DECISION

of the First Board of Appeal

of 8 September 2016

In Case R 2166/2015-1

Peaceful Hooligan Limited

The Library Suite, 29 The Iron Market

Newcastle under Lyme

Staffordshire ST5 1RH

United Kingdom

Applicant / Appellant

represented by SWINDELL & PEARSON LTD, 48 Friar Gate, DE1 1GY, Derby, United Kingdom

Frank Dann, Andreas Backer

Mendelssohnstr. 92

60329 Frankfurt am Main

Germany

Opponents / Respondents

represented by HOFSTETTER, SCHURACK & PARTNERPATENT- UND RECHTSANWALTKANZLEI, PARTG MBB, Balanstrasse 57, 81541 München, Germany

APPEAL relating to Opposition Proceedings No B 2 030 628 (European Union trade mark application No 10 578 524)

The First Board of Appeal

composed of Th. M. Margellos (Chairperson and Rapporteur), Ph. von Kapff (Member) and C. Rusconi (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

By an application filed on 20 January 2012, Peaceful Hooligan Limited (‘the applicant’) sought to register the word as amended

PEACEFUL HOOLIGAN

for the following list of goods and services:

Class 18 – Luggage; animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, luggage with wheels; backpacks; luggage designed to be carried as hand luggage on aircraft; water proof luggage; shopping bags, sling bags, school bags, beach bags, satchels briefcases, lap top bags, pilot cases, handbags, pocket wallets, purses, clip top purses, change purses, evening bags, hand bags being tote bags, hand bags being shoulder bags, cosmetic bags, bridal hand bags, weekend bags, flight bags, haversacks, articles of imitation leather not included in other Classes, key cases being leather ware, kit bags, gym bags, sports bags, duffle bags, rucksacks, school satchels, shopping bags, sling bags for carrying infants, boot bags, credit card holders, hold-alls, travelling bags;

Class 25 – Clothing; footwear; headgear; outer clothing; under clothing; woven clothing; knitwear being clothing; clothing of cotton, silk, linen, wool; clothing made from man made-fibres; clothing made from a combination of cotton, silk, linen, wool and man-made fibres; shirts; blouses; shirts and blouses with wing collar; shirts and blouses with Eton collars; evening wear, namely shirts and blouses and dinner jackets; shirts and blouses with double cuffs; shirts and blouses with French cuffs; shirts and blouses with detachable collars; shirts and blouses without collars; long sleeve shirts and blouses; short sleeved shirts and blouses; shirts and blouses with graphics printed on them; men's shirts; women's blouses; children's shirts and blouses; shirts and blouses for babies; bow ties, ties, lounge suits, waist coats, trousers; sports clothing; T-shirts, tee-shirts; long sleeved T-shirts, short sleeved T-shirts, T-shirts with graphics printed on them, men's T-shirts, women's T-shirts, children's T-shirts, T-shirts for babies; polo shirts; men's polo shirts; women's polo shirts; children's polo shirts; polo shirts for babies; polo shirts with graphics printed on them; sweatshirts; sweatshirts with graphics printed on them, men's sweatshirts, women's sweatshirts, children's sweatshirts, sweatshirts for babies; hooded tops; hooded tops with graphics printed on them, men's hooded tops, women's hooded tops, children's hooded tops, hooded tops for babies; jackets; waxed jackets; reefer jackets; bomber jackets; warm jackets; wind proof jackets; socks, stockings and hosiery; mittens; pullovers; scarves; ski hats; sports jerseys; swimwear; gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, bikini swimming costumes, tankinis, tops, thongs, pants, bras, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of lingerie; articles of underwear, pyjamas, night wear, dressing gowns, bath robes; beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps; rain coats; sou'westers; cagoules; sportswear, boxer's shorts and vests, sports bras, sports panties, sports briefs, and jockstraps, sports pants; sports shorts, sports T-shirts, sports crop-tops, sports vests; trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants; bicycling shorts; soccer shirts, soccer shorts, soccer socks; football strips; football kits; items of clothing for playing football in; football shirts, football boots, studs for football boots; football boots for use on synthetic turf surfaces; football shorts and football socks, rugby shirts, rugby shorts and rugby socks, swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing; wet suits for water-skiing; wet suits for windsurfing; dry suits; headgear, hats, woolly hats, caps, bobble hats, baseball caps, cricket hats, sunhats, sun-visors, swimming caps; aprons being clothing; boxer shorts; camisoles; caps being headwear; headgear for wear; waterproof and water resistant outer garments; waterproof and water resistant outer clothes; footwear uppers, heel pieces and tips for footwear; studs, spikes and metal fittings for footwear; welts for boots and shoes; heels for boots and shoes; tips for foot-wear; soles, inner soles, non-slipping devices for footwear; articles of industrial and work footwear, headgear and clothing; protective and safety footwear other than for protection against injury or accident; waterproof and water resistant clothing, headwear, footwear; slippers; bath sandals and bath slippers; dance shoes; ladies shoes; leather shoes; high heeled shoes; shoes with stiletto heels; ladies shoes with heels; dancewear including footwear; beachwear including footwear; shoes, boots, trainers, flip-flops, sandals mules, slip on shoes; slip on boots; moccasin; loafers; deck shoes; plimsolls; Wellington boots, beach shoes, shoes for windsurfing and water sports; parts and fittings for all the aforesaid goods;

