PANAMO | Decision 2708785
Date Published: Oct 1, 2017
OPPOSITION No B 2 708 785
Panam De Mexico, S.A. DE C.V., Avda de la Luz 81, Fracc. Industrial La Luz, Cuatitlan Izcalli 54700, Mexico (opponent), represented by Oficina De Propiedad Industrial Gil Vega, C/ Corazón de María, 6, 4ª Plta., 28002 Madrid, Spain (professional representative)
a g a i n s t
Fabio Giamundo, Via Alessandro Miranda 7, 80047 San Giuseppe Vesuviano (NA), Italy (applicant).
On 21/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 708 785 is upheld for all the contested goods.
2. European Union trade mark application No 15 150 493 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 15 150 493. The opposition is based on Spanish trade mark registration No 3 091 338. 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: Sports footwear.
The contested goods are the following:
Class 18: Holdalls for sports clothing; Bags for sports clothing.
Class 25: Sportswear; Jackets being sports clothing; Casualwear; Casual footwear; Training shoes.
Class 28: Protective paddings [parts of sports suits].
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.
Contested goods in Class 18
The contested holdalls for sports clothing; bags for sports clothing are similar to the opponent’s sports footwear in Class 25, as they may be distributed by the same producers through the same distribution channels and can target the same public.
Contested goods in Class 25
The contested training shoes are included in the broad category of the opponent’s sports footwear. Therefore, they are identical.
The contested casual footwear overlaps with the opponent’s sports footwear. Therefore, they are identical.
The contested sportswear; jackets being sports clothing; casualwear are similar to the opponent’s sports footwear. They are all goods that are manufactured to cover, protect and clothe the human body. Therefore, they have the same purpose, they might easily coincide in their relevant public and they can all be manufactured by the same undertakings. All of these goods can be found in the same shops or in adjoining sections of department stores.
Contested goods in Class 28
The contested protective paddings [parts of sports suits] are similar to a low degree to the opponent’s sports footwear in Class 25, as they can coincide in their producer and relevant public. Moreover, they can have the same distribution channels.
- 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 to various degrees are directed at the public at large.
The degree of attention is considered average.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is Spain.
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 the verbal element ‘PANAM’, written in slightly stylised bold red upper case letters. Underneath the word ‘PANAM’ are two horizontal blue stripes, one thicker and one thinner, extending upwards around the final letter of the word ‘PANAM’.
The word ‘PANAM’ has no meaning for the relevant public and is distinctive for the relevant goods. The figurative elements of the earlier mark will be perceived as merely decorative.
The contested sign is a figurative mark comprising a verbal element written in slightly stylised black letters that will be perceived by a substantial part of the public as the word ‘Panam’. The first letter, ‘P’, is in upper case and the other letters, ‘anam’, are in lower case. A figurative element is placed to the left of the verbal element ‘Panam’, made up of thin and slightly curved black lines.
The applicant argues that this figurative element is ‘a reworking of the sign of Sagittarius’, while the opponent argues that it is a depiction of a sailing boat. The Opposition Division observes that, given the abstract arrangement of the lines, it is difficult to determine with certainty the concept (if any) that the public might attribute to this figurative element. Therefore, it is considered that the majority of the public will perceive it as an abstract combination of lines with no immediately perceptible meaning for the goods at issue. The Opposition Division will proceed with the evaluation of the decision on this basis.
To the right-hand side of the word ‘Panam’ in the contested sign is a figurative element depicting a tennis ball. The applicant argues that this device would be perceived by the public as a depiction of the letter ‘O’ and that, therefore, the verbal element of the contested sign would be ‘Panamo’. The Opposition Division observes that this figurative element is likely to be perceived by a substantial part of the public only as a tennis ball, as it is a realistic reproduction of such an item and there are no elements that may bring a letter to mind.
Bearing in mind that the relevant goods are mainly training shoes, casual shoes, casualwear, sportswear, holdalls and bags for sport clothing, and protective sport paddings, it is considered that the depiction of a tennis ball may suggest that these goods are suitable for tennis players or are in some way related to tennis or tennis competitions. Therefore, this figurative element is weak in relation to the relevant goods.
Furthermore, 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, since 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; 19/12/2011, R 233/2011-4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Neither of the marks has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the distinctive verbal element ‘PANAM’, which is the sole verbal element in both marks. However, they differ in their figurative devices (the blue stripes of the earlier mark and the abstract device and the depiction of a tennis ball in the contested sign) and in their stylisation and colours.
With reference to the abovementioned figurative elements and, in particular, the abstract device of the contested sign, their impact on the consumer is less than that of the verbal elements. As regards to the blue stripes of the earlier mark and the tennis ball of the contested sign, they play a lesser role in the signs than the other elements, given their merely decorative function and low degree of distinctiveness, respectively. The stylisation of the word elements is not very elaborate in either of the marks and is not striking enough to prevent consumers from perceiving the words as such. As consumers are well accustomed to the stylisation of verbal elements in marks, they will perceive such stylisation as merely a decorative depiction of the words. In addition, the colours of the marks will be perceived as merely decorative.
Therefore, the signs are visually similar to at least an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛PANAM’, present identically in both signs. This coinciding element is distinctive for the relevant goods.
Therefore, the signs are aurally identical.
Conceptually, the earlier sign has no meaning, since the word ‘PANAM’ is, as stated above, a fanciful term and the blue stripes do not evoke any specific concept. In the contested sign, the only element conveying a concept is the device depicting a tennis ball, which will be associated with this sporting activity. Therefore, the signs are not conceptually similar, notwithstanding the low degree of distinctiveness of the tennis ball device in the contested sign.
- 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.
- Global assessment, other arguments and conclusion
In the present case, the goods are partly identical and partly similar to various degrees. They target the public at large, which will pay an average degree of attention. The signs are visually similar to at least an average degree and aurally identical to the extent that they coincide in the word ‘PANAM’, which is distinctive and the only word in both marks.
The fact that the marks are not conceptually similar must be put in the context of the contested mark containing a weak figurative element, namely the depiction of a tennis ball.
The differences between the marks are restricted to their different figurative elements, which have a limited impact when assessing the likelihood of confusion, as explained above in section c).
It is a common practice nowadays for companies to make changes to the graphic depiction of their trade marks (e.g. by altering their typeface or colour, adding or removing terms or elements) to designate new lines of products or to create a more modern version of the sign. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation or a new version of the earlier mark.
Account is taken of 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).
Taking all the above into account, the Opposition Division considers that the additional and differing figurative elements of the signs are not sufficient to counteract the similarities between them, arising from the commonality in the distinctive element ‘PANAM’. Therefore, the relevant public, when encountering the signs in relation to identical or similar goods, even in relation to those goods found to be similar to a low degree, is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.
For the sake of completeness, the Opposition Division points out that, for the remaining part of the public, which will perceive the tennis ball in the contested sign as a depiction of the letter ‘O’, the outcome of the present decision would still be the same. Indeed, the addition of a letter ‘O’ in the contested mark is of little importance as regards the impression that it produces on customers, who are most likely to focus on the signs’ initial elements. Therefore, the presence of this additional letter would not be sufficient to counteract the similarities between the signs arising from the coinciding sequence of letters ‛PANAM’, which makes up the only verbal element of the earlier mark and almost the entire verbal element of the contested sign. In this case, the relevant public, when encountering the signs in relation to identical or similar goods, even in relation to those goods found to be similar to a low degree, is also likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 091 338. It follows that the contested trade mark must be rejected for all the contested 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.
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
María Belén IBARRA DE DIEGO | Angela DI BLASIO | Pierluigi M. VILLANI |
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.