HAT A PORTER | Decision 2585605 - The Net-a-Porter Group Limited v. Franz Wöss Gesellschaft m.b.H.
Date Published: May 1, 2018
OPPOSITION No B 2 585 605
The Net-a-Porter Group Limited, 1 The Village Offices, Westfield, Ariel Way, London W12 7GF, United Kingdom (opponent), represented by HGF Limited, 8th floor, 140 London Wall, London EC2Y 5DN, United Kingdom (professional representative)
a g a i n s t
Franz Wöss Gesellschaft m.b.H., Hauptstraße 15, 4101 Feldkirchen an der Donau, Austria (applicant), represented by Patentanwaltskanzlei Hübscher, Spittelwiese 4, 4020 Linz, Austria (professional representative).
On 11/01/2017, the Opposition Division takes the following
1. Opposition No B 2 585 605 is upheld for all the contested goods.
2. European Union trade mark application No 14 269 302 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 269 302. The opposition is based on, inter alia, European Union trade mark registration No 13 302 435 in relation to which the opponent invoked Article 8(1)(b) EUTMR. The opponent based the opposition also on further earlier rights in relation to which it invoked also apart from Article 8(1)(b) EUTMR the grounds of Article 8(4) and 8(5) EUTMR respectively.
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 13 302 435.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 25: Jumpers, knitwear; sweatshirt; t-shirt, shorts, jackets, blazers, coats, blouses, shirts, blouses, pullovers; dresses; skirts; pants, trousers, jeans; jumpsuits; beachwear; sweaters; evening wear; waistcoats; suits; scarves; shawls; swimwear; active wear; lounge wear; sleepwear; leisurewear, sportswear; lingerie, camisoles; bodices; underwear; underclothing; garters; garter belts; bathrobes; ties, neckties, bow ties, cravats, belts; gloves; hosiery, stockings, tights, socks; headgear namely hats, caps and visors.
The contested goods are the following:
Class 25: Hats; Caps [headwear]; Caps; Headbands [clothing]; Kerchiefs [clothing]; Gloves [clothing]; Clothing.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
In relation to the applicant’s argument that the opponent only uses its trade mark for retail services while selling goods of other manufacturers, the Opposition Division notes that the goods must be compared as they appear in the specifications of the conflicting marks, and not, as the applicant claims, by reference to their alleged actual or intended use.
The contested hats; caps [headwear]; caps; gloves [clothing] are listed in both specifications in exactly the same terms. The goods are identical.
Bearing in mind that the contested headbands [clothing]; kerchiefs [clothing] are specified in the list of goods of the applicant as ‘clothing’ and taking into account also the large variety of models in which they appear it is considered that they can fall in any of the broad categories of the opponent’s leisurewear, sportswear, beachwear. The goods are identical.
The contested clothing includes as a broad category the opponent’s pants. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
- 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 argument of the applicant regarding the high level of attention because of brand loyalty cannot be followed. There is no evidence on file that the average consumer of mass clothing for everyday use is particularly careful and selective about the brand of clothing.
- The signs
Earlier trade mark
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, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is a word mark and the contested sign is a figurative mark composed of the verbal elements ‘HAT A PORTER’ represented in rather standard italic capital letters underlined by a red and a black curvy overlapping lines and what looks like the outline of a particular type of (winter) hat represented again in black and red lines. Part of the public may eventually see the black line as a shadow of the red line which creates a certain three-dimensional impression of the contested sign.
The applicant claims that the figurative element of the contested sign is a pictogram of the upper part of the body of a person. Even if a person with an increased level of imagination can theoretically see a highly stylised presentation of the upper part of the human body, this is certainly not the English-speaking consumer who will be guided by the perception of the meaning of the word ‘HAT’ and immediately see the figurative element as the presentation of a particular type of (winter) hat.
The ‘A-PORTER’ part of the signs (with or without the hyphen) alludes to the French expression for ready-to-wear clothing ‘pret-à-porter’, which is primarily used in the fashion domain and will be understood by the average English-speaking consumer.
In English, ‘PORTER’ is also an English family name, a type of drink and a person employed to carry luggage, parcels, supplies etc., especially at a railway station or hotel. In the context of both marks above however, taking into account also the designated goods, the reasonably informed consumer will see it as alluding to ‘pret-à-porter’ rather than conveying any of the meanings specified above.
In English, the word ‘NET’ will be associated with, among other meanings, an openwork fabric of string, rope, wire etc.; mesh. Due to intensive use in a certain context, ‘NET’ is nowadays understood by the relevant public as the (informal) short form of ‘internet’. Therefore, the combination of ‘NET-’ and ‘A-PORTER’ in the earlier sign involves a use of ‘à-porter’ that does not comport with its traditional use in the fashion world. However, given the renown of the phrase ‘pret-à-porter’, the relevant consumer will see the ‘à-porter’ ending, in the similar sounding ‘NET-A-PORTER’, as clearly alluding to ‘pret-à-porter’. Consequently, the earlier mark ‘NET-A-PORTER’ as a whole refers in an intellectually engaging way to the concept of the internet and alludes more vaguely to ‘ready to wear’, ‘ready to use’ by using a formula traditionally associated with fashion.
