S-U-P WEAR | Decision 2634692
Date Published: Sep 28, 2017
OPPOSITION No B 2 634 692
Michel Roger Maurer, 247 Sandbanks Road, Poole, Dorset BH14 8EY, United Kingdom (opponent), represented by Taylor Wessing LLP, 5 New Street Square, London EC4A 3TW, United Kingdom (professional representative)
a g a i n s t
Marc Clormann, Quellenweg 4, 86929 Penzing, Germany (applicant), represented by BPM Legal, Steindorfstr. 13, 80538 München, Germany (professional representative).
On 16/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 634 692 is partially upheld, namely for the following contested goods:
Class 18: Luggage, bags, wallets and other carriers; umbrellas and parasols.
Class 25: Clothing; headgear; footwear; hats; surfwear.
Class 28: Sporting articles and equipment; sailboards; surfboard wax; surfboard leashes; surfboard covers; masts for sailboards; surfboard fins; harness for sailboards; bags adapted to carry surfboards.
2. European Union trade mark application No 14 589 154 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 all the goods of European Union trade mark application No 14 589 154. The opposition is based on European Union trade mark registration No 12 075 164. 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 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; articles of luggage being bags; baggage; travel baggage; travel bags; weekend bags; work bags; toilet bags; tool bags; sports bags; shopping bags; bags for clothes; bags made of leather; bags made of imitation leather; money bags; school bags; shoe bags.
Class 25: Clothing; footwear; headgear.
Class 28: Sports equipment and accessories therefor; surf boards; parts and fittings therefor.
The contested goods are the following:
Class 18: Luggage, bags, wallets and other carriers; umbrellas and parasols.
Class 25: Clothing; headgear; footwear; hats; surfwear.
Class 28: Toys, games, playthings and novelties; sporting articles and equipment; sailboards; surfboard wax; surfboard leashes; surfboard covers; masts for sailboards; surfboard fins; harness for sailboards; bags adapted to carry surfboards.
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 luggage includes, as a broader category, the opponent’s articles of luggage being bags in Class 18. 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 bags include, as a broader category, the opponent’s travel bags in Class 18. 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 wallets and other carriers are products that may be made of leather or imitation of leather. They are included in, or overlap with, the broad category of the opponent’s goods made of these materials (i.e. leather and imitations of leather) and not included in other classes in Class 18. Therefore, they are identical.
The contested umbrellas and parasols are identically contained in both lists of goods.
Contested goods in Class 25
The contested clothing; headgear; footwear are identically contained in both lists of goods.
The contested hats are included in the broad category of the opponent’s headgear in Class 25. Therefore, they are identical.
The contested surfwear is included in the broad category of the opponent’s clothing in Class 25. Therefore, they are identical.
Contested goods in Class 28
The contested sporting equipment is identically contained in both lists of goods, despite the slightly different wording.
The contested sporting articles include, as a broader category, the opponent’s surf boards in Class 28. 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 sailboards; surfboard wax; surfboard leashes; surfboard covers; masts for sailboards; surfboard fins; harness for sailboards; bags adapted to carry surfboards are included in the broad category of the opponent’s sports equipment in Class 28. These goods are identical.
When comparing the contested toys, games, playthings and novelties, which include a variety of goods used in playing games or things for children to play with, with the opponent’s goods, which mainly include leather, leather imitations, travel goods in Class 18, clothing, footwear, headgear in Class 25 and mainly sports equipment in Class 28, the Opposition Division finds that they are dissimilar. They have a different nature and purpose. These goods are not complementary nor in competition. Furthermore, these goods have different distribution channels, target a different relevant public and they are normally produced by different kind of undertakings.
- 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 relevant goods found to be identical are partly directed at the public at large and partly at specialised customers with specific professional knowledge or expertise, for example in the sports field. The degree of attention may vary from average to above average, depending on the price, (specialised) nature and the condition of the purchased goods. For example some of the goods, such as sailboards in Class 28 are infrequent purchases and their price could also be quite high. The level of attention for this kind of goods is rather above average.
