YANUK | Decision 2675463 - Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA v. FTC Commercial Corp.
Date Published: Sep 28, 2017
OPPOSITION No B 2 675 463
Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA, Jack Wolfskin Kreisel 1, 65510 Idstein/Taunus, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)
a g a i n s t
FTC Commercial Corp., 1525 S. Broadway, Los Angeles, California 90015, United States of America (applicant), represented by Wildbore & Gibbons LLP, Sycamore House, 5 Sycamore Street, London EC1Y 0SG, United Kingdom (professional representative).
On 23/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 675 463 is upheld for all the contested goods, namely:
Class 25: Clothing for men and women; footwear, headgear, sportswear, underwear; clothing and shoes for children and babies; caps, swimsuits.
2. European Union trade mark application No 14 769 467 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 769 467, namely against all the goods in Class 25. The opposition is based on, inter alia, European Union trade mark registration No 9 674 227. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 674 227.
- The goods
The goods on which the opposition is based are the following:
Class 24: Woven goods and textiles, all other than for window coverings, all the aforesaid goods included in class 24; cotton fabrics, woollen fabric, linings, non-woven textile fabrics, all other than for window coverings; bath linen (except clothing); towels of textile; blankets, namely travel blankets, woollen blankets, fleece blankets.
Class 25: Clothing, footwear, headgear; accessories for clothing (included in class 25), braces (suspenders), belts (clothing); belt pouches for documents; inner soles; soles for footwear; sleeping masks.
The contested goods are the following:
Class 25: Clothing for men and women; footwear, headgear, sportswear, underwear; clothing and shoes for children and babies; caps, swimsuits.
Footwear, headgear are identically contained in both lists of goods.
The contested clothing for men and women; sportswear; underwear; clothing for children and babies; swimsuits belong to the opponent’s broader category of clothing. These goods are, therefore, identical.
The contested shoes for children and babies belong to the opponent’s broader category of footwear. These goods are, therefore, identical.
The contested caps belong to the opponent’s broader category of headgear. These goods are, therefore, 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. The degree of attention is considered to be average.
- The signs
NANUK | YANUK |
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, since the earlier sign’s verbal element means ‘ice lolly’ in Slovak and Czech, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public that speaks neither of these languages and for which the signs do not convey any concept, such as the English- and German-speaking parts of the public.
Both of the signs comprise a single verbal element and they differ only in the first out of their five letters. Since they lack any meaning in the relevant territory, their distinctiveness is average.
Given the fact that the signs contain the same letters in the same order and they differ only in their initial letter/sound, ‘N’ in the earlier sign versus ‘Y’ in the contested one, they must be considered to be visually and aurally highly similar.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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.
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
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
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).
In the present case, the goods are identical and the signs are visually and aurally highly similar while they lack any concept. The only difference between them lies in their initial letter/sound, which is not sufficient to counteract the high degree of similarities between them.
Considering all the above, there is a likelihood of confusion on the part of the English- and German-speaking parts of the public. 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.
Therefore, the Opposition Division finds that the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 674 227. It follows from the above that the contested trade mark must be rejected for all the contested goods.
Since the opposition is entirely successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the opponent’s earlier European Union trade mark registration leads to the success of the opposition and to the rejection of the contested trade mark for all the contested goods, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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
Marianna KONDÁS | Ferenc GAZDA | Oana-Alina STURZA |
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.