Follow Your Passion | Decision 2719527 - Marc O'Polo License AG v. MG Sport
Date Published: Sep 28, 2017
OPPOSITION No B 2 719 527
Marc O'Polo License AG, Hofgartenstraße , 83071 Stephanskirchen, Germany (opponent), represented by Brandstock Legal Rechtsanwaltsgesellschaft MBH, Rückertstr. 1, 80336 München, Germany (professional representative)
a g a i n s t
MG Sport, Via Crocefisso 8, 20122 Milano, Italy (applicant).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 719 527 is partially upheld, namely for the following contested goods
Class 25: Sports caps; unitards; sportswear; sports jerseys; running suits; running vests; running shoes; shell jackets.
2. European Union trade mark application No 15 211 691 is rejected for all the above goods. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 211 691. The opposition is based on European Union trade mark registration No 11 625 571. 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 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, dentifrices; Deodorants, perfumes, scented water, eau de parfum, eau de toilette, aftershave, essential oils, shampoos, only being combined hair shampoo and shower gel products, cosmetics, make-up articles, eye shadow, mascara, eye make-up, lipsticks, lip gloss, non-medicated lip balm, lip pencils, make-up, face powder, rouge, make-up in powder compacts, cosmetic cleansers, make-up removing preparations, cosmetic skin care products, skin creams, lotions for cosmetic purposes, cosmetic masks, body lotions, body oils, body gels for cosmetic purposes, body and facial scrubs, shaving preparations, shaving balms, after-shave lotions, non-medicated preparations for the bath, bath crystals, shower foams, shower gels, massage oils, nail varnish, nail care preparations, sunscreen preparations, sun blocks, shoe polish.
Class 8: Manually operated tools; cutlery; razors; cultery, cutlery (tableware), salad servers, serving cutlery and utensils, knives, silverplate.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines and data processing equipment and computers; fire-extinguishing apparatus; eyeglass, frames for glasses, frames for eyeglasses, spectacle temples, spectacle lenses, optical glasses, sunglasses, goggles for sports, protective eyewear, accessories for spectacles, spectacle cases, fitted cases, leather cases and carrying bags for data processing apparatus, in particular mobile telephones, notebooks and laptops, smart phones; binoculars.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith not included in other classes; jewellery, precious stones; horological and chronometric instruments; watchstraps, jewellery.
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols, and walking sticks; whips, harness and saddlery; bags, handbags, travelling bags, school bags, school knapsacks, backpacks, vanity cases, not fitted, purses, pocket wallets, briefcase, key cases, cosmetic cases, map holders, leather cases, leather cases having zips, waist pouches, belt bags, folders made of leather, travelling sets (leatherwear), small leather goods, leather accessories, included in this class.
Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whale bone, shell, amber, mother of pearl, meerschaum and substitutes for all of these materials, or of plastics; picture frames, cushions, decorative cushions, pillows, seat cushions, coat hangers, newspaper stands, coat stands (furniture), baskets, not of metal, furnishings and home furnishing articles of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; holders for curtains, curtains holders, not of textile, bottle closures, not of metal.
Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes), brush-making materials; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware (not included in other classes); planters, flower pots, flower pot covers, tins, soap dishes and boxes, crockery, tableware, other than knives, forks and spoons, coffee and tea trays, drinking vessels, coffeepots and teapots, glasses, cups, jugs, pitchers, decanters, drinking flasks, cookware, frying utensils and bakeware, pots, pans, mats, bottle coolers, wine and sparkling wine buckets, trays, domestic bread baskets, egg cups, candelabra, candlesticks, soap dispensers, perfume sprayers and atomisers, vases, bottle openers, corkscrews, coolers (ice pails), salt and pepper shakers, pepper mills, napkin rings, napkin holders, knife rests, tea light holders, pot holders, oven gloves, underplates, plates, bowls, salad bowls, storage boxes and containers, oil and vinegar cruet stands, cooking spoons, basting spoons, for kitchen use, mixing spoons, champagne buckets.
