OOF | Decision 2683541

Date Published: Oct 1, 2017

OPPOSITION No B 2 683 541

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 18/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 683 541 is upheld for all the contested goods, namely 

Class 25:         Clothing; jerseys [clothing]; undershirts; shirts; jackets [clothing]; coats; blousons; trousers; denim jeans; trousers for children; short trousers; denim jackets; short-sleeved or long-sleeved t-shirts; gloves [clothing]; scarfs; pocket squares; neck scarfs [mufflers]; waist belts; leather belts [clothing]; belts [clothing]; gilets; cravats; hats; berets; footwear.

2.        European Union trade mark application No 14 961 767 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 961 767, namely against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 9 760 042. 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 9 760 042.

1. The goods

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

Class 18: Foam for use in the manufacture of footwear.

Class 25: Footwear comprised of foam; soles for footwear comprised of foam.

The contested goods are the following:

Class 25: Clothing; jerseys [clothing]; undershirts; shirts; jackets [clothing]; coats; blousons; trousers; denim jeans; trousers for children; short trousers; denim jackets; short-sleeved or long-sleeved t-shirts; gloves [clothing]; scarfs; pocket squares; neck scarfs [mufflers]; waist belts; leather belts [clothing]; belts [clothing]; gilets; cravats; hats; berets; footwear.

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 include, as a broader category, the opponent’s footwear comprised of foam. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

All the remaining goods are articles of clothing. Footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the contested goods are similar to the opponent’s footwear comprised of foam.

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 and similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

OOFOS
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 elements of the signs are not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non English-speaking part of the public.

Since they do not have any meanings for the relevant public, the earlier word mark ‘OOFOS’ and the verbal element ‘OOF’ of the contested sign are therefore of an average distinctiveness. The figurative part of the contested sign consists of a line above each ‘O’, a grey rectangular background, an almost standard typeface, as well as the use of two colours for the verbal part (‘OO’ in red and ‘F’ in white). These figurative elements do not convey a particular meaning either.

The signs have no elements that could be considered more dominant than other elements.

Visually, the signs coincide in the sequence of letters ‘OOF’, which is placed at the beginning of the earlier mark, which is the part that first catches the attention of the reader, since the public reads form left to right. Here, the coincidence not only lies in the beginning but also extends into the middle of the earlier mark. Moreover, the whole verbal part of the contested sign is included in the earlier mark.

The signs differ in the few abovementioned figurative elements of the contested sign and in the final letters ‘OS’ of the earlier mark.

In addition, 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). Consequently, consumers will more readily focus on the verbal element ‘OOF’ of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the sequence of letters /O-O-F/, present identically in both signs as the whole verbal part of the contested sign and as more than the first part of the earlier mark. The pronunciation differs in the sound of the final letters /O-S/ of the contested sign.

Here again, it has to be recalled that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. In fact 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.

Therefore, 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.

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

A likelihood of confusion (including a likelihood of association) 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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

Moreover, the Court has set out the essential principle that 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 the goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods are partly identical and partly similar. The signs are visually and aurally similar to an average degree, since they coincide in the verbal sequence ‘OOF’, which constitutes the whole verbal part of the contested sign and the majority of the earlier mark. The signs only differ in the less impacting two last letters of the earlier mark, as well as in the few figurative elements and the slight stylisation of the contested sign.

Furthermore, neither of the signs has a meaning that could help the public to differentiate them.

Account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that average consumers only rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Based on all the foregoing, it is considered that there are strong coincidences between the signs with a decisive impact. As a whole, the marks convey similar overall impressions.Taken together with the identity and similarity of the goods, it is likely that these consumers will believe that the conflicting goods come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the non-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 9 760 042. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right 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

Anna BAKALARZ

Steve HAUSER

Begoña URIARTE VALIENTE

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.