Class 35 – Retail services connected with the sale of the following goods, the bringing together, for the benefit of others, of a variety of the following goods to allow consumers to conveniently view and purchase the following goods, electronic shopping retail services, including such services provided from an internet website, connected with the sale of the following goods and mail order retail services connected with the sale of the following goods, Luggage, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, luggage with wheels, backpacks, luggage designed to be carried as hand luggage on aircraft, water proof luggage, shopping bags, sling bags, school bags, beach bags, satchels briefcases, lap top bags, pilot cases, handbags, pocket wallets, purses, clip top purses, change purses, evening bags, hand bags being tote bags, hand bags being shoulder bags, cosmetic bags, bridal hand bags, weekend bags, flight bags, haversacks, articles of imitation leather, key cases being leather ware, kit bags, gym bags, sports bags, duffle bags, rucksacks, school satchels, shopping bags, sling bags for carrying infants, boot bags, credit card holders, hold-alls, travelling bags Clothing, footwear, headgear, outer clothing, under clothing, woven clothing, knitwear being clothing, clothing of cotton, silk, linen, wool, clothing made from man made-fibres, clothing made from a combination of cotton, silk, linen, wool and man-made fibres, shirts, blouses, shirts and blouses with wing collar, shirts and blouses with Eton collars, evening wear, namely shirts and blouses and dinner jackets, shirts and blouses with double cuffs, shirts and blouses with French cuffs, shirts and blouses with detachable collars, shirts and blouses without collars, long sleeve shirts and blouses, short sleeved shirts and blouses, shirts and blouses with graphics printed on them, men's shirts, women's blouses, children's shirts and blouses, shirts and blouses for babies, bow ties, ties, lounge suits, waist coats, trousers, sports clothing, T-shirts, tee-shirts, long sleeved T-shirts, short sleeved T-shirts, T-shirts with graphics printed on them, men's T-shirts, women's T-shirts, children's T-shirts, T-shirts for babies, polo shirts, men's polo shirts, women's polo shirts, children's polo shirts, polo shirts for babies, polo shirts with graphics printed on them, sweatshirts, sweatshirts with graphics printed on them, men's sweatshirts, women's sweatshirts, children's sweatshirts, sweatshirts for babies, hooded tops, hooded tops with graphics printed on them, men's hooded tops, women's hooded tops, children's hooded tops, hooded tops for babies, jackets, waxed jackets, reefer jackets, bomber jackets, warm jackets, wind proof jackets, socks, stockings and hosiery, mittens, pullovers, scarves, ski hats, sports jerseys, swimwear, gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, bikini swimming costumes, tankinis, tops, thongs, pants, bras, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of lingerie, articles of underwear, pyjamas, night wear, dressing gowns, bath robes, beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps, rain coats, sou'westers, cagoules, sportswear, boxer's shorts and vests, sports bras, sports panties, sports briefs, and jockstraps, sports pants, sports shorts, sports T-shirts, sports crop-tops, sports vests, trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants, bicycling shorts, soccer shirts, soccer shorts, soccer socks, football strips, football kits, items of clothing for playing football in, football shirts, football boots, studs for football boots, football boots for use on synthetic turf surfaces, football shorts and football socks, rugby shirts, rugby shorts and rugby socks, swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing, wet suits for water-skiing, wet suits for windsurfing, dry suits, headgear, hats, woolly hats, caps, bobble hats, baseball caps, cricket hats, sunhats, sun-visors, swimming caps, aprons being clothing, boxer shorts, camisoles, caps being headwear, headgear for wear, waterproof and water resistant outer garments, waterproof and water resistant outer clothes, footwear uppers, heel pieces and tips for footwear, studs, spikes and metal fittings for footwear, welts for boots and shoes, heels for boots and shoes, tips for foot-wear, soles, inner soles, non-slipping devices for footwear, articles of industrial and work footwear, headgear and clothing, protective and safety footwear other than for protection against injury or accident, waterproof and water resistant clothing, headwear, footwear, slippers, bath sandals and bath slippers, dance shoes, ladies shoes, leather shoes, high heeled shoes, shoes with stiletto heels, ladies shoes with heels, dancewear including footwear, beachwear including footwear, shoes, boots, trainers, flip-flops, sandals mules, slip on shoes, slip on boots, moccasin, loafers, deck shoes, plimsolls, Wellington boots, beach shoes, shoes for windsurfing and water sports, software downloadable from the internet in the form of greetings cards or greetings messages, e-cards, e-messages, electronic greetings cards and electronic greetings messages, digital greetings cards and digital greetings messages, electronic and or digital cards, birthday e-e-e-cards, Christmas e-cards, wedding e-cards, new baby e-cards, baptismal e-cards, bar mitzvah e-cards, bat mitzvah e-cards, maternity leave e-cards, paternity leave e-cards, promotion e-cards, leaving for another job e-cards, moving house e-cards, relocation e-cards and having a baby e-cards, Christian confirmation e-cards, first confession e-cards, engagement e-cards, retirement e-cards, graduation e-cards, divorce e-cards, cards upon professional qualification, e-cards to celebrate exam success, coming of age e-cards, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, cosmetic creams, anti-ageing creams, anti-wrinkle creams, soaps, perfumery, essential oils, cosmetics, cosmetic preparations, cosmetic preparations for skin care, dentifrices for personal use, toiletries and toilet preparations, bath additives, bath creams, bath concentrates, bath crystals, bath cubes, bath essences, bath foams, bath gels, bath lotions, bath oils and bath oil concentrates, bath pearls, bath powders, bath preparations, soaps, shower gels, shaving lotion, shaving gels, shaving mousse, hair lotions, hair care products and preparations, preparations for the hair, hair shampoo, perfumes, colognes and skin preparations, skin lotions, aftershave lotions, perfumes, eau de cologne, colognes, after-sun products and preparations, artificial tan preparations and products, sun cream, sun block, skin creams, lotions and preparations for protection against sun burn, non-medicated suntan lotions bath preparations, massage creams, massage oils, preparations for cleaning and cleansing the body, skin, scalp, teeth, mouth, nails, hair, dermatological preparations, dermatological substances, dermatological creams, pre-moistened disposable paper towelettes, talcum powder, body milks, body lotions, baby oil, baby care products, babies' creams, petroleum jelly for cosmetic purposes, white petroleum jelly, preparations and products for oral hygiene, cotton wool in the form of balls, buds, pads, pleats, rolls, sticks, swabs, wipes, tips and wadding, cotton wool for cosmetic use, antiperspirants, deodorants, body deodorants, deodorant creams for personal use, deodorant preparations for personal use, deodorant soap, deodorant sprays for personal use, deodorant sticks for personal use, deodorants for personal use, deodorants for personal use in the form of sprays, deodorants for personal use in the form of sticks, deodorants for the body, deodorants for the feet sunglasses, contact lenses, sunglass cases, spectacle cases, contact lens cases, safety and protective clothing, headwear and footwear, safety and protective outer clothing, outer clothing for protection against accident or injury, clothing, headwear and footwear for protection against accident or injury, compact disc holders, record holders, ear plugs, e-books, downloadable publications, downloadable newspapers, newsletters, magazines, pamphlets, booklets, books, brochures, headphones, magnets, memory cards, mouse pads, public address speaker systems, computer software, software downloaded in electronic form for use on computers, telephones, mobile telephones, Personal Digital Assistants, or other electronic apparatus, downloadable electronic publications and software, electronic communications apparatus and instruments, electrical communications apparatus and instruments, telecommunications apparatus and instruments, downloadable data in digital form, downloadable data in electronic form, downloadable software, downloadable music, downloadable films, Television programs, videos, music videos, radio broadcasts, electronic publications, on-line publications, downloadable publications, compact discs, records, cassettes, tapes, discs, laser discs, CD-Roms, DVDs, video cassettes, video discs, digital audio tapes, MP3 players, podcasts, sound recordings, video recordings, apparatus for recording, transmission or reproduction of sound or images, amplifiers, sound decks, loudspeakers, microphones, megaphones, photographic equipment, data storage components, apparatus for the transmission of messages, downloadable educational material, magazines, downloadable newsletters, downloadable news sheets, downloadable advertising sheets, downloadable printed matter, downloadable books, downloadable pamphlets, downloadable journals, MP3 and other digital format audio and video players, handheld computers, personal digital assistants, electronic organizers, electronic notepads, magnetic data carriers, telephones, mobile phones, computer gaming machines, videophones, cameras, computer hardware and software, prerecorded computer programs for personal information management, database management software, electronic mail and messaging software, paging software, database synchronization software, computer programs for accessing, browsing and searching online databases, computer hardware and software for providing integrated telephone communication with computerized global information networks, parts and accessories for handheld and mobile digital electronic devices, parts and accessories for mobile telephones, mobile telephone covers, mobile telephone cases, mobile telephone cases made of leather or imitations of leather, mobile telephone covers made of cloth or textile materials, batteries, rechargeable batteries, chargers, chargers for electric batteries, headphones, stereo headphones, in-ear headphones, stereo speakers, audio speakers, audio speakers for home, personal stereo speaker apparatus, microphones, car audio apparatus, apparatus for connecting and charging portable and handheld digital electronic devices, Computer software for use in downloading, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organising data including audio and video data, sound, video and data recordings, chips, discs and tapes bearing or for recording computer programs and software, multimedia products comprising or for use with the transmission of audio and video data, apparatus for the downloading, transmitting, encoding, decoding, editing, playing and storage of data including audio and video recordings, interactive products comprising or for use with any of the aforesaid goods, precious metals and their alloys and goods in precious metal or coated therewith, jewellery and imitation jewellery, precious stones, cufflinks and tie pins, horological and chronometric instruments, time pieces, brooches, jewellery cases, figurines being statuettes of precious stones, figurines coated with precious metal, figurines for ornamental purposes of precious stones, figurines of precious metal, figurines made from gold, silver or platinum, action figures being decorative of precious metal or made from, model figures being ornaments coated with precious metal, model figures made of precious metal or precious stones, jewellery being time pieces, jewellery including time pieces, clocks, watches, stop watches, and cases, bands and straps therefore, cases of precious metals for clocks, cases of precious metals for watches, clock cases, cabinets for clocks, clock hands, clock works, monumental clocks, table clocks, industrial clocks, mantle clocks, master clocks, miniature clocks, tower clocks, wall clocks, long case clocks, desk clocks, timing clocks, stands for clocks, travel clocks, control clocks, dials for clocks and watches, master clocks, clock movements, watch movements, ornamental clocks, pendulums for clocks, alarm clocks, atomic clocks, barrels being parts of clocks and watches, faces for clocks and faces for watches, clocks for world time zones, clocks having quartz movements, watches having quartz movements, clocks incorporating ceramics, clocks incorporating radios, control clocks being master clocks, electric clocks, electric watches, clockworks, watch bands, watch cases, watch chains, watch crystals, watch glasses, watch springs, watch straps, clock dials, digital clocks, digital clocks being electronically controlled, electronically operated movements for clocks, apparatus for sports timing, cocktail watches, wrist watches for men, wrist watches for women, rings, ear rings, ear-studs, nose studs, nose rings, eyebrow, lip, cheek, nose, face and body rings, belly button rings, belly button studs, nipple rings and nipple studs and nipple bars, body jewellery being studs, bars, piercing and rings, items of intimate body jewellery, being studs, bars, piercing or rings, finger rings, bracelets, necklaces, precious stones, key fobs coated with precious metal, key rings, key rings of precious metals, leather and imitations of leather, and Candles, scented candles and wicks for lighting, lubricants, industrial oils and greases, fuels and illuminants and electricity, Lamps, domestic lamps, desk lamps, table lamps, lamp shades, chandeliers, chandelier pendants, apparatus for lighting, heating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, refrigerators, torches, Printed matter, printed publications, greetings cards, birthday invitations, wedding invitations, party invitations, birthday cards, Christmas cards, wedding cards,, new baby cards, baptismal cards, bar mitzvah cards, bat mitzvah cards, maternity leave cards, paternity leave cards, promotion cards, leaving for another job cards, moving house cards, relocation cards and having a baby cards, Christian confirmation cards, first confession cards, engagement cards, retirement cards, graduation cards, divorce cards, cards upon professional qualification, cards upon exam success, coming of age cards, magazines, business card holders, bookmarks, calendars, periodicals, journals, newspapers, newsletters, brochures, flyers, advertising material, paper, cardboard and goods made from these materials, stationery, pamphlets, prospectuses, books, forms, maps, magazines, manuals, pictures photographs, photograph albums, calendars, catalogues, instructional and teaching materials, publicity material, promotional material, advertising material, books, writing instruments, office requisites (other than furniture), stickers, car stickers, programmes, posters, postcards, prints, playing cards, greeting cards, cards, tickets, leaflets, carrier bags, paper bags, ring binders, notebooks, book covers, folders, diaries, adhesive labels, business cards, business card holders, cases for pens, pens, pencils, writing materials, paper weights, letter openers, souvenir plastic carrier bags, computer programs in printed form, paper tapes, cards, ribbons and discs, paper tissues, paper napkins, menus, tickets, vouchers, framed paintings, unframed paintings, paintings for mounting in frames, water-colors being paintings, works of art being paintings, works of art in the form of framed paintings including works in watercolours, oils, pastel, pencil, ink, acrylic, tempera, works of art in the form of unframed paintings, Furniture, mirrors, bathroom furniture, bedroom furniture, kitchen furniture, living room furniture, dinning room furniture, mirrored furniture, upholstered furniture, cushions, pillows, chairs, armchairs, seats, sofas, tables, beds, metal furniture, shelves, racks, benches, boxes magazine racks, trolleys, CD racks, DVD racks, utensil racks, recipe book stands, bottle racks, spice racks,, picture frames, garden furniture, garden, non metallic key rings, figurines being statuettes of wood, wax, plaster or plastic, ornamental figurines wood, wax, plaster or plastic, figurines made of gypsum cement or of gypsum derivatives, plaster, plastics, wax, wood or wood resin, miniature figurines, book rests being furniture, clothes racks being furniture, Works of Art of wood, wax, plaster or plastic, cups, saucers, mugs, breakfast mugs, plates, side plates, egg cups, storage jars', bowls dishes, rice bowls, soup bowls, butter dish, oven gloves, baking trays made of aluminium, cake trays of precious metal, cloths for wiping tableware, trays for household utensils of china, ceramic, earthenware, glass, porcelain or plastic cutlery trays, decorative trays of china, ceramic, earthenware, glass, porcelain or plastic, draining trays, ice cube trays, metal trays for domestic purposes, non-metallic trays for domestic purposes, serving trays, litter trays for pets, trays for domestic purposes, trays for domestic use, cruet sets, household or kitchen utensils and containers (not of precious metal or coated therewith), combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), giftware, glassware, porcelain and earthenware baby baths being portable, basins bowls, decanters, glass stoppers, bottle openers, corkscrews, ceramics for household purposes, combs, cups of paper or plastic, cups, not of precious metal, drinking glasses, glasses, mugs, not of precious metal, paper plates, table plates, not of precious metal, tableware other than knives, forks and spoons not of precious metal, toilet cases, toothbrushes, toothbrushes, electric, vacuum bottles, domestic, household, bathroom or kitchen utensils and containers, wheeled containers of non-metallic materials for household or kitchen storage, containers for household storage purposes, kitchen use containers for kitchen storage purposes, containers of common metal with compartments for storage for kitchen use, containers of precious metal for storage purposes for household use, containers of precious metal for storage purposes for kitchen use, combs and sponges, brushes, lavatory brushes, soap and towel holders and dispensers, soap dishes, bath bridges, articles for cleaning purposes, glassware, porcelain and earthenware crockery, egg holders, egg cups, toast racks, fitted picnic hampers, fitted picnic baskets, baskets, utensil containers, utensil pots, ice buckets, ice cube moulds, basins, bowls, receptacles, pitchers, bottles, plates, cups, mugs, saucers, jars, pots, pans, dishes, baskets, bins, boxes, ironing boards, bread bins, bread boards, cutting boards, beaters, blenders, bristles, brushes, buckets, candlesticks, candle rings, candle extinguishers, candle holders, coffee grinders, percolators, filters, pots, cooking utensils, whisks, cruets and cruet stands, dustbins and wastebins, flower pots, plant pots, planters, holders for flowers and plants, vases, jugs, graters, griddles and grills, sieves, shakers, sprinklers, strainers, kettles, spice jars and containers, spice mills, salt and pepper grinders, spice sets, draining racks, table mats and coasters, mug trees, cooking utensils and tools, holders to contain wine bottles and dispense wine, toilet roll dispensers, towel rails, coasters in the form of a stand, coasters in the form of crockery, coasters made of china, earthenware, glass, porcelain, coasters and placemats not of paper and other than table linen, saucepan scourers of metal, earthenware saucepans, aluminium cookware, Textiles and textile goods, textiles for making parts of articles of headgear, duvets, covers for pillows, cushions or duvets, breathable piece goods made of textile materials, Cushion covers, furniture throws, blankets, bed linen, bed and table covers, textile goods, flags and banners, curtains, tea towels, coasters of table linen, plastic table cloths, textile table cloths, table cloths not of paper, table cloths for hygienic purposes made of non-woven materials, drink coasters of table linen, pillow shams, pillowcases, pillow cases, bed blankets, bed blankets made of cotton, man-made fibres or wool, cot blankets, quilted blankets being bedding, travel blankets, bath sheets being towels, bath towels, beach towels, hand towels of textile, kitchen towels of textile, towels of textile, bed sheets, cot sheets, dust sheets, mats being coasters of textile, textile coasters, fabric place mats, place mats not of paper, place mats made of textile, ceramic, plastics, cork, glass, metal wood or porcelain, table place setting mats of textile, ceramic, plastics, cork, glass, metal wood or porcelain, water vapour permeable textiles, waterproof textile fabrics, breathable fabrics, performance fabric, technical fabrics, fabrics with insulating properties, textile goods for manufacturing water proof clothing, footwear and headgear, textile goods for manufacturing breathable clothing, footwear and headgear, textile goods for manufacturing technical clothing, footwear and headgear, textile goods for manufacturing clothing, footwear and headgear with insulating properties, Games and playthings, gymnastic and sporting articles, decorations for Christmas trees, toys, balls for games, bats for games, board games, building blocks being toys, dolls, dolls' clothes, apparatus for electronic games other than those adapted for use with television receivers only, mobiles being toys, parlour games, play balloons, puppets, skateboards, toy masks, puzzles and jigsaw puzzles, toy balloons, automatic slot machines, toy sporting equipment, video game machines incorporating a means of display and not adapted for use with television receivers, toy figures, toy military figures, cuddly toys, teddy bears, being toys.

