PAMA | Decision 2791898
Date Published: Sep 24, 2017
OPPOSITION No B 2 791 898
Puma SE, Puma Way 1, 91074 Herzogenaurach, Germany (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)
a g a i n s t
Ultimate Hockey Corps Oy, Alkutie 4, 17500 Padasjoki, Finland (applicant).
On 30/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 791 898 is upheld for all the contested goods.
2. European Union trade mark application No 15 671 341 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 671 341 for the word mark ‘PAMA’. The opposition is based on European Union trade mark registration No 12 579 728 of the figurative mark . The opponent invoked Article 8(1)(b) and 8(5) 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: Apparel, footwear, headgear.
Class 28: Games and playthings, gymnastic and sporting equipment, gymnastic and sporting articles (included in class 28); Skiing and tennis equipment; Skis, ski bindings, ski poles, edges for skis, climbing skins for skis; Balls, including balls for sports and balls for games, golf balls, tennis balls; Dumb-bells, shot puts, Discus, javelins, clubs for gymnastics, Sport hoops; Shin pads, Knee, elbow and ankle guards for sports purposes; Sports gloves, included in class 28; Tennis rackets, cricket bats, golf clubs, hockey sticks; Table tennis rackets, badminton rackets and squash rackets and parts therefor, in particular grips, strings, grip and lead tape; Bags for sports equipment, specially designed for the objects to be carried therein; Specially adapted bags and sleeves for tennis rackets, table tennis rackets, badminton rackets, squash rackets, cricket bats, golf clubs and hockey sticks; Roller skates and ice skates, inline skates, table tennis tables and nets; Nets for sports, goal and ball nets; Start and finish banners, tapes and awnings for sports events, sight screens for tennis courts, umpires' stools for tennis events.
The contested goods are the following:
Class 28: Ice hockey goalie pads; Ice hockey sticks; Ice hockey pucks; Ice hockey skates; Hockey gloves; Hockey pucks; Hockey sticks.
The contested ice hockey goalie pads; ice hockey sticks; ice hockey pucks; ice hockey skates; hockey gloves; hockey pucks; hockey sticks are included in the broad category of the opponent’s sporting equipment. Therefore, they are identical.
- 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 and at professionals.
The degree of attention is considered to be average given that the goods at hand consist of sports equipment that is not particularly expensive.
- The signs
PAMA | |
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).
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 earlier mark is figurative mark comprised of the word element ‘PUMA’ in a bold black typeface. The figurative aspect is not particularly striking or distinctive. The element PUMA will be associated with ‘a large American wild cat…’ (Oxford English dictionary on 22/08/2017 at www.oed.com). It has to be noted that the term ‘PUMA’ (or its identical transliteration) is found in all languages of the relevant territories, except in Dutch (poema) and Greek (transliteration: poúma). However, in these cases the pronunciation is identical. As this meaning has no relation to the goods at hand, the word ‘PUMA’ is distinctive.
The contested sign is the word mark ‘PAMA’ which has no meaning and so is distinctive in relation to the goods in question.
Visually and aurally, the signs coincide in the first letter and the last two letters ‘P-MA’. They differ only in the second letter ‘U’ for the earlier mark and ‘A’ for the contested sign. They also differ visually in the black bold typeface of the earlier mark that has no counterpart in the contested sign.
Therefore, the signs are visually and aurally highly similar.
Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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
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, C-251/95, 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, C-39/97, Canon, EU:C:1998:442, § 17).
In the present case the goods are identical. The signs are highly similar visually and aurally but are conceptually not similar. The level of attention of the relevant consumer is average and the degree of distinctive character per se of the earlier mark is normal.
The verbal element has a greater impact on the consumer, as mentioned above. In this case the verbal elements coincide in three out of four letters including the first letter.
Considering all the above, there is a likelihood of confusion on the part of the public (even the professionals). The conceptual difference is not enough to rule out likelihood of confusion between the marks for identical goods. The high degree of visual and aural similarity outweighs the fact that the marks are not conceptually similar. This can be said even considering only the distinctiveness per se of the earlier mark. It follows that there is no need to examine the evidence for enhanced distinctive character claimed by the opponent regarding the earlier mark.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 579 728. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.
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
Lars HELBERT | Lynn BURTCHAELL | Dentiza STOYANOVA-VALCHANOVA |
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.