OO | Decision 2683558
Date Published: Sep 28, 2017
OPPOSITION No B 2 683 558
Oofos LLC, 3983 S. McCarran Blvd. #271, Reno, Nevada 89502, United States of America (opponent), represented by Haseltine Lake LLP, Redcliff Quay, 120 Redcliff Street, Bristol BS1 6HU, United Kingdom (professional representative)
a g a i n s t
Alessandro Biasotto, via Dotti 48, 31100 Treviso, Italy (applicant), represented by Laura Baretto, Via Dei del Dente 24, 35016 Piazzola sul Brenta (PD), Italy (professional representative).
On 17/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 683 558 is totally rejected.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 961 791 namely against all the goods in Class 25. The opposition is based on International trade mark registration No 1 258 728, 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 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 Opposition Division cannot determine any element as being more distinctive than the other in either of the signs as they all are basic geometric shapes. Indeed in the contested sign, the circles and the lines are on equal footing as concerns their distinctive character. The same can be said of the oval devices and the line in the centre of the right hand device and none of these bear any relationship with the goods in question rendering them distinctive.
Visually, there are striking differences between the signs which are clearly identifiable given the lay out and content of the signs. First of all, they differ in their colour, the earlier mark being in black and the contested sign in red. Furthermore, in the earlier mark the devices are almond shaped or oval, whereas the contested sign is composed of circles, thus contrary to the opponent’s arguments these devices are not identical. Finally, it has to be noted, that the earlier mark only has one line placed inside of one of the ovals, whereas the contested sign has two lines on top of each of the circles. As mentioned, the fact that the earlier mark is made up of three devices and the contested sign, of four, means that the divergences are clear.
The applicant’s argument regarding the fact that the contested sign may be perceived as two eyes with eyebrows above has to be set out. However perceived, the overall visual impression differs significantly, given that the earlier mark’s oval devices are flatter and the line through the right hand device renders the marks on the whole visually dissimilar.
Aurally, purely figurative marks are not subject to an aural assessment. As both marks are purely figurative, it is not possible to compare them aurally.
Conceptually, neither of the signs has a clear meaning for a part of 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 for this part of the public.
As the signs do not coincide in any element, they are dissimilar.
- Conclusion
As discussed above in section a) and as the signs have been found to be visually not similar, and not comparable from the aural and conceptual perspective.
Therefore, the considerable visual differences between the signs caused by the different figurative elements are particularly relevant when assessing the likelihood of confusion between them. The marks create different impressions as a result of the clear divergences listed above. and are, indeed, sufficiently strong to allow the relevant public to distinguish between them, even taking into account the imperfect recollection.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Chantal VAN RIEL | Alexandra APOSTOLAKIS | Vanessa PAGE |
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.