The application was published on 12 March 2012.
On 12 June 2012, Frank Dann and Andreas Backer (‘the opponents’) filed an opposition against the registration of the published trade mark application for as amended goods and services, namely:

The grounds of opposition were those laid down in Article 8(1)(b) EUTMR (likelihood of confusion).
The opposition was based on the earlier word mark

HOOLIGAN

registered as European Union trade mark No 7 179 with a filing date of 1 April 1996 and a registration date of 6 April 2006 for the following goods:

Class 25 – Clothing and headgear.

Upon the applicant’s request on 9 September 2014, the opponents submitted the following evidence of proof of use. The opponents requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. Therefore, the evidence is described only in general terms without divulging any such data:

Affidavit dated 8 September 2014 by Frank Dann, one of the two trade mark owners, who is an associate of the company ‘Backer & Dann GbR’ stating that he has been an associate of Backer und Dann GbR which founded the shop ‘HOOLIGAN’ in 1993. The affidavit further attests that, inter alia, clothing and headgear have been promoted and distributed under the trade mark ‘HOOLIGAN’ in Germany, and throughout Europe since 1993. The affidavit confirms that the use of the trade mark ‘HOOLIGAN’ can be seen in the attached catalogues of the years 2008 to 2012, which reveal pictures of clothing and headgear with the labelling ‘HOOLIGAN’. Furthermore, the affidavit refers to the attached invoices and confirms that the respective products were sold and invoiced to consumers in several countries in the European Union in the period between 2008 and 2012, inter alia, in Spain, France and Hungary. Moreover, it is declared that clothing and headgear were sold between 2008 and 2012 through the own online shop under hooligan.de as well as through other online shops, such as derversand.de, code69.de, skinsandpunks.com and gabberwear.nl as can be seen by the submitted printouts. The declaration indicates the turnover that the shop ‘Hooligan’ achieved in 2008, 2009, 2010, 2011 and 2012 by selling clothes and headgear under the trade mark ‘HOOLIGAN’ in the European Union and confirms the congruence of the given figures with the company’s accounting system (Attachment W 1).
Copies of the opponents’ product catalogues for consumers (Fall/Winter 2007/2008; Winter 2009/2010; Summer/Spring 2010; Spring 2011; Autumn/Winter 2011; ‘hooligan STREETWEAR – 15 years and counting’) showing the sign ‘hooligan STREETWEAR’ inter alia on the cover page. The catalogues display clothing (inter alia T-shirts, trousers, sleeveless shirts, long sleeved shirts, shirts, underwear, polo-shirts, jackets, hooded sweaters, sweaters, knit pullovers, knit cardigans, jogging pants, jeans, shorts, parka, windbreaker, jeans jackets, vests, scarfs, belts, shoes, sneakers, boots, gloves) and headgear (inter alia baseball caps, knit caps). Many of the products bear ‘HOOLIGAN’, ‘HOOLIGAN STREETWEAR’, ‘hooligan’ or ‘hooligan STREETWEAR’ as a print on their front; others bear it inside on their labels. The products are marked with references and prices in Euros. All catalogues contain on the first page after the cover page a reference to ‘Hooligan™, Heidelberger Str. 13 HH, 60327 Frankfurt’, to the website www.hooligan.de, the order hotline as well as to the shop in Moselstr. 15, 60329 Frankfurt. The catalogues are in English. However, the catalogues of Winter 2009/2010, Summer/Spring 2010, Spring 2011 contain a preface written in German. The catalogue of Spring 2011 contains on its cover as well as on the side of the preface a photograph of Phil Campbell, member of the band Motörhead (Attachments A 1-6).
Photographs of the opponents’ clothing bearing the trade mark ‘HOOLIGAN’ and relevant labelling (Attachment A 7).
Copies of twelve invoices dated between 2008 and 2011 covering the relevant period and three invoices dated outside the relevant period. The invoices of the relevant period are made out to customers in France, Hungary and Spain. Each of them bears the logotype ‘hooligan STREETWEAR’ on the right top corner showing sales of clothing (jackets, t-shirts, polo-shirts, tank tops, hooded sweatshirts, hooded sweatjackets, scarfs, trainerjackets, sneakers, jeans, parkas) and headgear (caps), listed with catalogue references and prices (Attachment A 8).
Printout from the opponents’ online-shop selling the opponents’ goods labelled ‘HOOLIGAN’ (www.hooligan.de) showing a printout date of 11 August 2014 (Attachment A 9).
Printout from third party online-shops selling the opponents’ goods labelled ‘HOOLIGAN’, namely http://www.skinsandpunks.com/brand-hooligan-streetwear, https://www.derversand.de/Maenner/T-Shirts-Maenner/Hooligan-Maenner-T-Shirts:::2_25_643.html, www.code69.de/HOOLIGAN, www.gabberwear.nl/hooligan.html. The printout from the website www.skinsandpunkt.com contains additionally the following text: ‘Hooligan Streetwear was born in Germany in 1993 by two friends and partners interested in football and music. Hooligan Streetwear is today an established brand in Europe with a U.S. subsidiary. The link between the brand and the music is inevitable. In addition to sponsoring many festivals and music events, the brand is worn by bands that range from Oi!, Punk, ska, psychobilly, hardcore, rock'n'roll, heavy metal. Among the groups wearing the brand we can find Dropkick Murphys, Hatebreed, Sick Of It All, The Business, Discipline, Skunk DF, Suspenders, Deskontrol, Malas Cartas, Exploited, Meteors, Mark Foggo's Skanksters, Option K-95, Stage Bottles , Argy Bargy, Terror, Motorhead, Sepultura, Walls of Jericho, Verlorene Jungs, etc ... Hooligan Streetwear offer you shirts, ninjas, hoodies, backpacks, harringtons, parkas, etc ...’ All printouts bear the printout date 11 August 2014 (Attachment A 10).

On 22 June 2015, the opponents submitted the following additional evidence:

Additional invoices (Attachment A 12).
Copies of online sales of clothing and headgear under the trade mark ‘HOOLIGAN’ offered by the online shop ‘skinandpunks.de’, a distributor delivered by the opponents. The copies result from a search on waybackmachine.com and reflect snapshots of the website of 28 July 2010 (Attachment A 13) and of 5 April 2011 (Attachment A 14).
Photos of clothing and headgear to show that the opponents’ products, especially t-shirts, have a tag with the ‘HOOLIGAN’ trade mark even if they do not have a front logo ‘HOOLIGAN’ (Attachment A 16).

