EUIPO finds no likelihood of confusion between skateboard brands CRUZADE and SANTA CRUZ

HLC SB Distribution, SL (the Applicant) filed an EU trade mark application for the word CRUZADE for various products including "sporting goods; skateboards and their parts". This was opposed by NHS Inc (the Opponent) based on the EU trade mark above right of the figurative words SANTA CRUZ.

The opposition was dismissed by the Opposition Division and the Board of Appeal. This dismissal has been upheld by the General Court.

Enhanced distinctiveness

The Opponent argued that the evidence it had submitted to show enhanced distinctiveness had not been properly assessed. The more distinctive a trade mark is, the greater the chances that likelihood of confusion will be found.

The evidence submitted by the Opponent was made up of written statements from the Opponent's distributors, sales invoices and screenshots of promotional materials. The following issues with the evidence were observed:

• none of the evidence indicated the Opponent's market share in the countries in which it operates
• the distributors providing the statements were contractually tied to the Opponent so they were not independent
• none of the promotional materials gave proper indication of the degree of exposure of the public to the advertising in question.

It was held that the Opponent had not provided evidence which was sufficient and appropriate for a finding that the earlier mark enjoyed enhanced distinctiveness.

Level of similarity

It was held that the similarity level between the two signs, based on the fact that the word "cruz" appeared in both, was of a low level.

The Opponent argued that consumers may overlook the "Santa" element of the earlier sign, the difference between the words "Cruz" and "Cruzade" is negligible and that they have high phonetic similarity.However, the Court held that the level of similarity was low on a visual comparison because the earlier sign is a figurative mark, in a specific typeface surrounded by a circle, where the contested mark is a word mark. The visual similarity of the word "cruz" is offset as a whole in the configuration of the signs and the figurative elements.

The two signs do not have the same number of syllables and it was held there was a low degree of phonetic similarity as a result.

It was also pointed out that it is clear from case-law that consumers generally pay more attention to the initial part of a mark so the similarity of the latter half has less impact. This countered the Opponent's argument that consumers may overlook the word "santa" in the sign.

Likelihood of confusion

It was held that the presence of the word "cruz" in both marks did not create a likelihood of confusion between the marks, even for identical goods. The Court took the view that the signs SANTA CRUZ and CRUZADE would be remembered by consumers as whole terms, without focusing on the shared word "cruz".

Conclusion

The Opponent was unsuccessful in their opposition and the decision of the Board of Appeal was upheld by the General Court.

Case Ref: T-378/18