Class 24: Textiles and textile goods, not included in other classes; bed and table covers; bed linen, bed sheets, fitted bed sheets, bed covers, mattress covers, bed sheets, goods of terry-towelling, hand towels, bath linen, bath towels, beach towels, face cloths, blankets, coverlets, table covers, table clothes, textile napkins, flats, table runners, place mats, household linen, pillow shams, covers for cushions, pillowcases, seat covers, covers, throws, curtain, curtains, sheers, fabric, handkerchiefs of textile, quilts (bedspreads), table cover piece goods, kitchen textiles, teatowels, shower curtains of textile or of plastic sheets, holders for curtains, curtain holders of textile material.
Class 25: Clothing, footwear, headgear; clothes for men, women and children, trousers, denim pants, coats, dress, skirts, suits, neckties, bath robes, night wear, aprons for cooking, underclothing, lingerie, underwear, foundation garments, hosiery, socks, belts, suspenders, scarfs, caps [headwear], collar protectors, gloves, shields, head bands, articles of swimwear, clothing for babies and children, leisure and city shoes for gentlemen and ladies, infants' shoes; clothing, footwear and headgear for sports, in particular for jogging, fitness training, gymnastics, yoga, golf, tennis, squash, badminton, water sports, sailing, surfing, canoeing, diving, rowing, alpine skiing, cross-country skiing, snowboarding, football, basketball, handball, volleyball, baseball, inline skating, skateboarding, roller-skating, hockey, ice hockey, ice-skating, american football, cycling, equestrian sports; knitwear (clothing), hiking, trekking, climbing and outdoor clothing, hiking, trekking, climbing and outdoor footwear.
Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile); carpets, rugs, bath mats, bath mats; textile wallpaper.
Class 35: Retailing, wholesaling, online or catalogue mail order of clothing, clothing articles, fashion accessories, belts, footwear, headgear, cosmetics, toiletries, beauty care products, perfumery, essential oils, spectacles, spectacle frames, frames for glasses, sunglasses, accessories for spectacles and sunglasses, spectacle cases, leather and imitations of leather, and goods made of these materials, bags, handbags, suitcases, luggage, rucksacks, umbrellas, parasols, purses, wallets, key cases, cosmetic cases, leather cases, horological and chronometric instruments, watch straps, jewellery, costume jewellery, furnishings and decorative articles, furniture, mirrors, picture frames, cushions, decorative cushions, pillows, holders for curtains, curtain holders, bottle fasteners, textiles and textile goods, bed blankets, bed linen, fitted bed sheets, goods of terry-towelling, towels, coverlets, quilts, table linen, table covers, table mats, table runners, table cover piece goods, fabric napkins, kitchen textiles, tea towels, household fabrics, shower curtains of textile material or plastic film, holders for curtains, curtain holders of textile materials, cutlery, salad servers, tableware, forks, spoons, knives, silver plate, kitchenware and household goods, combs, sponges, brushes (except paint brushes), glassware, porcelain, earthenware, crockery, carpets, rugs, mats and matting, bath mats, bath rugs, floor coverings, wall hangings.
The contested goods and services are the following:
Class 25: Sports caps; unitards; sportswear; sports jerseys; running suits; running vests; running shoes; shell jackets.
Class 41: Sporting services; sports coaching; sporting activities; sports training; organising of racing competitions; organisation of sporting events; organisation of events for cultural, entertainment and sporting purposes.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘in particular’, used in the opponent’s list of goods shows 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).
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 sports caps are included in the broader category of the opponent’s headgear. Therefore, they are identical.
The contested unitards; sportswear; sports jerseys; running suits; running vests; shell jackets are included in the opponent’s broader category of clothing. These goods are identical.
The contested running shoes are included in the opponent’s broader category of footwear. These goods are, therefore, identical.
