.

Class 28: Sporting articles included in this class, including roller skates, in-line skates, skateboards, snowboards, ice skates, sporting equipment for roller skating, in-line skating, skateboarding, sledding, ice skating and for winter sports that slide over snow, including boards and skis of all kinds; wrist pads, elbow guards, shoulder pads, ankle pads, shin guards, and knee guards, sports bags for carrying sports articles; protective paddings (parts of sports suits).

The contested goods are the following:

Class 9: Protective helmets; protective helmets for sports; protection devices for personal use against accidents; goggles for sports; anti-glare glasses; gloves for protection against accidents; goggles; protective masks; safety restraints, other than for vehicle seats and sports equipment; riding helmets.

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.

Protective helmets for sports are identically contained in both lists of goods.

The contested riding helmets are included in the broad category, or overlap with, the opponent’s protective helmets for sports. Therefore, they are identical.

The contested protection devices for personal use against accidents, protective helmets include, as broader categories, the opponent’s protective helmets for sports. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The term ‘particularly’ used in the opponent’s list of goods indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T 224/01, Nu Tride, EU:T:2003:107). Consequently, the contested goggles for sports, anti-glare glasses, goggles are included in the broad category of, or overlap with, the opponent’s spectacles, particularly sports glasses and sun glasses. Therefore, the goods are identical.

The rest of the contested goods are other types of articles used to protect various parts of the body against the loss of life or limb. Albeit different in nature, these goods have the same purpose as that of the opponent’s goods in Class 9. They are directed at the same consumers, for instance those who practice motor sports, action sports or work in the police, military forces or firefighting. Furthermore, these goods can be expected to originate from the same manufacturers and are distributed over the same, specialised commercial channels.

Therefore, the contested gloves for protection against accidents, protective masks, safety restraints, other than for vehicle seats and sports equipment are similar to the opponent’s protective helmets.

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 as well as the professional public, such as professional motorcyclists, drivers, police, military officers or firefighters. The degree of attention will range from average, for example for goggles, to high, in particular in the context of protective equipment, as the health and safety concerns will prompt even the public at large to carefully examine labels and request professional assistance.

3. The signs

FIREFLY
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.

The earlier mark is a word mark “FIREFLY” while the contested sign is a figurative mark consisting of the word “FITFLY” written in standard black capital letters, with a curved line under the letters “FLY”.

Visually, the signs coincide in their initial two letters “FI” and last three letters “FLY”, although this latter sequence is in a slightly different position in the two signs, consisting of the fifth to the seventh letters in the earlier sign and the fourth to the sixth letters in the contested sign.

The signs differ in the earlier sign’s third and fourth letters “RE” and the contested sign’s third letter “T”. The curved line in the contested sign, although being a non-distinctive basic graphic shape, does have a certain visual role in the sense that it underlines and thereby emphasises the coinciding ending “FLY”.

Given that the signs coincide in their initial two and final three letters, and differ in one or two letters in their middle, the signs are visually similar to a high degree.

 

Aurally, the pronunciation of the signs coincides in the sound of their initial letters “FI” and their last letters “FLY”, which either will be pronounced as in English or as “FLI”. The pronunciation will differ in the third and fourth sounds “RE” of the earlier sign and the third sound “T” of the contested sign. Despite the slightly different position of the coinciding last three letters, the rhythm of pronunciation of the two signs will be quite similar as even in the contested sign, the relevant public will take a pause between the two consonants, “T” and “F”, i.e. “FI-RE-FLY/FLI” and “FI-T*-FLY/FLI.

Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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 covered are from the same or economically linked undertakings.

Moreover, account is taken of the fact that consumers, even attentive ones, rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The goods are identical or similar and the signs are visually and aurally similar to a high degree. The degree of distinctiveness of the earlier mark is normal. None of the signs will be associated with a concept which would help the public differentiate between the signs.

The signs visually and aurally coincide in their initial two and last three letters. The differences in one or two letters placed in the middle of the signs will not have such a striking impact on the consumers which would be sufficient to offset the similarities and thus exclude a likelihood of confusion as to the commercial origin of the goods.

Considering all the above, there is a likelihood of confusion on the part of the French-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. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration 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

Justyna GBYL

Marianna KONDAS

Ric WASLEY

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.