XTEP | Decision 2744269
Date Published: Sep 25, 2017
OPPOSITION No B 2 744 269
Xtep (China) Co., Ltd., Lot No.9(C), Block No.7, Qingmeng Park, Quanzhou Economic & Technological Development Zone, Fujian Province, People’s Republic of China (opponent), represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, 92665 Asnières-sur–Seine, France (professional representative)
a g a i n s t
Capitalizaciones Mercantiles S.A.S., Calle 70 A n° 8-17, Bogota, Colombia (holder), represented by Ars Privilegium S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative).
On 19/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 744 269 is upheld for all the contested goods.
2. International registration No 1 279 814 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 279 814.The opposition is based on European Union trade mark registration No 13 288 063. The opponent invoked Article 8(1)(b) EUTMR.
DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.
The opponent invoked Article 8(1)(b) EUTMR, which covers situations where there may be a likelihood of confusion due to similarity between the signs and the goods/services, or identity of only one of these two factors. However, Article 8(1)(a) EUTMR covers situations where there is a so-called double identity, namely identity of the signs and of the goods and services.
The specific conditions under these provisions are interconnected. Therefore, an opposition based only on Article 8(1)(b) EUTMR that meets the requirements of Article 8(1)(a) EUTMR will be dealt with under the latter provision, without any examination under Article 8(1)(b) EUTMR.
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.
- The goods and services
The goods and services on which the opposition is based are, inter alia, the following:
Class 25: Clothing; footwear; headwear; shoes; sports shoes, footwear (except orthopedic footwear), football boots, overshoes, shoe covers; studs for shoes, soles for footwear.; athletic shoes; running shoes; court shoes; cleated shoes; training shoes; leisure shoes; sandals; boots; t-shirts; shirts; sweatshirts; sweatpants; pants; trousers; shorts; jackets; wind-resistant jackets; coats; anoraks; pullovers; jumpers; sweaters; jerseys; socks; polo shirts; gloves; scarves; underwear; bras; swimsuits; dresses; skirts; sweatbands; wristbands; vests; blazers; ties; warm-up suits; athletic uniforms; belts; caps; hats; visors; headbands; Sportswear for men, women and children, tank tops, pullovers, sweatshirts, trousers, shorts, sports jerseys, trunks, jackets, topcoats, blouson jackets, windcheaters, T-shirts, belts, gloves (clothing), bonnets, collar protectors, flat caps, berets, peak caps, headbands (clothing), wrist bands (clothing); socks, tights, spats.
The contested goods are the following:
Class 25: Clothing, shoes and footwear in general; headgear.
Clothing, shoes and footwear in general; headgear are identically contained in both lists of goods (including synonyms).
- The signs
Earlier trade mark | Contested sign |
The signs are identical.
- Global assessment, other arguments and conclusion
The signs and the goods were found to be identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 288 063. 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)(a) EUTMR, there is no need to further examine the other ground namely Article 8(1)(b) 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 holder 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
Tobias KLEE | Magnus ABRAMSSON | Swetlana BRAUN |
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.