Contested services in Class 41
The contested sporting services; sports coaching; sporting activities; sports training; organising of racing competitions; organisation of sporting events; organisation of events for cultural, entertainment and sporting purposes have nothing in common with the opponent’s goods and services. In fact, the contested services and the opponent’s goods in Classes 3, 8, 9, 14, 18, 20, 21, 24, 25 and 27 are generally dissimilar by nature. Goods are tangible whereas services consist of the provision of intangible activities. They have different natures, methods of use, intended purposes, manufacturers and relevant distribution channels and retail outlets. Moreover, they are neither in competition with nor complementary to each other. Although in certain circumstances interdependency can be construed between goods and services, which may lead to a complementary relationship, for example, this is not applicable in the present case. Furthermore, the contested services have nothing in common with any of the opponent’s services in Class 35. Their natures and purposes differ, as do their producers, their end users and their distribution channels. Furthermore, they are neither complementary nor in competition with one another. Therefore, they are considered dissimilar.
- 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 is considered to be average.
- The signs
follow your nature | |
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The signs in their entirety are meaningless for the relevant goods for a considerable part of the public in certain territories of the European Union, such as Hungary, Czech Republic and Poland. As a result, the Opposition Division finds it appropriate to focus the comparison of the signs on this public, which will not see a meaning/message in the signs.
The earlier sign is a word mark composed of three verbal elements: ‘follow your nature’. In the case of word marks it is the word as such that is protected and not their written form. Therefore, it is irrelevant whether these elements are written in upper or lower case characters.
The contested sign is a figurative sign which contains three verbal elements, ‘Follow’ Your Passion’, written in italic characters capitalising each word and followed by a red figurative device. All these elements are represented on a black rectangle background.
All the verbal elements are perfectly distinguishable in both signs, firstly because they are written separately in the earlier mark and because they start with upper case letters in the contested sign.
As regards the figurative elements of the contested sign, such as the black background and the red device, account must be taken of the fact that 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).
The signs as a whole have no meaning in relation to the relevant goods and their distinctiveness is normal.
The signs have no elements that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in their first and distinctive verbal elements ‘follow your’, which will be easily identified by the relevant public. Furthermore, it must be noted that consumers generally tend to focus on the beginning of a sign when they see a trade mark. This is 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. Consequently, it is of relevance that the coincidence in the signs is placed at the beginning of the contested sign.
The signs differ in their third verbal elements ‘nature’ of the earlier mark and ‘passion’ of the contested sign and in the figurative elements present in the contested sign.
In view of the fact that the most important and, at the same time, distinctive verbal elements of the earlier mark are fully incorporated in the beginning of the contested sign, it is considered that they are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sounds of their two first words ‘follow your’. The pronunciation differs in the sound of the words ‘nature’ of the earlier mark versus ‘passion’ of the contested sign. Taking into account the fact that the only phonetic difference is placed at the end of both signs, the word ‘nature’ versus ‘passion’, the signs are aurally similar to an average 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.
- 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 contested goods and services have been found partly identical and partly dissimilar to the opponent’s goods and services. They are directed at the public at large with an average degree of attention.
The earlier mark and the contested sign share the same structure; they are composed of three verbal elements. Visually and aurally the signs are similar to an average degree due to the coincidence in the common verbal elements ‘follow your’, which are perfectly distinguishable (as mentioned in part c) of the present decision) and are placed at their beginnings. Consequently, these coinciding initial two words will catch immediately the attention of the relevant consumer.
The differentiating verbal elements between the signs are placed in their final parts, which make them less noticeable to the relevant public. Furthermore, the remaining figurative elements present in the contested sign are less important than the verbal elements. Consequently, these differentiating elements are not sufficient to exclude a likelihood of confusion between the marks in question.
Account is taken of the fact that average consumers 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). Therefore, considering their similar structure and length, as well as the visual and aural similarities between the signs, it is concluded that consumers, relying on their imperfect recollection of the earlier mark, may think that the contested goods, found to be identical, come from the same or economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the substantial part of the Hungarian-, Czech- and Polish-speaking part of the public. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.
The rest of the contested services 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 services cannot be successful.
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 and services both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Gueorgui IVANOV | Monika CISZEWSKA | Robert MULAC |
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.