N | Decision 2761818

Date Published: Sep 22, 2017

OPPOSITION No B 2 761 818

New Balance Athletics, Inc., 100 Guest Street, Boston Massachusetts 02135, United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Nord’Ways, 166 Avenue des Aureats, 26000 Valence, France (applicant), represented by Mark & Law, 7, Rue des Aulnes – Bâtiment B, 69410 Champagne au Mont d’Or, France (professional representative).

On 05/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 761 818 is partially upheld, namely for the following contested goods:

Class 25:        Footwear; boots; running shoes; cycling shoes; dance shoes; football boots; beach shoes; athletics shoes; work footwear; footwear made of wood; leather shoes; canvas shoes; infants’ footwear; leisure shoes; over boots; wooden shoes; footwear for professional use; insoles for footwear; clothing, footwear, headgear; articles of clothing in general, footwear, headgear.

2.        European Union trade mark application No 15 487 192 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 487 192, namely against all the goods in Class 25. The opposition is based on, inter alia, international registration No 1 186 823 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.

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 registration No 1 186 823 designating the European Union.

1. The goods

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

Class 25:        Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; sweatshirts.

The contested goods are the following:

Class 25:        Footwear; non-slipping devices for footwear; boots; shoe straps; running shoes; cycling shoes; dance shoes; football boots; beach shoes; athletics shoes; work footwear; footwear made of wood; leather shoes; canvas shoes; infants’ footwear; leisure shoes; over boots; shoe uppers; fittings of metal for footwear; thongs (footwear); wooden shoes; shoe soles; heelpieces for footwear; welts for footwear; upper toe caps (parts of footwear) ; toe caps (parts of footwear); toe boxes; footwear for professional use; studs for sports footwear; studs for football boots; protective metal members for shoes and boots; tongues or flaps for shoes or boots; golf cleats; footwear soles for use in repairs; insoles for footwear; clothing, footwear, headgear; articles of clothing in general, footwear, headgear.

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 ‘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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

The contested footwear (listed three times) includes, as a broader category, the opponent’s athletic apparel, namely, footwear. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Similarly, the contested headgear (listed twice) includes, as a broader category, the opponent’s athletic apparel, namely, hats. 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 clothing and articles of clothing in general include, as a broader category, the opponent’s athletic apparel, namely, shirts. 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 running shoes, cycling shoes, football boots, athletics shoes, canvas shoes are included in the broad category of the opponent’s athletic apparel, namely, footwear. Therefore, they are identical.

The contested boots, leather shoes, leisure shoes overlap with the opponent’s athletic apparel, namely, footwear. 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 insoles for footwear are similar to the opponent’s athletic apparel, namely, footwear, since insoles are important parts of various kinds of footwear. These goods are likely to be produced by the same manufacturers and distributed through the same channels. Furthermore, they are complementary and may have the same relevant public.

The contested dance shoes, beach shoes, work footwear, footwear made of wood, infants’ footwear, over boots, wooden shoes, footwear for professional use are similar to the opponent’s athletic apparel, namely, footwear, since they have the same general purpose and method of use, may have the same distribution channels, target the same users and could be expected to be manufactured by the same undertakings.

The contested non-slipping devices for footwear, shoe straps, shoe uppers, fittings of metal for footwear; thongs (footwear), shoe soles, heelpieces for footwear, welts for footwear, upper toe caps (parts of footwear), toe caps (parts of footwear), toe boxes, studs for sports footwear, studs for football boots, protective metal members for shoes and boots, tongues or flaps for shoes or boots, golf cleats are parts and accessories for footwear. Although there is a degree of complementarity between some of these goods and the opponent’s athletic apparel, namely, footwear, it is not sufficient to find similarity between these contested goods and the opponent’s goods in Class 25. They have different natures and purposes, they may target different consumers and be distributed through different channels, and they are manufactured and provided by different undertakings. Therefore, they are dissimilar.

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

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 earlier mark is a figurative mark consisting of an upper case letter ‘N’, which is slightly inclined to the right and has a thick black border.

The contested sign is a figurative mark consisting of an upper case letter ‘N’, which is slightly inclined to the right and placed on the right side of a black circle; a horizontal white line extends to the left from the left leg of the letter.

The established practice of the Office is that single letters convey concepts. The public in the relevant territory will perceive the letter ‘N’ in the marks as a letter of the Latin alphabet (08/05/2012, T-101/11, G, EU:T:2012:223, § 56). The distinctiveness of the letter ‘N’ in both marks is seen as normal, since it does not directly describe or allude to any characteristics of the relevant goods. The circle in the contested sign merely serves as a background for the letter ‘N’ and is decorative in nature. Similarly, the line in the contested sign is a simple geometric shape and, therefore, does not in itself possess any distinctive qualities.

Neither the earlier mark nor the contested sign has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they depict a stylised letter ‘N’ inclined to the right. The letter ‘N’ appears in both marks in a fairly standard typeface, however, with slightly rounded corners in the case of the contested mark.

