THE POWER | Decision 2454505 - Bata Brands S.à.r.l. v. Philip Douglas Taylor
Date Published: Sep 22, 2017
OPPOSITION No B 2 454 505
Bata Brands S.à.r.l., B.P. 1638, 1016 Luxembourg, Luxembourg (opponent), represented by Keltie LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative).
A g a i n s t
Philip Douglas Taylor, c/o Matchroom Sport Limited Mascalls, Mascalls Lane Brentwood, Essex CM14 5LJ, United Kingdom (applicant), represented by Mishcon de Reya LLP, Africa House 70 Kingsway London, London WC2B 6AH, United Kingdom (professional representative).
On 07/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 454 505 is partially upheld, namely for the following contested goods:
Class 25: Clothing (excluding socks); footwear; headgear; parts and fittings for footwear.
2. European Union trade mark application No 13 171 715 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 171 715, ‘THE POWER’, namely against all the goods in Class 25. The opposition is based on international trade mark registration No 519 925, ‘POWER’, 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 goods
On 28/09/2016 (with the effect as from 20/03/2015) the Cancellation Division revoked in decision No 10 619 C the earlier international registration’s designation of the European Union No 519 925 for the following goods:
Class 25: Clothing, except socks.
Therefore, the goods for which the international registration remain valid and on which the opposition is based are the following:
Class 25: Socks; footwear of all kinds.
On 20/02/2017 the applicant requested the EUIPO to restrict the list of goods in Class 25 of European Union trade mark application No 13 171 715.
Therefore, the contested goods are the following:
Class 25: Clothing (excluding socks); footwear; headgear; parts and fittings for all the aforesaid goods. | |
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.
Footwear is identically contained in both lists of goods (including synonyms).
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 clothing (excluding socks) is similar to the opponent’s footwear of all kinds.
The contested headgear is similar to the opponent’s footwear of all kinds. These goods share the same purpose (to protect and cover parts of the human body and are both fashion products) and they are often found or sold in the same shops or departments. Moreover, they target same relevant publics and are often produced by the same companies.
The contested fittings for footwear include goods such as studs for football boots and cleats for attachment to sport shoes. Such goods are complementary to the main product, that is, goods falling within the broad category of the opponent’s footwear of all kinds. These conflicting goods are often sold through the same distribution channels and target the same relevant publics. Moreover, the consumers would expect these goods to be manufactured by the same undertaking. Therefore, the conflicting goods are deemed similar.
The contested parts for footwear cover, for example, insoles for footwear and heel inserts. Such goods are complementary to the opponent’s footwear of all kinds (insoles are only used in combination with footwear) and consumers seek for, for example, both insoles and shoes in the same shops. Finally, the consumers expect such goods to be produced by the same companies. Therefore, the contested parts of footwear are similar to the opponent’s footwear of all kinds.
The contested parts and fittings for clothing (excluding socks) are, for example, goods such as ready-made linings and pockets. These goods are components used for specific purposes (e.g. pockets for renovating old garments). Although these goods may target the same public as the opponent’s socks, which are specific clothing products used for protection and (often) for keeping one’s feet warm, these conflicting goods of the parties are distributed through different channels; the contested goods at specialists within the clothing and fashion industry and socks at the public at large. Moreover, the contested goods differ in nature, methods of use and purpose to the opponent’s socks and they are not in competition nor complementary. Therefore, the contested parts and fittings for clothing (excluding socks) are dissimilar to the opponent’s socks.
Bearing this in mind, the contested parts and fittings for clothing (excluding socks) are also dissimilar to the opponent’s footwear of all kinds, which are (unlike socks) not even clothing products. The contested goods differ in nature, purpose, method of use to footwear and these goods are not complementary or in competition.
The contested parts and fittings for headgear are dissimilar to the opponent’s socks; footwear of all kinds. For example, the contested goods can be components of hats, such as visors used for caps, whereas the opponent’s goods are specific clothing products (socks) and goods such as shoes. The contested goods target specialised undertakings (e.g. manufactures producing hats) whereas the opponent’s goods target the public at large. Moreover, the contested goods have different natures, purposes and methods of use to those of the opponent and these goods are not complementary or in competition.
- 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 are directed at the public at large.
The degree of attention is considered average.
- The signs
POWER | THE POWER |
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The sign’s common element ‘POWER’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, since for this part of the public the signs are more similar due to their concepts.
The verbal element ‘POWER’ will be understood by the public under analysis as, for example, ‘physical strength and forced exerted by something or someone’ or as ‘authority that is given or delegated to a person or body’ (information extracted on 01/09/2017 from Oxford Dictionaries online https://en.oxforddictionaries.com/definition/power). Such meanings, contrary to what the applicant claims, have no obvious connections or links to the goods at issue. Therefore, ‘POWER’ is of normal distinctiveness. The initial element ‘THE’ of the contested sign is the English definite article and will be perceived as merely referring to a particular power (when placed before ‘POWER’) by the public under analysis. Consequently, the article ‘THE’ has a limited distinctive character or is weak.
Visually, the signs coincide in the distinctive word ‘POWER’ and they differ in the word ‘THE’, which has little impact on the comparison of the signs for the reasons explained above. It is true that ‘THE’ is the initial element of the contested sign. However, the less distinctive article merely introduces the distinctive word ‘POWER’ in the sign. Therefore, the signs are visually highly similar.
Aurally, taking into account that ‘THE’, although pronounced first in the contested sign, has less impact on the pronunciation of the mark (being merely an article), and that ‘POWER’ will be pronounced identically in the signs, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the distinctive concept of ‘power’ by the public under analysis. Since the definite article ‘THE’ is placed before ‘POWER’ in the contested sign, the sign will be perceived as referring to one specific power in contrast to an unspecific one in the earlier mark. However, this conceptual difference will be perceived as marginal by the English-speaking part of the public. Therefore, the signs are conceptually highly similar overall.
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 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
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).
In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).
In the present case, the goods are partly identical, partly similar and partly dissimilar. The signs are visually, aurally and conceptually highly similar for the public under analysis and the earlier mark is distinctive. The degree of attention of the relevant public is average and 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).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion 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 international registration No 519 925 designating the European Union. 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 or similar 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
Sandra IBAÑEZ | Christian RUUD | Adriana VAN ROODEN |
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.