By decision of 1 September 2015 (‘the contested decision’), the Opposition Division partially refused the contested trade mark application for the following goods and services on the grounds that there was a likelihood of confusion:

Class 25 – Clothing; headgear; outer clothing; under clothing; woven clothing; knitwear being clothing; clothing of cotton, silk, linen, wool; clothing made from man made-fibres; clothing made from a combination of cotton, silk, linen, wool and man-made fibres; shirts; blouses; shirts and blouses with wing collar; shirts and blouses with Eton collars; evening wear, namely shirts and blouses and dinner jackets; shirts and blouses with double cuffs; shirts and blouses with French cuffs; shirts and blouses with detachable collars; shirts and blouses without collars; long sleeve shirts and blouses; short sleeved shirts and blouses; shirts and blouses with graphics printed on them; men's shirts; women's blouses; children's shirts and blouses; shirts and blouses for babies; bow ties, ties, lounge suits, waist coats, trousers; sports clothing; T-shirts, tee-shirts; long sleeved T-shirts, short sleeved T-shirts, T-shirts with graphics printed on them, men's T-shirts, women's T-shirts, children's T-shirts, T-shirts for babies; polo shirts; men's polo shirts; women's polo shirts; children's polo shirts; polo shirts for babies; polo shirts with graphics printed on them; sweatshirts; sweatshirts with graphics printed on them, men's sweatshirts, women's sweatshirts, children's sweatshirts, sweatshirts for babies; hooded tops; hooded tops with graphics printed on them, men's hooded tops, women's hooded tops, children's hooded tops, hooded tops for babies; jackets; waxed jackets; reefer jackets; bomber jackets; warm jackets; wind proof jackets; socks, stockings and hosiery; mittens; pullovers; scarves; ski hats; sports jerseys; swimwear; gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, bikini swimming costumes, tankinis, tops, thongs, pants, bras, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of lingerie; articles of underwear, pyjamas, night wear, dressing gowns, bath robes; beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps; rain coats; sou'westers; cagoules; sportswear, boxer's shorts and vests, sports bras, sports panties, sports briefs, and jockstraps, sports pants; sports shorts, sports T-shirts, sports crop-tops, sports vests; trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants; bicycling shorts; soccer shirts, soccer shorts, soccer socks; football strips; football kits; items of clothing for playing football in; football shirts, football boots; football boots for use on synthetic turf surfaces; football shorts and football socks, rugby shirts, rugby shorts and rugby socks, swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing; wet suits for water-skiing; wet suits for windsurfing; dry suits; headgear, hats, woolly hats, caps, bobble hats, baseball caps, cricket hats, sunhats, sun-visors, swimming caps; aprons being clothing; boxer shorts; camisoles; caps being headwear; headgear for wear; waterproof and water resistant outer garments; waterproof and water resistant outer clothes; articles of industrial and work footwear, headgear and clothing; protective and safety footwear other than for protection against injury or accident; waterproof and water resistant clothing, headwear, footwear; slippers; bath sandals and bath slippers; dance shoes; ladies shoes; leather shoes; high heeled shoes; shoes with stiletto heels; ladies shoes with heels; dancewear including footwear; beachwear including footwear; shoes, boots, trainers, flip-flops, sandals mules, slip on shoes; slip on boots; moccasin; loafers; deck shoes; plimsolls; Wellington boots, beach shoes, shoes for windsurfing and water sports;

The Opposition Division stated that the trade mark applied for may proceed for the remaining goods and services, including the goods in:

Class 25 – Boot uppers; cap peaks; dress shields; fittings of metal for footwear; footwear uppers; hat frames [skeletons]; heelpieces for footwear; heelpieces for stockings; heels; inner soles; non-slipping devices for footwear; pockets for clothing; ready-made linings [part of clothing]; shirt fronts; shirt yokes; soles for footwear; studs for football boots; tips for footwear; welts for footwear, heel pieces and tips for footwear; studs, spikes and metal fittings for footwear; welts for boots and shoes; heels for boots and shoes; tips for foot-wear; soles, inner soles, parts and fittings for all the aforesaid goods.

It gave, in particular, the following grounds for its decision:

The opponents were required to prove that the trade mark was put to genuine use in the European Union from 12 March 2007 to 11 March 2012 inclusive.
The Office notes that the evidence submitted by the opponents on 22 June 2015 was late and, therefore, in principle should not be taken into account. In the present case the issue of whether or not the Office may exercise the discretion conferred on it by Article 76(2) EUTMR to take into account the additional evidence can remain open, as the evidence submitted within the time-limit is sufficient to prove the required genuine use of the earlier mark.
The statements in the affidavit of 8 September 2014 are reinforced and developed by the accompanying evidence.
The applicant’s argument that there is not sufficient proof of genuine use is based on an individual assessment of each item of evidence. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
In the present case, most of the evidence is dated within the relevant period. The evidence referring to use outside the relevant period confirms use of the opponents’ mark within the relevant period. This is because the invoices refer to the use of the trade mark within the relevant period and show that they were issued for the consumers using the same consumer reference used in Spain, France and Hungary as indicated in the invoices, confirming the sales were made within the relevant period.
The remaining invoices cover the relevant period and territory. The invoice numbers are not sequential, which implies further sales. The invoices show a sustained and consistent use of the trade mark during an appropriate period of time.
The opponents’ catalogues bear the trade mark ‘HOOLIGAN’ with the addition of the non-distinctive element ‘STREETWEAR’. The catalogues show items from the whole collection of clothing and headgear, for example ‘autumn/winter 2007/2008’, ‘spring/summer’ and ‘autumn/winter 2011’, with prices in Euros, which confirms that the products were targeted at European consumers. Moreover, in the catalogue of 2008 there is a paragraph concerning 15 years’ use of the trade mark ‘HOOLIGAN’, which suggests that the trade mark ‘HOOLIGAN’ has been on the market for this period.
It is clear that the catalogues submitted under the trade mark ‘HOOLIGAN’ were issued in a professional manner in English, with the intention of distributing and selling to the widest range of the public as possible within the European Union. Moreover, the catalogues contain information regarding the address of a physical shop in Germany (Frankfurt am Main) and include the opening hours as well as the address of the website www.hooligan.de. Therefore, the evidence relates to the relevant territory.
Although the evidence indicates a low commercial volume of use, it shows use of the mark in several Member States, namely, Germany, Spain, France and Hungary. Therefore, the opponents have provided sufficient indications concerning the extent of the use.
In the present case, the vast majority of clothing and headgear shown in the catalogues have a visible logotype, as well as the standard labelling with the trade mark ‘HOOLIGAN’ logotype in different variations. The Office disagrees with the applicant that this type of logotype, with highly stylised gothic letters, presents the word ‘KOOLIGAN’, and not the ‘HOOLIGAN’ trade mark. Conversely, the genuine use of the word mark ‘HOOLIGAN’ as registered is not excluded by the opponents tagging the products or promotional materials such as catalogues, brochures and advertisements with the figurative trade mark ‘HOOLIGAN’ or even with the additional non-distinctive word element ‘STREETWEAR’ or highly stylised graphical representations thereof. Those elements do not alter the essence of the distinctive character of the registered word mark ‘HOOLIGAN’.
The contested application, filed on 20 January 2012, seeks protection for the entire class heading of Class 25 of the Nice Classification. According to Communication No 2/12 of the President of the Office of 20 June 2012, as regards Community trade mark applications filed before 21 June 2012, the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time the filing was made, in this case the 10th edition. In the case of Class 25, the Opposition Division has identified the following items in the alphabetical list covered by the contested CTM [EUTM] application that do not fall within the natural and usual meaning of these general indications:

The contested ‘clothing and headgear’ are identically contained in both lists of goods and services. These goods are therefore identical.
The contested ‘outer clothing; under clothing; woven clothing; knitwear being clothing; clothing of cotton, silk, linen, wool; clothing made from man-made fibres; clothing made from a combination of cotton, silk, linen, wool and man-made fibres; shirts; blouses; shirts and blouses with wing collar; shirts and blouses with Eton collars; evening wear, namely shirts and blouses and dinner jackets; shirts and blouses with double cuffs; shirts and blouses with French cuffs; shirts and blouses with detachable collars; shirts and blouses without collars; long sleeve shirts and blouses; short sleeved shirts and blouses; shirts and blouses with graphics printed on them; men’s shirts; women’s blouses; children’s shirts and blouses; shirts and blouses for babies; bow ties, ties, lounge suits, waist coats, trousers; sports clothing; t-shirts, tee-shirts; long sleeved t-shirts, short sleeved t-shirts, t-shirts with graphics printed on them, men’s t-shirts, women’s t-shirts, children’s t-shirts, t-shirts for babies; polo shirts; men’s polo shirts; women’s polo shirts; children’s polo shirts; polo shirts for babies; polo shirts with graphics printed on them; sweatshirts; sweatshirts with graphics printed on them, men’s sweatshirts, women’s sweatshirts, children’s sweatshirts, sweatshirts for babies; hooded tops; hooded tops with graphics printed on them, men’s hooded tops, women’s hooded tops, children’s hooded tops, hooded tops for babies; jackets; waxed jackets; reefer jackets; bomber jackets; warm jackets; wind proof jackets; socks, stockings and hosiery; mittens; pullovers; scarves; sports jerseys; swimwear; gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, bikini swimming costumes, tankinis, tops, thongs, pants, bras, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of lingerie; articles of underwear, pyjamas, night wear, dressing gowns, bath robes; beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps; rain coats; sportswear, boxer’s shorts and vests, sports bras, sports panties, sports briefs, and jockstraps, sports pants; sports shorts, sports t-shirts, sports crop-tops, sports vests; trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants; bicycling shorts; soccer shirts, soccer shorts, soccer socks; football strips; football kits; items of clothing for playing football in; football shirts, football shorts and football socks, rugby shirts, rugby shorts and rugby socks, swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing; wet suits for waterskiing; wet suits for windsurfing; dry suits; aprons being clothing; boxer shorts; camisoles; waterproof and water resistant outer garments; waterproof and water resistant outer clothes; articles of industrial and work clothing; waterproof and water resistant clothing, dancewear including footwear; beachwear including footwear’ are included in the broad category of the opponents’ ‘clothing’. Therefore, they are considered identical.
The contested ‘ski hats; sou’westers; cagoules; hats, woolly hats, caps, bobble hats, baseball caps, cricket hats, sunhats, sun-visors, swimming caps; caps being headwear; headgear for wear; articles of industrial and work headgear; waterproof and water resistant headwear’ are included in the broad category of the opponents’ ‘headgear’. Therefore, they are considered identical.
The contested ‘footwear; football boots; football boots for use on synthetic turf surfaces; articles of industrial and work footwear; protective and safety footwear other than for protection against injury or accident; protective and safety footwear other than for protection against injury or accident; waterproof and water resistant footwear; footwear; slippers; bath sandals and bath slippers; dance shoes; ladies shoes; leather shoes; high heeled shoes; shoes with stiletto heels; ladies shoes with heels; boots, trainers, flip-flops, sandals mules, slip on shoes; slip on boots; moccasin; loafers; deck shoes; plimsolls; wellington boots, beach shoes, shoes for windsurfing and water sports’ all constitute or are included in the broad category ‘footwear’ and are considered similar to ‘clothing and headgear’, because goods such as ‘clothing, footwear and headgear’ are of identical or very similar nature. They serve the same purpose since they are used to cover and protect various parts of the human body against the elements. They are also fashion articles and are often found in the same retail outlets. Consumers, when seeking to purchase clothes, will expect to find footwear and headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items. Therefore, these goods are similar to each other.
The contested ‘boot uppers; cap peaks; dress shields; fittings of metal for footwear; footwear uppers; hat frames [skeletons]; heelpieces for footwear; heelpieces for stockings; heels; inner soles; non-slipping devices for footwear; pockets for clothing; ready-made linings [parts of clothing]; shirt fronts; shirt yokes; soles for footwear; studs for football boots; tips for footwear; welts for footwear, heel pieces and tips for footwear; studs, spikes and metal fittings for footwear; welts for boots and shoes; heels for boots and shoes; tips for foot-wear; soles, inner soles, parts and fittings for all the aforesaid goods’ can all be considered to fall within the following groupings, ‘parts and accessories for clothing, parts and accessories for footwear and parts of headgear’. They do not coincide, in any aspect, with the opponents’ goods. The mere fact that a certain product can be composed of several components does not establish an automatic similarity between the finished product and its parts. Similarity will only be found in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as the producer, the relevant public and/or complementarity, are fulfilled. In the present case the goods are usually produced by different manufacturers and target a different public. Moreover, the goods in question differ in their nature, purpose and method of use. They are, therefore, considered to be dissimilar.
The contested ‘retail services connected with the sale of the following goods, the bringing together, for the benefit of others, of a variety of the following goods to allow consumers to conveniently view and purchase the following goods, electronic shopping retail services, including such services provided from an internet website, connected with the sale of the following goods and mail order retail services connected with the sale of the following goods, clothing, outer clothing, under clothing, woven clothing, knitwear being clothing, clothing of cotton, silk, linen, wool, clothing made from man-made fibres, clothing made from a combination of cotton, silk, linen, wool and man-made fibres, shirts, blouses, shirts and blouses with wing collar, shirts and blouses with Eton collars, evening wear, namely shirts and blouses and dinner jackets, shirts and blouses with double cuffs, shirts and blouses with French cuffs, shirts and blouses with detachable collars, shirts and blouses without collars, long sleeve shirts and blouses, short sleeved shirts and blouses, shirts and blouses with graphics printed on them, men’s shirts, women’s blouses, children’s shirts and blouses, shirts and blouses for babies, bow ties, ties, lounge suits, waist coats, trousers, sports clothing, t-shirts, tee-shirts, long sleeved t-shirts, short sleeved t-shirts, t-shirts with graphics printed on them, men’s t-shirts, women’s t-shirts, children’s t-shirts, t-shirts for babies, polo shirts, men’s polo shirts, women’s polo shirts, children’s polo shirts, polo shirts for babies, polo shirts with graphics printed on them, sweatshirts, sweatshirts with graphics printed on them, men’s sweatshirts, women’s sweatshirts, children’s sweatshirts, sweatshirts for babies, hooded tops, hooded tops with graphics printed on them, men’s hooded tops, women’s hooded tops, children’s hooded tops, hooded tops for babies, jackets, waxed jackets, reefer jackets, bomber jackets, warm jackets, wind proof jackets, socks, stockings and hosiery, mittens, pullovers, scarves, ski hats, sports jerseys, swimwear, gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, bikini swimming costumes, tankinis, tops, thongs, pants, bras, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of lingerie, articles of underwear, pyjamas, night wear, dressing gowns, bath robes, beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps, rain coats, sportswear, boxer’s shorts and vests, sports bras, sports panties, sports briefs, and jockstraps, sports pants, sports shorts, sports t-shirts, sports crop-tops, sports vests, trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants, bicycling shorts, soccer shirts, soccer shorts, soccer socks, football strips, football kits, items of clothing for playing football in, football shirts, football shorts and football socks, rugby shirts, rugby shorts and rugby socks, swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing, wet suits for water-skiing, wet suits for windsurfing, dry suits, aprons being clothing, boxer shorts, camisoles, waterproof and water resistant outer garments, waterproof and water resistant outer clothes, articles of industrial and work clothing, waterproof and water resistant clothing, dancewear including footwear, beachwear including footwear’ are similar to a low degree to ‘clothing’ for which the earlier mark is registered.
The contested ‘retail services connected with the sale of the following goods, the bringing together, for the benefit of others, of a variety of the following goods to allow consumers to conveniently view and purchase the following goods, electronic shopping retail services, including such services provided from an internet website, connected with the sale of the following goods and mail order retail services connected with the sale of the following goods, headgear, sou’westers, cagoules, hats, woolly hats, caps, bobble hats, baseball caps, cricket hats, sunhats, sun-visors, swimming caps, caps being headwear, headgear for wear, articles of industrial and work headgear, waterproof and water resistant headwear’ are similar to a low degree to ‘headgear’ for which the earlier mark is registered.
All the rest of the services, ‘retail services connected with the sale of the following goods, the bringing together, for the benefit of others, of a variety of the following goods to allow consumers to conveniently view and purchase the following goods, electronic shopping retail services, including such services provided from an internet website, connected with the sale of the following goods and mail order retail services connected with the sale of the following goods: footwear, football boots, studs for football boots, football boots for use on synthetic turf surfaces, footwear uppers, heel pieces and tips for footwear, studs, spikes and metal fittings for footwear, welts for boots and shoes, heels for boots and shoes, tips for foot-wear, soles, inner soles, nonslipping devices for footwear, articles of industrial and work footwear, protective and safety footwear other than for protection against injury or accident, waterproof and water resistant footwear, footwear, slippers, bath sandals and bath slippers, dance shoes, ladies shoes, leather shoes, high heeled shoes, shoes with stiletto heels, ladies shoes with heels, shoes, boots, trainers, flip-flops, sandals mules, slip on shoes, slip on boots, moccasin, loafers, deck shoes, plimsolls, wellington boots, beach shoes, shoes for windsurfing and water sports’ concern the retail of different types of footwear and other parts and fittings of the aforesaid goods (parts and accessories for clothing, parts and accessories for footwear and parts of headgear) and other goods, namely ‘waterproof textile fabrics, breathable fabrics, performance fabric, technical fabrics, fabrics with insulating properties, textile goods for manufacturing water proof clothing, footwear and headgear, textile goods for manufacturing breathable clothing, footwear and headgear, textile goods for manufacturing technical clothing, footwear and headgear, textile goods for manufacturing clothing, footwear and headgear with insulating properties’. These retailed goods are not identical to those for which the earlier mark is registered, as they are not within the meaning of ‘clothing’ or ‘headgear’. Retail services related to the sale of particular goods are not similar to other goods. Therefore, these services are considered dissimilar.
Taking into account the visual, aural and conceptual coincidences, it is considered that the signs under comparison are similar.
The conflicting signs do not have any element that could be considered more distinctive or more dominant than the other elements.
The goods and services at issue are directed at the public at large whose level of attention is average.
The signs are similar to the extent that they coincide in the word ‘HOOLIGAN’. The word element ‘HOOLIGAN’ constitutes the earlier sign and is entirely contained in the contested sign. The visual, aural and conceptual differences between the signs are related exclusively to the additional word element of the contested sign ‘PEACEFUL’. Therefore, they are less obvious than the similarities, which will be instantly associated by the relevant English-speaking public with the meaningful, coinciding verbal element ‘HOOLIGAN’. The word ‘HOOLIGAN’, shared by both signs, is the element that will be grasped first from the contested sign by the relevant consumers as the word ‘PEACEFUL’ fulfils only a secondary role by describing it. Therefore, there is a sufficiently close conceptual link between the signs in question.
Hence, there is a likelihood of confusion with regard to all the contested goods and services found to be identical or similar (to various degrees) to the earlier mark’s goods. For the contested goods and services that have been found dissimilar to the earlier mark’s goods, there is no likelihood of confusion.

On 28 October 2015, the applicant filed an appeal against the contested decision, requesting that the decision be as amended set aside as amended upheld. The statement of grounds of the appeal was received on 31 December 2015.
In its observations in reply received on 25 April 2016, the opponents request that the appeal be dismissed.

Submissions and arguments of the parties

The arguments raised in the statement of grounds may be summarised as follows:

The Opposition Division erred in their analysis of the facts and evidence as well as in their holistic assessment of genuine use. It also erred in the analysis of similarity between the marks. Moreover, there is no evidence that there was use by the co-registered proprietors, Mr Backer and Mr Dann, or that the use that was made was with the consent of both, Mr Backer and Mr Dann.
The Opposition Division erred when it considered invoices that date outside the relevant five year period. Given that the total number of invoices filed was very small the inclusion of just a few invoices could well have an impact on the evidence considered to be acceptable.
The analysis given by the Opposition Division was that the invoices were ‘issued for consumers using the same consumer references used in Spain, France and Hungary’. However, there is no logic to this statement.
The goods listed in the invoices and catalogues supplied by the opponents are much broader than those covered by the earlier mark. Therefore, the fact that a party that was not the opponents had customers at some time in the previous fifteen years in for example Spain, and re-used their customer references could easily and much more likely be explained as sales of for example cigarette lighters or posters or luggage, none of which is covered by the earlier mark. The Opposition Division considers that non-sequential invoice numbers submitted by the opponents imply further sales. This is a non-acceptable implication not supported by any evidence. There are a number of reasons which are just as – if not much more – probable explanations for non-sequential invoice numbers, such as changes in the accounting system, invoices issued in error, invoices covering goods other than clothing or headgear etc.
In most cases the invoices referred to goods not covered by the earlier registration and where they did refer to goods covered by the earlier registration the catalogues supplied by the opponents confirm that there was no use of the relevant mark ‘HOOLIGAN’ in plain text on the goods sold.
Besides, no evidence was given as to how many catalogues were printed on, how many catalogues were distributed within the EU. It was also not established whether the catalogues have at all been distributed in the EU.
The holistic approach to the evidence taken by the Opposition Division is flawed and the contested decision should for that reason alone be overturned. The evidence needs to be looked at in detail.
Further, it is not clear from the affidavit which relationship Mr Dann has to the registered proprietors of the earlier mark. He defines himself merely as an associate of ‘Backer & Dann GbR’. However, ‘Backer & Dann GbR’ is not the owner of the earlier mark. There is no evidence or any information that confirms that the use made of the registered mark was with the consent of both, Andreas Backer and Frank Dann. There is also no evidence that Mr Dann, who gave the affidavit, is the same Mr Dann who is one of the co-owners of the registered trade mark. It is a fundamental error of the opponents and also the Opposition Division to not have considered and commented on this aspect.
The affidavit is insufficient. Whilst high levels of turnover are given for ‘clothing and headgear’, the turnover has not been broken down into the two distinct categories ‘clothing’ and ‘headgear’. Moreover, the figures are not supported by further evidence. Given that the sales actually proven by the submitted invoices are so microscopic, it is maintained that the probative value of the affidavit must be considered as extremely limited.
When the required detailed analysis of the evidence is made, it can be seen that none of the goods listed in the invoices bear the mark ‘HOOLIGAN’ in plain text. Some of the goods bear no mark at all, others bear wildly different marks with ‘S’ logos, dragon logos and other additional matter. All of these types of use must be excluded from the considerations of whether or not there has been genuine use of the mark ‘HOOLIGAN’ as they clearly do not support the use of the mark ‘HOOLIGAN’.
The Opposition Division erred by rejecting the argument that the highly stylised graphic German style font must be read as ‘KOOLIGAN’ rather than ‘HOOLIGAN’. Use of the highly stylised ‘KOOLIGAN’ mark is not use of the mark ‘HOOLIGAN’. The Opposition Division’s analysis that the word ‘STREETWEAR’ is non-distinctive is also wrong. Given the fact that ‘STREETWEAR’ is a neologism with no direct meaning attributable, it adds distinctive character to the mark as a whole. ‘KOOLIGAN STREETWEAR’ is no use of the mark ‘HOOLIGAN’.
The use of the ‘Hooligirl’ mark must mean that some of the turnover given as turnover for the trade mark ‘HOOLIGAN’ must be attributed to sales under the trade mark ‘Hooligirl’. These facts further weaken the probative value of the affidavit.
It is maintained that ‘HOOLIGAN’ is an unusual word even for English-speaking consumers because of its derivation from a surname. As it is a difficult and unusual English word, it is not one that is generally known by consumers who speak English as a second or third language. Therefore, the average consumer in Italy, Hungary, France or Germany is likely to see the mark as ‘KOOLIGAN’ and not as ‘HOOLIGAN’ given the stylisation of the mark.
The Opposition Division erred in its comparison of the marks. Hooligans are known as being aggressive, violent individuals concerned only with wilful destruction and damage. Therefore, the term ‘peaceful’ although clarifying the nature of the word ‘hooligan’ makes the mark as a whole conceptually very, very different to the word ‘hooligan’; phonetically and visually the marks are very different because the presence of the word ‘peaceful’ more than doubles the length of the mark and the consumer’s focus clearly lies on the first part of the mark, i.e. the word ‘PEACEFUL’.