Although in the contested sign the letter ‘N’ is placed on the right side of a circle and, in addition, a horizontal line extends from its left leg, its font is almost the same as that of the earlier mark: both letters are depicted in a bold italic upper case typeface and the letter ‘N’ in each sign is inclined to the right at the same angle. Admittedly, the additional elements and the differences in the figurative composition of the contested sign, namely the circle, the horizontal line extending from the left leg of the letter ‘N’ and the fact that the letter ‘N’ is positioned on the right side of the circle, will not go unnoticed by the relevant consumer. However, the configuration of these elements is not so striking as to have a substantial influence on the overall visual impression created by the contested sign, since its most significant element remains the letter ‘N’. Therefore, the graphic differences between the marks are not of such a nature as to completely divert the relevant consumers’ attention from the perception of the coinciding letter ‘N’ or to create significant visual differences between the marks. Consequently, the signs are visually similar to a higher than average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letter ‘N’, present identically in both signs. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The graphic elements of the contested sign, namely a black circle and a white line, will not be associated with any particular concept, since the relevant public will perceive them as forming a background to and decorating the letter ‘N’, with no influence on the meaning of the sign. Therefore, 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 marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier international registration No 1 186 823 enjoys a high degree of distinctiveness as result of its long-standing and intensive use in the international marketplace, including the European Union, in connection with goods in the field of footwear and apparel and, above all, the area related to the practice of amateur and/or professional sports. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence within the time limit to substantiate the earlier marks and to submit any further facts, evidence and arguments, which ended on 28/02/2017:

• Two undated images from the opponent’s website (www.newbalance.co.uk) showing promotional material relating to sports shoes and stating, in addition, that New Balance Athletic Shoe, Inc., opened its UK factory in August 1982, and therefore has an established presence on EU territory stretching back over 30 years.
• A copy and an English translation of a decision, dated 29/06/2016, issued by the Spanish Patent and Trade Mark Office, in opposition proceedings filed against Spanish trade mark application No 3 589 643 for the figurative mark , registered for goods in Class 25. The Spanish Patent and Trade Mark Office upheld the opposition ‘given than the mark of the applicant could take unfair advantage of the well-known nature of the earlier marks in their sector or prove detrimental to the distinctive character of those marks’.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that any of the earlier trade marks on which the opposition is based have acquired a high degree of distinctiveness through their use.

In particular, the undated images submitted by the opponent do not demonstrate that any of the earlier marks were used in the relevant territory within the relevant period or the extent to which they have been used. They do not, a fortiori, demonstrate long-standing and intensive use of the marks, or the degree of recognition among the relevant public.

As far as the decision issued by the Spanish Patent and Trade Mark Office is concerned, it must be noted that decisions of national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings. In the present case, the opponent, in its observations of 27/02/2017, listed, in general terms, what kind of evidence was submitted before the national authority in the abovementioned proceedings and noted that the Office could deem it appropriate for it to submit in the present proceedings copies of all the documents placed on file in that previous case in Spain as proof of the reputation of the opponent’s marks. In this regard, the Opposition Division notes that, in order to be taken into account in the present proceedings, the evidence referred to by the opponent should have been submitted within the time limit given for the opponent to substantiate the earlier rights and submit further material, namely until 08/02/2017. However, the only evidence submitted in this regard was a copy and an English translation of the abovementioned decision issued by the Spanish Patent and Trade Mark Office. Considering that there might be differences between the substantive and procedural conditions applicable in national proceedings and those applied by the Office, this evidence is not sufficient for a finding of enhanced distinctiveness. The Opposition Division also notes that, in any event, in the present case, there is no need to assess the evidence submitted in the abovementioned national proceedings in depth, because the question of whether or not the earlier trade marks enjoy enhanced distinctiveness can be left open, as it will not be decisive for the outcome of the present case (03/08/2017, R 359/2017-5, N, § 8).

Consequently, the assessment of the distinctiveness of the earlier mark (international registration No 1 186 823 designating the European Union) 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

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/or 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).

As concluded above, the contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods and they target the public at large, which has an average degree of attention. The degree of distinctiveness of the earlier mark is average.

The signs are similar to the extent that they both contain a letter ‘N’. The differences between the signs are limited to the secondary decorative elements of the contested sign, which, although they create some visual differences between the marks, cannot outweigh the similarities resulting from the presence of the letter ‘N’ depicted in very similar manner in both signs. Therefore, as explained in section c), the signs are considered visually similar to a higher than average degree and aurally and conceptually identical.

Even taking into account the fact that for the relevant goods in Class 25 the visual aspect plays a greater role (since generally in shoe and clothes shops customers can themselves either choose the goods they wish to buy or be assisted by the sales staff and, therefore, the visual perception of the marks in question will generally take place prior to purchase), the visual differences between the signs, arising from the secondary decorative or non-distinctive elements of the contested sign, are not capable of counteracting the similarities resulting from the identical element ‘N’. Therefore, 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), and the consumer is likely to believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings.

Taking into account 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), the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is partly well founded on the basis of the opponent’s international registration No 1 186 823 designating the European Union. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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:

• European Union trade mark registration No 103 614 for the figurative mark , registered for bags for carrying sports articles; tote bags in Class 18 and hats, sweat bands, visors, T-shirts, sport shirts, singlets, running shorts, running suits, all-weather suits, recreational tops and shorts, socks, athletic shoes, walking shoes, boat shoes, aerobic dancing shoes and hiking boots in Class 25; and

• European Union trade mark registration No 103 754 for the figurative mark, registered for boots and shoes, including shoes for athletics and sports in Class 25.

The other earlier rights invoked by the opponent are less similar to the contested sign. This is because they contain further figurative elements, such as the pattern of the letter ‘N’ in earlier mark No 103 614 and the image of a sports shoe in earlier mark No 103 754, that are not present in the contested sign. Moreover, they are registered for the same or similar goods in Class 25 to those of international registration No 1 186 823 and none of them, including the goods in Class 18 of EUTM No 103 614, can be considered identical or similar to the contested goods that were found to be dissimilar. With regard to the enhanced distinctiveness of these marks, the same reasoning as indicated in section d) applies. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected and 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

Janja FELC

Rasa BARAKAUSKIENE

Judit NÉMETH

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.