Although the mark suggests electronic communication (internet) and clothing, it does so in a clever way from the perspective of the English-speaking consumer, namely by using the ending of a French phrase known in a fashion context and doctoring it to introduce a similar-sounding beginning that references the internet. The Opposition Division regards the cleverness of this construction as eliminating any suggestion of allusiveness that may affect its distinctiveness – certainly for the English-speaking consumer (See also section d) below).
The case law referred to by the applicant is obviously not relevant since none of the cases deals with the expression ‘pret-à-porter’, ‘à-porter’ or a combination of the latter with another verbal element.
Similar considerations apply also to the contested sign. The word ‘HAT’ of the contested sign is perceived with the meaning of any of various head coverings, especially one with a brim and a shaped crown. However, bearing in mind the goods designated by the contested sign and the non-distinctive or descriptive nature of the word ‘HAT’ for most of the goods, except gloves, the contested sign will be more easily and directly perceived by the relevant public with the meaning of a hat which is ‘ready to wear’ or ‘ready to use’. Same considerations as to the distinctiveness apply to the figurative element representing a hat. Except for gloves, it has to be considered either non-distinctive or descriptive as the case may be in relation to the various designated goods. The underlining of the verbal elements of the contested sign is a banal feature which lacks any distinctiveness.
Neither of the signs has an element which can be considered dominant (visually more eye-catching) than other elements.
Visually, the signs coincide in ‘A PORTER’ and the last letter ‘T’ of their first verbal elements ‘NET’ and ‘HAT’ respectively. However, they differ in the first two letters of their first verbal elements, namely ‘NE’ vs ‘HA’, the hyphens separating the verbal elements only present in the earlier mark, as well as in the figurative elements of the contested sign as described in detail above which have no counterparts in the earlier mark. For the sake of completeness of the comparison, two other important features of the signs relevant for the finding of similarity between them on visual level are to be mentioned, namely: (i) that the verbal elements of both signs show a highly similar structure and identical length; and (ii) that it cannot be denied that the letters ‘N’ and ‘H’ show certain similarities in their standard appearance being composed of two horizontal lines connected by a third one, although in a different way.
As far as the impact of the figurative element is concerned it is to be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the marks coincides in /A PORTER/, present identically in both signs. The pronunciation coincides further in the sound of the letter ‘T’ of the first verbal elements of both signs and is highly similar as far as the pronunciation of the vocals ‘E’ and ‘A’ in the given sequences of letters is concerned. The pronunciation clearly differs in the sound of both signs’ first letters namely ‘N’ versus ’H’. It is to be noted that due to the same structure of the verbal elements and their identical length as a whole and as far as their separate elements are concerned, the signs will be pronounced with the same rhythm and intonation.
Therefore, the signs are highly similar.
Conceptually, the first elements of the marks in question are not similar; ‘NET’ has a specific meaning that will be universally understood as explained above and ‘HAT’ has a different meaning. Nevertheless, as set out above, the marks coincide in the ending ‘-A-PORTER’. This ending, borrowed from the world of fashion, engenders similar concepts of ‘ready to wear’, ‘prepared’ or ‘easy to use’. Therefore, there is a low degree of conceptual similarity between the marks albeit that it resides in a quite imprecise allusion. Indeed, both marks are a direct and clever reference to the original term ‘pret-à-porter’ which involves some word play in that NET and HAT sound similar to ‘pret’.
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.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation in relation to the goods in Class 25.
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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods are identical and the signs have been found similar. The earlier mark has a normal degree of distinctiveness and the level of attention of the relevant consumer is average.
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
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). It is to be noted also that 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.
In the case at hand, taking into account the average distinctive character of the earlier mark and the identity of goods, any of the two situations described above cannot be safely excluded. The marks can easily be confused with each other since the similarity between their verbal elements is quite high and the figurative elements do not usually attract consumer’s attention as much as the verbal elements do. Moreover, in the particular case at hand the figurative elements are either non-distinctive (the underlining of the verbal element) and/or descriptive as to the nature of the goods (the presentation of a hat) at least in relation to most of the goods covered by the specification, except gloves.
Even if consumers do not directly confuse the two marks there is still a likelihood of association due to the same structure of the verbal elements, where the consumers may think that the contested sign is a version of the earlier mark designating a particular or a new line of goods, which for the relevant sector of clothing and in particular headgear is indeed not unusual.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part 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 is well founded on the basis of the opponent’s European Union trade mark registration No 13 302 435. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier right European Union trade mark registration No 13 302 435 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). Same is obviously valid for the other grounds on which the opposition is based in relation to these other earlier rights.
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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.