The arguments raised by the opponents in reply to the appeal may be summarised as follows:

The contested decision is well founded and in compliance with European case law.
The opponents have submitted sufficient proof of use. The catalogues (Attachments 1 to 6) have been distributed to various end consumers and to commercial customers all over Europe.
The affidavit clearly states that the trade mark owners achieved the given revenue from sales of headgear and clothing under the trade mark ‘HOOLIGAN’. This concerns products with the front label ‘HOOLIGAN’.
The opponents cannot be obliged to file invoices for every single sale of a relevant product. The applicant misapprehends the applicable standards regarding proof of use.
Moreover, the applicant’s assertion that Mr Frank Dann is not the owner of the opposition mark was and is far-fetched and does not have to be further commented on. ‘Backer and Dann GbR’ is a civil law partnership consisting of the two opponents who are the sole associates. A civil law partnership (‘Gesellschaft bürgerlichen Rechts, GbR’) is defined as an association of individuals or enterprises united in the achievement of a joint contractual purpose. It is automatically established without formal requirements when two persons trade with a joint purpose. It may not be entered into the commercial register. The opponents have sold the ‘HOOLIGAN’ products via their website ‘hooligan.de’ and their shop in Moselstraße 15, 60329 Frankfurt, Germany. Moreover, they sold inter alia clothing and headgear to various online shops and to other local shops, as mentioned in the affidavit.
The printing on the headgear and clothing is ‘HOOLIGAN’ – and not ‘KOOLIGAN’ – although the contrary was claimed by the applicant. The font of the ‘HOOLIGAN’ print is an old but still common font, such as Old English Text MT. The ‘h’ will not be read as ‘k’.
Furthermore, the Opposition Division’s finding that the additional non-distinctive word element ‘STREETWEAR’ does not alter the distinctive character of the part ‘HOOLIGAN’ is correct. ‘STREETWEAR’ is a common word not only in English-speaking countries. It is common also in other countries of the European Union, in particular in Germany, Hungary and Spain, as a typical descriptive term of clothing.
The applicant does not challenge the Opposition Division’s conclusion that the goods and services of the contested trade mark for which the registration was rejected are identical or similar to the opponents’ goods.
The applicant asserts that the word ‘HOOLIGAN’ is an unusual English word and that the average person in the European Union will not necessarily know what a ‘HOOLIGAN’ is. If this was the case (which it is not), a likelihood of confusion would be even clearer as the meaning of the word ‘peaceful’ is known to the average consumer in the European Union and thus has only a descriptive role.
In summary, there is a likelihood of confusion with regard to the goods and services at issue in the appeal proceedings.

Reasons

The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
However, the appeal is not well founded. The Opposition Division correctly found a likelihood of confusion with regard to the goods and services at issue.

Scope of appeal

The applicant appealed the contested decision only in part and not in its entirety. In its notice of appeal, the applicant specified the extent of its appeal by listing all the goods and services for which the contested application was expressly refused in the operative part of the contested decision. The appeal must, however, be read as being directed also against the refusal of the application with regard to the contested ‘footwear’ in Class 25.
Although the contested decision does not explicitly refuse the contested application for the contested ‘footwear’ in Class 25, it must be interpreted as containing an implicit refusal in this regard. The operative part of a decision must always be interpreted in light of the factual and legal grounds on which it is based (10/06/2008, T‑85/07, Gabel, EU:T:2008:186, § 24; 03/11/2014, R 1774/2013-1, Vinagra / VIAGRA, § 18; 20/06/2016, R 31/2016-1, Test ALIRKEN KANZANIN (fig.) / TEST et al., § 14-15). Therefore, it is essential to examine whether the operative part of the contested decision, read in light of its grounds, can be interpreted as containing an implicit refusal of the contested application with regard to the contested ‘footwear’.
Such an interpretation clearly leads to the understanding that the Opposition Division did not omit to decide on the contested ‘footwear’. It simply omitted to mention these goods in the operative part of the decision. The Opposition Division explicitly held on page 13 of its decision, that, inter alia, the contested ‘footwear’ is similar to the earlier mark’s ‘clothing and headgear’. From the reasoning of the contested decision it is furthermore clear that the Opposition Division found a likelihood of confusion for all identical or similar goods (see page 17 of the contested decision), including the goods ‘footwear’, and that, therefore, it intended to uphold the opposition also in this regard. Hence, the order must be understood in a way that the contested decision upholds the opposition also for the contested ‘footwear’ in Class 25.
Since it is clear from the notice of appeal and the statement of grounds of appeal that the applicant intended to appeal the contested decision in so far as it upheld the opposition and refused the contested application, the appeal must be interpreted as being directed also against the refusal of the contested application with regard to the contested ‘footwear’.

