• NIKE Innovate opposed the registration of AIR MIX in Class 25 based on its earlier marks AIR MAX, AIR ZOOM and AIRFORCE I
• The Appeals Division found that consumers might believe that the opposed mark belonged to the family of AIR marks and that the goods had the same or a related origin
• An important factor was that the compared marks covered identical goods in Class 25

NIKE Innovate CV has prevailed in opposition proceedings against the international figurative trademark AIR MIX in Class 25.

Background

On 3 September 2021 a natural person from Turkey, Ömer Sekman, filed for registration of the international figurative trademark AIR MIX (No 1634638) (depicted below) designating Lithuania, covering “clothing, including underwear and outer clothing, other than special-purpose protective clothing; socks; scarves, shawls, bandanas, scarves, belts” in Class 25:

On 22 March 2022 NIKE Innovate CV filed an opposition (No PTZ-329) with the Appeals Division against the registration of AIRMIX in Lithuania based on its earlier EU trademark registrations for AIR MAX (No 000277665), AIR ZOOM (No 000252346) and AIR FORCE I (No 007534101), registered for various goods in Classes 18, 25 and 28, including “clothing, footwear, headgear” in Class 25.

NIKE Innovate stated that the opposed trademark AIR MIX:

• had been filed later than the earlier trademarks AIR MAX, AIR FORCE I and AIR ZOOM;
• was confusingly similar to the earlier marks;
• covered identical and similar goods in Class 25; and
• due to its similarity to the earlier marks, could be assigned to NIKE Innovate’s family of AIR trademarks.

Therefore, there was a likelihood that the public would be confused about the origin of the opposed mark, which was not allowed pursuant to the Law on Trademarks of the Republic of Lithuania.

The owner of the opposed trademark failed to submit a justified reply to the opposition. As such a failure does not prevent the Appeals Division from examining the opposition, the latter scheduled the opposition hearing.

Decision

On 19 December 2022 the Appeals Division upheld the opposition in its entirety and refused registration of the trademark AIRMIX for all goods in Class 25.

The Appeals Division first stated that the main and dominant elements of the compared marks should be examined. The Appeals Division noted that the highest degree of similarity existed between AIR MIX and the earlier mark AIR MAX, since the first verbal element ‘air’ fully coincided, while the second elements, ‘max’ and ‘mix’, differed only in one letter placed in the middle of the words. While a lower degree of similarity existed between the opposed mark and the other trademarks AIRZOOM and AIR FORCE, the compared marks had the same structure: an identical first verbal element (‘air’) and a second verbal element (‘zoom’, ‘force’ and ‘mix’) with a weak distinctive character as it described the characteristics of the goods. The graphic element in the opposed mark was decorative and was therefore insignificant in the evaluation of similarity.

Phonetically, the marks AIR MAX and AIR MIX were highly similar, as:

• the verbal elements consisted of short, monosyllabic words;
• the first word was pronounced identically; and
• the second words, ‘max’ and ‘mix’, had a similar pronunciation as they differed only in one letter placed in the middle of the words between the identical sounds ‘m’ and ‘x’.

The degree of phonetic similarity was lower between the opposed mark and the earlier marks AIR ZOOM and AIR FORCE.

Semantically, the compared marks were perceived in a similar way because of the main and distinctive element ‘air’, while the other verbal elements (‘max’, ‘zoom’, force’ and ‘mix’) described characteristics of the goods. Therefore, the other verbal elements did not change the semantic meaning significantly, as it remained related to the first element ‘air’.

As regards the goods covered by the marks in Class 25, the Appeals Division stated that they were identical and similar. The earlier marks were registered for “clothing, footwear, headgear”; such goods, being common terms, included all the goods covered by the opposed mark.

The Appeals Division also noted that the submitted evidence confirmed that the trademarks AIR MAX and AIR FORCE I were characterised by a higher distinctive character. The higher the distinctive character of the earlier mark, the greater the likelihood of confusion will be.

Further, the Appeals Division stated that the opposed mark contained the main and dominant element ‘air’, which associated the opposed mark with the distinctive and dominant element ‘air’ of the family of AIR trademarks. Accordingly, consumers might believe that the opposed mark belonged to the same family of trademarks and that the goods had the same or a related origin.

The other important factor was that the compared marks were registered for identical goods in Class 25. A higher degree of similarity between the goods may offset a lesser degree of similarity between the signs. In addition, the goods “clothing, footwear, headgear” are everyday goods targeting the public at large; therefore, the level of attention of the public was rather low.

Pursuant to EU case law, it is common in the clothing sector for the same mark to be configured in different ways according tot he type of product that it designates. It is also common for the same clothing manufacturer to use sub-brands – that is, signs deriving from a principal mark that share a common dominant element – in order to distinguish between various lines (eg, women’s, men’s and children’s clothing). In such circumstances, “it is conceivable that the targeted public may regard the clothing designated by the conflicting marks as belonging, admittedly, to two distinct ranges of products but as coming, nonetheless, from the same manufacturer” (Case T-104/01, Paragraph 49).

In analysing the similarity of the marks, it was established that the structure of the opposed mark followed the same principles as the earlier marks, which belonged to a family of trademarks; therefore, consumers could be confused as to the origin of the opposed mark.

This article first appeared in WTR Daily, part of World Trademark Review, in January, 2023. For further information, please go to www.worldtrademarkreview.com.