GRAVITY WARRIOR | Decision 2688706 - Liberty Footwear Company v. Fernando Tomás García Serrano
Date Published: Sep 28, 2017
OPPOSITION No B 2 688 706
Liberty Footwear Company, Liberty House 4/42 Punjabi Bagh, New Delhi 110026, Republic of India (opponent), represented by Vossius & Partner Patentanwälte Rechtsanwälte mbB, Siebertstr. 3, 81675 Munich, Germany (professional representative)
a g a i n s t
Juan Francisco Fernández Rodríguez, C/Feria 12, 41909 Sevilla/Salteras, Spain, and Fernando Tomás García Serrano, Av. Andalucía 3, 41908 Sevilla/Castilleja de Guzmán, Spain (applicants), represented by Iglobax, C/ Astronomía 1, Torre 5, Planta 10, Oficina 5, 41015 Sevilla, Spain (professional representative).
On 12/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 688 706 is upheld for all the contested goods, namely:
Class 25: Footwear.
2. European Union trade mark application No 14 993 711 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicants bear the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 993 711, namely against some of the goods in Class 25. The opposition is based on European Union trade mark registration No 1 443 969. 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
The goods on which the opposition is based are the following:
Class 25: Shoes and boots for women, men and children excluding athletic footwear, sneakers and basketball shoes.
The contested goods are the following:
Class 25: Footwear.
An interpretation of the wording of the opponent’s list of goods is required to determine the scope of protection of these goods.
The term ‘excluding’, 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 .
The contested footwear in Class 25 includes as a broader category the opponent’s shoes and boots for women, men and children excluding athletic footwear, sneakers and basketball shoes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
- 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 average.
- The signs
WARRIOR |
|
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.
The signs in question include English words and, since the common element ‘WARRIOR’ is meaningful in certain territories, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the European Union.
The earlier trade mark ‘WARRIOR’ is a word mark and the contested sign is a figurative mark composed of the words ‘GRAVITY WARRIOR’ and a blue circle. The blue circle contains a device that resembles a geometrical figure with wings made up of three horizontal stripes on either side of a trapezoid that has a star in its lower part; above and below the trapezoid are shapes that, overall, resemble triangles. Below the blue circle is the word ‘GRAVITY’, under which is the word ‘WARRIOR’, both in standard upper case letters that are shaded in grey to give a three-dimensional effect.
The contested sign has no elements that could be considered clearly more distinctive or dominant than other elements in the perception of the relevant public.
The element ‘GRAVITY’ of the contested sign will be perceived by the relevant public as meaning ‘The force that attracts a body towards the centre of the earth, or towards any other physical body having mass’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/gravity).
The element ‘WARRIOR’, which constitutes the earlier mark and is the second verbal element of the contested sign, will be understood by the relevant public to mean ‘(especially in former times) a brave or experienced soldier or fighter’ (information extracted from Oxford Dictionaries at https://en.oxforddictionaries.com/definition/warrior). Since the contested sign combines this word with the word ‘GRAVITY’, the relevant public would perceive this sign as meaning something like ‘a warrior who fights gravitational force’.
Neither of the word elements is descriptive, allusive or otherwise weak for the relevant goods, and therefore they are distinctive.
Visually, the signs coincide in the word ‘WARRIOR’, which constitutes the entire earlier mark and is fully included in the contested sign, although, in the contested sign, it is depicted in a stylised way. The marks differ in the additional and first verbal element of the contested sign, namely the word ‘GRAVITY’, and in the figurative elements of the sign, which comprise a blue circle with a grey device inside it and the stylisation of the words ‘GRAVITY WARRIOR’.
It should be noted 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). Therefore, the blue circle in the contested sign will not attract the consumer’s attention as much as the words ‘GRAVITY WARRIOR’.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘WAR/RI/OR’, present identically in both signs. The pronunciation differs in the sound of the letters constituting the additional word ‛GRAV/I/TY’ of the contested sign, which has no counterpart in the earlier mark.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. It is true that they both evoke the concept of ‘WARRIOR’, but, since in the contested sign this concept is altered by the presence of the word ‘GRAVITY’, which results in the overall meaning ‘a warrior who fights gravitational force’, the signs are conceptually dissimilar.
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 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 in Class 25 are identical to the opponent’s goods in the same class; these goods target the public at large, whose degree of attention is considered average. The earlier trade mark is of normal distinctiveness.
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).
In the present case, the entire earlier trade mark, ‘WARRIOR’, is reproduced in the contested sign, ‘GRAVITY WARRIOR’. The contested mark contains an additional word element referring to the force of gravitation and thus the marks are conceptually dissimilar; however, the signs are visually and aurally similar to an average degree. According to the general principle of the greater importance of the verbal content of the marks and the lesser importance of their figurative elements, the additional figurative elements (a blue circle with a grey device) in the contested sign, as explained above in section c), are of secondary importance. Furthermore, the signs in question lack any dominant or more distinctive elements that could influence the overall perception of them.
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/services covered are from the same or economically linked undertakings.
As the goods in question are identical and due to the average degree of visual and aural similarity between the signs – which results from the coinciding element ‘WARRIOR’ – and the lack of any additional dominant or non-distinctive elements in the marks, there is a likelihood of confusion.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the part of the English-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 No 1 443 969. It follows that the contested trade mark must be rejected for all the contested goods in Class 25.
For the sake of completeness, the Opposition Division notes that, in their observations, the applicants argue that the earlier trade mark is composed of only one element, ‘WARRIOR’, and that there are many trade marks that include this element together with other elements. In support of this argument, the applicants refer to several European Union trade mark registrations, registered for, inter alia, goods in Class 25.
As the applicants refer to previous registrations granted by the Office to support their arguments, it should be noted that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
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 applicants are the losing party, they 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
Andrea VALISA | José Antonio GARRIDO OTAOLA | Michele M. BENEDETTI-ALOISI |
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.