Clothing and sport equipment are similar, says OHIM

European Union
In Antonio Riera Fabre v Icon IP Inc(Case B 1 052 390, May 19 2009), the Opposition Division of the Office for Harmonization in the Internal Market (OHIM) has held that “ready-made textile garments” in Class 25 of the Nice Classification and "fitness and exercise equipment" in Class 28 were similar.
US company Icon IP Inc filed an application for the registration of FIT ELEMENTS as a Community trademark for "fitness and exercise equipment". Spanish company Antonio Riera Fabre (ARF) opposed the application based on its Spanish registration for the trademark ELEMENTS for textile garments. ARF argued that there was a likelihood of confusion between the mark and that its mark was a leading brand in the field of sports clothing in Spain.
Unsurprisingly, the Opposition Division held that FIT ELEMENTS was confusingly similar to ELEMENTS, especially as the earlier mark was fully reproduced in the mark applied for. More surprising was the reasoning of the Opposition Division on the similarity of the goods and the notoriety of the mark.
With regard to the similarity of the goods, the Opposition Division recognized that sport equipment and clothing are of a different nature and require different means and methods of manufacturing. This finding is not in line with previous case law on the similarity of such goods.   
Nevertheless, the Opposition Division considered that the evidence filed by ARF showed that its activity was linked to the provision of sports clothing to Spanish teams playing hockey, handball and five-a-side football, and competing in different championships.  The Opposition Division further held that the goods were specifically intended and used for doing sports. The Opposition division concluded that the goods covered by both marks:
  • shared the same purpose;
  • targeted the same public; and
  • were distributed through the same commercial channels and specialized sports shops, or in the same sectors of department stores.
Moreover, the Opposition Division pointed out that businesses in the area of clothing and sports equipment regularly offer collections of clothing and sporting articles under the same brand family.  
With regard to the notoriety of the ELEMENTS mark, the Opposition Division found that there was insufficient evidence to show that sports clothing bearing the mark had been sold to the public at large, as the main target appeared to be sports teams. Further, the Opposition Division found that the sales figures were far from impressive considering the nature of the goods and the size of the relevant market.
The notoriety of a mark must be determined with regard to the relevant public. For example, a luxury brand may be recognized as well-known even if the average consumer is not aware of it. In the present case, the Opposition Division should have taken into account the fact that the relevant public for ARF's goods is not the average consumer, but sports teams.
Séverine Fitoussi and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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