- The signs
SUP DOG | |
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public for which the word ‘WEAR’ is understood as ‘to carry or have (a garment, etc.) on one’s person as clothing, ornament, etc and also as ‘anything designed to be worn’ (see Collins English Dictionary online) and is, therefore, weak for some of the relevant goods, namely those in Class 25.
Furthermore, regarding the contested sign, the figurative element in the form of a frame with round corners is not such an uncommon element and is more of a decorative nature. The public will not pay as much attention to this weak element.
Consequently, the most distinctive element of the contested sign is the letter sequence ‘SUP’ separated by two dots. The applicant, in its observations of 28/09/2016, points out that the term ‘SUP’ is the common acronym for the popular sport ‘Standup paddleboarding’ and that this term as such is descriptive. However, the Opposition Division points out that this acronym might be understood by a part of the English-speaking public, in particular that part that is practising this kind of sports, but for another part of the relevant public, this term is meaningless and is normally distinctive. In the present case, the Opposition Division finds it appropriate to limit its examination to the part of the relevant public that is more prone to confusion, that is, the public that will perceive the term ‘SUP’ as meaningless.
The verbal elements ‘SUP DOG’ of the earlier mark are distinctive. Even though the word ‘DOG’ is understood as referring to an animal, in conjunction with the word ‘SUP’ it is not weak, descriptive or otherwise allusive for the relevant goods. The word ‘SUP’ is meaningless, at least for a part of the relevant public, as explained above.
Visually, the signs coincide in the letters ‘S-U-P’, the only difference being the slightly fancy typeface in which these letters are written in the contested sign and the fact that they are separated by two dots. The first word of the earlier mark is entirely contained in the contested sign, also at the beginning, and in which it is considered the most distinctive element. On the other hand, they differ in the verbal element ‘WEAR’ and the figurative element of the contested sign, which are both considered weak elements (the former one at least for some of the relevant goods), as explained above. The marks further differ in the second verbal element of the earlier mark, ‘DOG’, which has no counterpart in the contested sign.
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; decisions of 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). This is even more applicable in the case at hand with respect to the frame in the contested sign, as pointed out above, since this element is more of a decorative nature.
Regarding the slightly fancy typeface in which the verbal elements of the contested sign are written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the elements it seem to embellish.
Furthermore, the first parts of the conflicting marks coincide, ‘S-U-P‘. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /S-U-P/, present identically in both signs. Even though in the contested sign, these letters are separated by two dots, it will be pronounced by a significant part of the relevant public as the word /SUP/, that is in the same way as the first word of the earlier mark. The marks differ in the sound of the element /WEAR/ of the contested sign, a weak element, which has no counterpart in the earlier mark, and in the sound of the second word /DOG/ of the earlier mark, which is not shared by the contested sign. The marks are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The word ‘DOG’ of the earlier mark has the meaning as defined above, while the element ‘WEAR’ of the contested sign is also perceived as having the above mentioned meaning. Even though the element ‘WEAR’ is considered weak for some of the relevant goods, since both marks are perceived as having a different meaning on account of the word ‘DOG’ in the earlier mark, they 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.
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
The goods at issue have been found to be partly identical and partly dissimilar and the level of attention varies from average to above average. The present assessment of likelihood of confusion considers the perception of the part of the public that is more prone to confusion, namely for that part for which ‘SUP’ is meaningless. The earlier mark has a normal degree of distinctiveness.
The marks have been found visually and aurally similar to an average degree and the marks are not conceptually similar.
In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
In the present case, although the public in the relevant territory might detect certain visual, aural and conceptual differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark configured in a different way depending on the type of goods that it designates. It is, therefore, conceivable that the relevant public, even with a high degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion (including a likelihood of association) on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 075 164. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical 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.
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
Martin MITURA | Chantal VAN RIEL | Saida CRABBE |
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.