Proof of use of the earlier mark

In accordance with Article 42(2) EUTMR, if the applicant so requests, the proprietor of an earlier EU trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the EU trade mark application, the earlier trade mark has been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, or shall prove that there are justifiable reasons for its non-use, provided the earlier trade mark has at that date been registered for not less than five years. In the absence of this proof the opposition shall be rejected. If the earlier EU trade mark has been used in relation to only part of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect of that part of the goods or services.
Rule 22(3) CTMIR states that the evidence regarding proof of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
The earlier trade mark had been registered for more than five years prior to the date of publication of the contested mark on 12 March 2012. The opponents were therefore required to prove that the earlier mark was put to genuine use in the EU from 12 March 2007 to 11 March 2012 inclusive.
Use of the mark must be such as to imply a commercial exploitation of the mark which is real, and must seek to maintain or create a share in the market for the goods or services protected by the mark (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 38). Genuine use requires actual presence of the goods and services on the market so that the mark can exercise its essential function, which is to identify the commercial origin of the goods or services, thus enabling the consumer who acquired them to repeat the experience, if it proves to be positive, or to avoid it, if it proves to be negative, on the occasion of a subsequent purchase (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 37). In other words, use must be as a trade mark in the sense that the consumer will perceive it as such.
Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 47).
However, the sufficiency of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not appropriate (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 27 and 31).
As the Opposition Division correctly found, there is no need to decide on the belated nature of the additional evidence submitted by the opponents on 22 June 2015. The evidence filed on 9 September 2014 within the time-limit set by the Office is sufficient to establish genuine use of the earlier trade mark during the relevant period in the relevant territory, i.e. the EU.
As far as the affidavit of 8 September 2014 is concerned, it should be noted that ‘statements in writing sworn or affirmed’ constitute according to Article 78(1)(f) EUTMR and Rule 22(4) CTMIR admissible evidence in the context of proof of use.
Statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. In order to assess the probative value of a document, it is necessary first to check the plausibility and truthfulness of the information it contains. Account must be taken, inter alia, of the origin of the document, the circumstances of its preparation, the addressee, and whether it seems from the content to be sensible and reliable (15/12/2005, T‑262/04, Briquet à pierre, EU:T:2005:463, § 78; 16/12/2008, T‑86/07, Deitech, EU:T:2008:577, § 47; 23/09/2009, T‑409/07, acopat, EU:T:2009:354, § 48-49).
The affidavit was drawn up by Mr Frank Dann, one of the two opponents and trade mark owners. Contrary to the applicant’s claim, there is no question that he is one of the trade mark owners. The affidavit is explicitly presented by the opponents’ representatives as ‘Affidavit of the trade mark owner’. Besides, it is clear from the content and the context of the affidavit that the undersigning Mr Frank Dann is the same Mr Frank Dann who is co-owner of the earlier mark. The two opponents and trade mark owners, Frank Dann and Andreas Backer, have formed a civil law partnership (‘Gesellschaft bürgerlichen Rechts/ GbR’) with the joint purpose to run the shop ‘Hooligan’. Therefore, the use of the earlier mark took place with the consent of the trade mark owners.
The affidavit states that the shop ‘Hooligan’ was founded in 1993 and that since then (and therefore also in the relevant period of 2008 to 2012) inter alia clothing and headgear have been promoted and distributed under the trade mark ‘HOOLIGAN’ in Germany and throughout the European Union. This statement is supported by a third party statement, namely the printout from the website www.skinsandpunkt.com (Attachment A 10) confirming that: ‘Hooligan Streetwear was born in Germany in 1993 by two friends and partners interested in football and music. Hooligan Streetwear is today an established brand in Europe with a U.S. subsidiary. The link between the brand and the music is inevitable. In addition to sponsoring many festivals and music events, the brand is worn by bands that range from Oi!, Punk, ska, psychobilly, hardcore, rock'n'roll, heavy metal. Among the groups wearing the brand we can find Dropkick Murphys, Hatebreed, Sick Of It All, The Business, Discipline, Skunk DF, Suspenders, Deskontrol, Malas Cartas, Exploited, Meteors, Mark Foggo's Skanksters, Option K-95, Stage Bottles , Argy Bargy, Terror, Motorhead, Sepultura, Walls of Jericho, Verlorene Jungs, etc ... Hooligan Streetwear offer you shirts, ninjas, hoodies, backpacks, harringtons, parkas, etc ...’.
The statements of the affidavit are further supported by the product catalogues submitted by the opponents. Especially the fact that the catalogue of Spring 2011 contains on its cover as well as on the side of the preface a photograph of Phil Campbell, member of the band Motörhead, shows that the opponents invested in the marketing of the earlier mark. Phil Campbell and his band the Motörheads are (at least in certain circles) well known.
The statements of the affidavit are further supported by the invoices, even if the opponents have only submitted a small number of invoices in an exemplary manner. The applicant claims that the invoices filed do not show a sufficient link between the earlier trade mark and the products listed in the invoices since some of the listed products do not bear the earlier trade mark ‘HOOLIGAN’ on their front and must, therefore, be disregarded. However, this reasoning is wrong. Although trade marks have traditionally been used on goods or their packaging, showing use on goods or their packaging is not the only way of proving use in relation to goods. It is sufficient, if there is a proper connection between the mark and the goods, for the mark to be used ‘in relation to’ the goods. A representation of the mark on packaging, catalogues, advertising material or invoices relating to the goods in question constitutes direct evidence that the mark has been put to genuine use (12/12/2014, T‑105/13, TrinkFix, EU:T:2014:1070, § 28-38; 06/11/2014, T‑463/12, MB, EU:T:2014:935, § 44-45). In the present case, the invoices covering the relevant time period all bear the logotype ‘hooligan STREETWEAR’ on their right top corner. The same is true for the product catalogues to which the reference numbers of the products listed in the invoices refer. All submitted product catalogues show, inter alia, on their cover pages the sign ‘hooligan STREETWEAR’. It is, therefore, irrelevant whether the products listed in the invoices bear themselves the trade mark ‘HOOLIGAN’. Besides, the pictures of clothing submitted as Attachment A 7 and many of the pictures of clothing and headgear in the catalogues submitted as Attachments A 1-6 show that the products which do not have the sign ‘hooligan STREETWEAR’ printed on their front, at least bear inside labels with the print ‘hooligan STREETWEAR’ (e.g. neck labels in the case of t-shirts, see, inter alia, pages 4, 5, 6, 9, 12, 13, 15 etc. of the ‘catalogue Fall/ Winter 2007’– Attachment A 1).
Contrary to the applicant’s claim the sign used on the invoices and in the catalogues will not be read as ‘KOOLIGAN’. Although the ‘h’ is stylised it is still clearly recognizable as the letter ‘h’. The Opposition Division was also right in finding that the use of different logotypes (‘HOOLIGAN’, ‘HOOLIGAN STREETWEAR’, ‘hooligan’ and ‘hooligan STREETWEAR’) does not prevent the genuine use of the word mark ‘HOOLIGAN’. Proof of genuine use of an earlier trade mark includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form in which it was registered (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 35-36; 08/12/2005, T‑29/04, Cristal Castellblanch, EU:T:2005:438, § 30 and the case-law cited therein). The graphical stylization of the word ‘HOOLIGAN’ does not change the distinctive character of the earlier mark. The same goes for the addition of the non-distinctive word ‘STREETWEAR’ to the word ‘HOOLIGAN’. The word ‘STREETWEAR’ is descriptive for the goods at hand since it identifies one of their characteristic, namely their style. The word ‘STREETWEAR’ describes casual clothing of a style worn especially by members of various urban youth subcultures (http://www.oxforddictionaries.com/definition/english/streetwear, 9 August 2016). Therefore, even in the combination ‘HOOLIGAN STREETWEAR’ the word ‘HOOLIGAN’ remains the dominant and distinctive element of the sign and the element ‘STREETWEAR’ will not be regarded by consumers as fulfilling the function of distinguishing the goods concerned from those of other companies.
Although the evidence submitted by the opponents is not particularly exhaustive, there is no question of token use as claimed by the applicant. It is not possible to prescribe a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use was genuine or not. In consequence, a de minimis rule cannot be laid down. Thus, when it serves a real commercial purpose, even minimal use of the trade mark can be sufficient to establish genuine use (11/05/2006, C‑416/04 P, Vitafruit, EU:C:2006:310, § 72; 23/09/2009, T‑409/07, acopat, EU:T:2009:354, § 35). In the present case, the submitted evidence taken as a whole shows that the use of the earlier trade mark served a real commercial purpose.
Contrary to the applicant’s claim the evidence relates to the relevant territory. The invoices dated within the relevant period relate to Spain, Hungary and France. The catalogues refer to a physical shop in Frankfurt, Germany, as well as to the website www.holigan.de and an order hotline. The fact that the catalogues of ‘Winter 2009/2010’, ‘Summer/Spring 2010’, ‘Spring 2011’ each contain a preface written in German, shows that the catalogues are directed at, inter alia, the German-speaking market (Germany, Austria).
In view of the above, the Opposition Division correctly came to the conclusion that there is sufficient prove of genuine use of the earlier trade mark for the goods ‘clothing and headgear’.

Article 8(1)(b) EUTMR

According to Article 8(1)(b) EUTMR, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, an earlier trade mark, and the identity or similarity of the goods or services covered by the two trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).
Likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).
The global appreciation 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

Relevant public

The average consumer is deemed to be reasonably well informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-26). It should, however, be recalled that the average consumer’s level of attention is likely to vary according to the category of goods and services in question (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited therein) and that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyed Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).
In the present case, the relevant consumers consist of the public at large that show an average level of attention. The relevant territory is the European Union.

Comparison of the goods and services

Article 8(1)(b) EUTMR provides that the likelihood of confusion presupposes that the goods or services covered are identical or similar. Therefore, in all cases it is necessary to consider the degree of similarity between the goods or services covered. In relation to the assessment of the similarity of goods or services the following factors, inter alia, should be taken into account: their nature, their purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28). Further relevant factors are the usual origin of the goods, the pertinent distribution channels (in particular sales outlets) and the relevant public.

Contested goods in Class 25

The contested ‘clothing and headgear’ are identically contained in both lists of goods [and services]. These goods are therefore identical.
The contested ‘outer clothing; under clothing; woven clothing; knitwear being clothing; clothing of cotton, silk, linen, wool; clothing made from man-made fibres; clothing made from a combination of cotton, silk, linen, wool and man-made fibres; shirts; blouses; shirts and blouses with wing collar; shirts and blouses with Eton collars; evening wear, namely shirts and blouses and dinner jackets; shirts and blouses with double cuffs; shirts and blouses with French cuffs; shirts and blouses with detachable collars; shirts and blouses without collars; long sleeve shirts and blouses; short sleeved shirts and blouses; shirts and blouses with graphics printed on them; men’s shirts; women’s blouses; children’s shirts and blouses; shirts and blouses for babies; bow ties, ties, lounge suits, waist coats, trousers; sports clothing; t-shirts, tee-shirts; long sleeved t-shirts, short sleeved t-shirts, t-shirts with graphics printed on them, men’s t-shirts, women’s t-shirts, children’s t-shirts, t-shirts for babies; polo shirts; men’s polo shirts; women’s polo shirts; children’s polo shirts; polo shirts for babies; polo shirts with graphics printed on them; sweatshirts; sweatshirts with graphics printed on them, men’s sweatshirts, women’s sweatshirts, children’s sweatshirts, sweatshirts for babies; hooded tops; hooded tops with graphics printed on them, men’s hooded tops, women’s hooded tops, children’s hooded tops, hooded tops for babies; jackets; waxed jackets; reefer jackets; bomber jackets; warm jackets; wind proof jackets; socks, stockings and hosiery; mittens; pullovers; scarves; sports jerseys; swimwear; gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, bikini swimming costumes, tankinis, tops, thongs, pants, bras, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of lingerie; articles of underwear, pyjamas, night wear, dressing gowns, bath robes; beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps; rain coats; sportswear, boxer’s shorts and vests, sports bras, sports panties, sports briefs, and jockstraps, sports pants; sports shorts, sports t-shirts, sports crop-tops, sports vests; trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants; bicycling shorts; soccer shirts, soccer shorts, soccer socks; football strips; football kits; items of clothing for playing football in; football shirts, football shorts and football socks, rugby shirts, rugby shorts and rugby socks, swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing; wet suits for water-skiing; wet suits for windsurfing; dry suits; aprons being clothing; boxer shorts; camisoles; waterproof and water resistant outer garments; waterproof and water resistant outer clothes; articles of industrial and work clothing; waterproof and water resistant clothing, dancewear including footwear; beachwear including footwear’ are included in the broad category of the opponents’ ‘clothing’. Therefore, they are considered identical.
The contested ‘ski hats; sou’westers; cagoules; hats, woolly hats, caps, bobble hats, baseball caps, cricket hats, sunhats, sun-visors, swimming caps; caps being headwear; headgear for wear; articles of industrial and work headgear; waterproof and water resistant headwear’ are included in the broad category of the opponents’ ‘headgear’. Therefore, they are considered identical.
The contested ‘footwear; football boots; football boots for use on synthetic turf surfaces; articles of industrial and work footwear; protective and safety footwear other than for protection against injury or accident; waterproof and water resistant footwear; slippers; bath sandals and bath slippers; dance shoes; ladies shoes; leather shoes; high heeled shoes; shoes with stiletto heels; ladies shoes with heels; shoes; boots, trainers, flip-flops, sandals mules, slip on shoes; slip on boots; moccasin; loafers; deck shoes; plimsolls; wellington boots, beach shoes, shoes for windsurfing and water sports’ all belong to the broad category ‘footwear’. Hence, they are considered similar to ‘clothing and headgear’. All goods belonging to the broad category ‘footwear’ have a very similar nature to the goods ‘clothing and headgear’. They serve an identical purpose since they are used to cover and protect various parts of the human body against the elements. They are also fashion articles. Besides, many manufacturers and designers will design and produce all of the aforementioned items. Moreover, ‘footwear’, ‘clothing’ and ‘headgear’ are often sold in the same retail shops and they are complementary. Therefore, these goods are similar to each other.

The contested services in Class 35

The contested ‘retail services connected with the sale of the following goods, the bringing together, for the benefit of others, of a variety of the following goods to allow consumers to conveniently view and purchase the following goods, electronic shopping retail services, including such services provided from an internet website, connected with the sale of the following goods and mail order retail services connected with the sale of the following goods, clothing, outer clothing, under clothing, woven clothing, knitwear being clothing, clothing of cotton, silk, linen, wool, clothing made from man-made fibres, clothing made from a combination of cotton, silk, linen, wool and man-made fibres, shirts, blouses, shirts and blouses with wing collar, shirts and blouses with Eton collars, evening wear, namely shirts and blouses and dinner jackets, shirts and blouses with double cuffs, shirts and blouses with French cuffs, shirts and blouses with detachable collars, shirts and blouses without collars, long sleeve shirts and blouses, short sleeved shirts and blouses, shirts and blouses with graphics printed on them, men’s shirts, women’s blouses, children’s shirts and blouses, shirts and blouses for babies, bow ties, ties, lounge suits, waist coats, trousers, sports clothing, t-shirts, tee-shirts, long sleeved t-shirts, short sleeved t-shirts, t-shirts with graphics printed on them, men’s t-shirts, women’s t-shirts, children’s t-shirts, t-shirts for babies, polo shirts, men’s polo shirts, women’s polo shirts, children’s polo shirts, polo shirts for babies, polo shirts with graphics printed on them, sweatshirts, sweatshirts with graphics printed on them, men’s sweatshirts, women’s sweatshirts, children’s sweatshirts, sweatshirts for babies, hooded tops, hooded tops with graphics printed on them, men’s hooded tops, women’s hooded tops, children’s hooded tops, hooded tops for babies, jackets, waxed jackets, reefer jackets, bomber jackets, warm jackets, wind proof jackets, socks, stockings and hosiery, mittens, pullovers, scarves, ski hats, sports jerseys, swimwear, gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, bikini swimming costumes, tankinis, tops, thongs, pants, bras, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of lingerie, articles of underwear, pyjamas, night wear, dressing gowns, bath robes, beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps, rain coats, sportswear, boxer’s shorts and vests, sports bras, sports panties, sports briefs, and jockstraps, sports pants, sports shorts, sports t-shirts, sports crop-tops, sports vests, trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants, bicycling shorts, soccer shirts, soccer shorts, soccer socks, football strips, football kits, items of clothing for playing football in, football shirts, football shorts and football socks, rugby shirts, rugby shorts and rugby socks, swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing, wet suits for water-skiing, wet suits for windsurfing, dry suits, aprons being clothing, boxer shorts, camisoles, waterproof and water resistant outer garments, waterproof and water resistant outer clothes, articles of industrial and work clothing, waterproof and water resistant clothing, dancewear including footwear, beachwear including footwear’ are similar to a low degree to ‘clothing’ for which the earlier mark is registered. Retail services can in principle be similar (to a low degree) to goods (05/10/2011, T‑421/10, Rosalia de Castro, EU:T:2011:565, § 33) when the goods to which the retail services relate are identical to the conflicting goods as is the case here.
For the same reason, the contested ‘retail services connected with the sale of the following goods, the bringing together, for the benefit of others, of a variety of the following goods to allow consumers to conveniently view and purchase the following goods, electronic shopping retail services, including such services provided from an internet website, connected with the sale of the following goods and mail order retail services connected with the sale of the following goods, headgear, skihats, sou’westers, cagoules, hats, woolly hats, caps, bobble hats, baseball caps, cricket hats, sunhats, sun-visors, swimming caps, caps being headwear, headgear for wear, articles of industrial and work headgear, waterproof and water resistant headwear’ are similar to a low degree to ‘headgear’ for which the earlier mark is registered.
Neither of the parties has contested the Opposition Division’s finding with regard to the identity or similarity of the conflicting goods and services.

Comparison of the trade marks

Conflicting trade marks have to be compared via a global appreciation of the visual, aural or conceptual similarity between them bearing in mind, in particular, their distinctive and dominant components (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).
The earlier mark is a word mark consisting of the word ‘HOOLIGAN’. The contested mark is a word mark consisting of the word ‘PEACEFUL HOOLIGAN’. Neither of the signs has an element that could be considered clearly more dominant or distinctive than the rest.
Visually, the signs coincide in the common element ‘HOOLIGAN’. They differ in the element ‘PEACEFUL’ that is present only in the contested but not in the earlier sign.
The applicant maintains that the conflicting signs are visually different because consumers usually focus on the first part of the mark. Since the first part of the contested sign consists of the word ‘PEACEFUL’, which has no counterpart in the earlier sign, there is no visual similarity. While it is true that the public generally pays more attention to the first part of a mark, it is not less true that a weak element of a mark, placed at the beginning or end, is easily overlooked by the relevant public and attention is given to the distinctive element, this being independent of where this element is placed within the mark (28/10/2014, R 49/2014-2, Mr Jones (fig.) / Jones (fig.) et al., § 34; 16/05/2007, T‑158/05, Alltrek, EU:T:2007:143, § 70-72).
The element ‘PEACEFUL’ will not be accorded more significance solely due to its initial position, as English-speaking consumers are aware that the word ‘PEACEFUL’ is an adjective that always precedes the noun it describes. Hence, they will rather focus their attention on the subsequent noun ‘HOOLIGAN’ (see similar cases 28/10/2014, R 49/2014-2, Mr Jones (fig.) / Jones (fig.) et al., § 34-37; 05/10/2009, R 567/2009-2, Clean (fig.) / MR. CLEAN, § 33). For English-speaking consumers, the conflicting signs are therefore visually similar to a normal degree.
A certain visual similarity also exists for consumers that do not speak English. In this respect it should be recalled that the fact that a mark consists exclusively of the earlier mark, to which another word and/or figurative element has been added, is an indication that the two trade marks are similar (28/10/2014, R 49/2014-2, Mr Jones (fig.) / Jones (fig.) et al., § 38; 06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594).
Aurally, the pronunciation of the signs coincides in the sound of the word ‘HOOLIGAN’ present identically in both signs. The pronunciation differs in the sound of the word ‘PEACEFUL’ of the contested sign, which has no counterpart in the earlier mark.
The vast majority of the consumers in the European Union understand the word ‘HOOLIGAN’ as meaning ‘a violent young troublemaker, typically one of a gang’ (http://www.oxforddictionaries.com/definition/english/hooligan, 9 August 2016). The concept is known to the vast majority of the consumers in the European Union, most notably because of its use in connection with football (see for French and Portuguese consumers, 01/02/2005, T‑57/03, Hooligan, EU:T:2005:29, § 66). The word ‘hooligan’ exists in an identical or similar form in many European languages: Hooligan (German), hooligan (Italian), hooligan (Danish), hooligan (Dutch), hooligan/houligan (French), huligán (Hungarian), huligan (Croatian), huligaan (Estonian) etc.
For the English-speaking consumers that do not only understand the word ‘HOOLIGAN’ but also the word ‘PEACEFUL’, the conflicting signs are conceptually similar. Although hooligans are usually not peaceful, but rather violent and aggressive, there is still a conceptual link between the conflicting signs. As the Opposition Division has correctly pointed out the English-speaking consumers will perceive the contested mark ‘PEACEFUL HOOLIGAN’ as a meaningful, but ironic expression meaning a hooligan who does not use violence. The combination of the words ‘PEACEFUL’ and ‘HOOLIGAN’ does not assume a completely new meaning that has no relation at all with the word ‘HOOLIGAN’.
The conflicting signs are also conceptually similar for the rest of the consumers that understand the meaning of the word ‘HOOLIGAN’ but not of the word ‘PEACEFUL’. As the word ‘PEACEFUL’ has no meaning for them, they will focus their attention on the word ‘HOOLIGAN’ which is present in both signs and has the same meaning in both signs.
Therefore, the signs under comparison are similar.

Distinctiveness of the earlier mark

In determining the degree of distinctive character of a trade mark, an overall assessment has to be made of the greater or lesser capacity to identify the goods for which it has been registered as coming from a particular undertaking. Account should be taken of the inherent characteristics of the mark, including the fact that it does or does not contain an element that is descriptive of the goods for which it has been registered and other criteria; in particular, how intensive, geographically widespread and long-standing the use of the mark has been (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22-23).
The opponents did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se which is considered to be average.

Overall assessment of the likelihood of confusion

The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16‑18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).
The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from those of others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; see also seventh recital of the EUTMR). Besides that function of origin, the trade mark can perform other functions.
The appreciation of the likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (seventh recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).
In the present case, there is a likelihood of confusion due to the fact that the contested sign is composed by juxtaposing the earlier mark and the word ‘PEACEFUL’ (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 37). The earlier mark is completely contained in the contested sign and maintains an independent role therein.
Moreover, it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various lines from one another (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49; 03/07/2003, T-129/01, Budmen, EU:T:2003:184, § 57; 06/10/2004, T-117/03 to T-119/03 and T-171/03, NL, EU:T:2004:293, § 51; 15/10/2015, T-642/13, she (fig.) / SHE et al., EU:T:2015:781, § 77; 07/01/2016, R 187/2015-1, FALKE HELIX / CONFECÇÕES HELIX, § 22). The relevant consumers are likely to think that the contested sign is a sub-brand of the earlier sign.
Therefore, there exists a likelihood of confusion even with regard to the contested services that were found to be similar only to a low degree to the opponents’ goods.
The Opposition Division’s decision must be upheld and the appeal dismissed.

Costs

Since the appeal is dismissed and the applicant is the losing party, it must bear the opponents’ fees and costs in accordance with Article 85(1) EUTMR and Rule 94(1) CTMIR.
Pursuant to Article 85(6) EUTMR the Board shall fix the amount of the costs to be paid when they are limited to the fees paid to the Office and to the winning party’s representation costs of a professional representative in the sense of Article 93(1) EUTMR, which amount to EUR 550 as specified in Rule 94(2) and (7)(d) CTMIR, irrespective if they have actually been incurred. With respect to the costs of the opposition procedure, the contested decision already contains a decision allocating and fixing the costs. Any final decision fixing the amount of costs shall be enforceable pursuant to Article 86 EUTMR.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal;
Orders the applicant to bear the opponents’ costs in the appeal proceedings, which are fixed at EUR 550.

Signed

Th. M. Margellos

Signed

Ph. von Kapff

Signed

C. Rusconi

Registrar:

Signed

H.Dijkema

08/09/2016, R 2166/2015-1, PEACEFUL HOOLIGAN / HOOLIGAN

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Summary of the facts

Submissions and arguments of the parties

Reasons

Scope of appeal

Proof of use of the earlier mark

Article 8(1)(b) EUTMR

Relevant public

Comparison of the goods and services

Contested goods in Class 25

The contested services in Class 35

Comparison of the trade marks

Distinctiveness of the earlier mark

Overall assessment of the likelihood of confusion

Costs

Order

Dismisses the appeal;

Orders the applicant to bear the opponents’ costs in the appeal proceedings, which are fixed at EUR 550.

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