OPPOSITION No B 2 212 226

Tod's S.P.A., Via Filippo Della Valle 1, 63811 Sant'Elpidio a Mare (FM), Italy (opponent), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative)

a g a i n s t

Home Focus Development Limited, Trustnet Chambers Limited, P.O. Box 3444, Road Town, Tortola, British Virgin Islands (applicant), represented by Francesc Cotoli, Dracco Candy S.L., Via Augusta 13-15, Oficina. 211, 08006 Barcelona, Spain (employee representative)

On 14/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 212 226 is partially upheld, namely for the following contested goods:

Class 21: Glass ornaments.

Class 28: Decorations for Christmas trees; ice skates, roller skates, and inline skates.

2. European Union trade mark application No 11 437 407 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 437 407. The opposition is based on European Union trade mark registrations No 10 158 889, No 407 031, No 4 208 377 and No 4 295 531. The opponent invoked Article 8(1)(b) and 8(5) EUTMR, the former for all the earlier rights and the latter in respect of European Union trade mark registrations No 10 158 889 and No 4 295 531.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The goods on which the opposition is based are the following:

European Union trade mark registration No 10 158 889

Class 9: Spectacles, sunglasses, spectacle lenses and frames, contact lenses, optical lenses, magnifying glasses, spectacle cases, chains and cords, parts and fittings for all the aforesaid goods; Covers of leather for digital music players, mobile telephones, DVDs, CDs, computer cables, apparatus for the reproduction of sound, palm-top computers, electronic personal organisers, television cameras and cameras.

Class 25: Coats of leather, jackets of leather, trousers of leather, skirts of leather, tops of leather, waterproof clothing of leather, long coats of leather, overcoats of leather, belts of leather, shoulder belts for clothing of leather, belts, clothing, stuff jackets, jackets, greatcoats, jumpers, trousers, jeans, skirts, dresses, coats, overcoats, cloaks, parkas, jerseys of wool, shirts, tee-shirts, blouses, cardigans, underwear, nightdresses, bath robes, bathing suits, negligees, bathing suits, dressing gowns, eveningwear, one-piece clothing, two-piece clothing, evening gowns, shawls, sashes for wear, neckties, bow ties, clothing for men, clothing for women, shirts, Hawaiian shirts, sweatshirts, underwear, polo shirts, bodysuits, blazers, shorts, sport shirts; Shoes, athletic shoes, slippers, shoe covers, low shoes, shoes of leather, shoes of rubber, galoshes, golf shoes, clogs, fishing shoes, basketball shoes, dress shoes, heels, hiking boots, rugby boots, boxing shoes, baseball shoes, patent shoes, beach shoes, inner soles, soles for footwear, footwear uppers, heels for shoes and boots, non-slipping devices for shoes and boots, tips for footwear, rain shoes, running shoes, work shoes, shoes of straw, gymnastics shoes, boots, ski boots, half-boots, après-ski boots, football boots, lace boots, hockey shoes, handball shoes, esparto shoes or sandals, sandals, bath sandals; Gloves, gloves for protection against the cold, gloves of leather, mittens; Hats and caps, visors (headgear), hats and caps of leather.

European Union trade mark registration No 407 031

Class 9: Spectacles; spectacles-frames; parts and fitting for spectacles, such as bars, frontlets, hingers, nose-clips, lenses, strings; articles for cleaning spectacles and lenses.

European Union trade mark registration No 4 208 377

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; stationery, agenda covers, address books and briefcases.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); unworked or semi-worked glass (except glass used in building); glassware, crystal glassware, porcelain and earthenware not included in other classes, electric brushes, sponges for household purposes, abrasive sponges for household cleaning, brushes, combs, shaving brushes, dishes, glasses.

European Union trade mark registration No 4 295 531

Class 25: Articles of clothing of leather, belts, coats of leather, clothing accessories of leather included in this class; shoes, shoes for athletics; boots, slippers, shoe covers; dresses, jackets, trousers, jeans, skirts, women's clothing, coats, overcoats, cloaks, raincoats, parkas, stuff jackets, jumpers, shirts, t-shirts, chemises, sweatshirts, underwear, babydolls, nightgowns, bathrobes, bathing costumes, shawls, gloves, hats and berets, visors (headgear), scarves, neckties.

The contested goods and services are the following:

Class 21: Glass ornaments.

Class 28: Games and toys, namely board games, card games, action type target games, and parlour games; beanbags; toy building blocks; cardboard and plastic caps, namely but limited to for toy guns, holders for caps, and cap guns; mechanical action toys; kites; electric action figures with lights and sounds; collectible items namely action figures, plastic toy figurines in various sizes, toy finger rings, yo-yo's, spin tops, plastic toys, toys incorporating magnets; plush toys and flying discs; decorations for Christmas trees; costume masks; stuffed toy animals in various sizes; equipment sold as a unit for playing card games; game boards for trading card games; toy stamps with figures; toy and water pistols, guns, and cannons; dolls and baby dolls; balloons; bathtub toys; skateboards, ice skates, roller skates, and inline skates; surf boards and swim boards; balls, namely, footballs and handballs; electronic toys; jigsaw puzzles.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities, includes electronic games services provided by means of the Internet, mobile phones, mobile devices; the provision of on-line electronic publications and digital music from the Internet, mobile phones and mobile devices.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Rule 2(4) EUTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 21

The contested Glass ornaments are objects made of glass used or serving to make something look more attractive, but usually having no practical purpose, especially small objects such as figurines. These goods have relevant elements in common with the opponent’s porcelain, not included in other classes in Class 21 of earlier mark No 4 208 377, which may also include porcelain figures intended for decoration. Therefore, the goods can have the same method of use and distribution channels, they can have a similar purpose and can target the same relevant consumers. Moreover, they are likely to be in competition with each other. Consequently, they are highly similar.

Contested goods in Class 28

The contested decorations for Christmas trees can also be similar to the opponent’s porcelain, not included in other classes in Class 21 of earlier mark No 4 208 377. It is not uncommon for Christmas trees to be decorated with porcelain ornaments. Consequently, these goods are similar because they share the same nature, as they are both made of porcelain, the same purpose and they may come from the same manufacturers.

The contested ice skates, roller skates, and inline skates are similar to the opponent’s ski boots, hockey shoes, football boots, rugby boots, après ski boots appearing in Class 25 of earlier mark No 10 158 889. These goods can have a similar nature and purpose, and have the same distribution channels (e.g. sportswear shops). Consequently, they are similar.

The remaining contested Games and toys, namely board games, card games, action type target games, and parlour games; beanbags; toy building blocks; cardboard and plastic caps, namely but limited to for toy guns, holders for caps, and cap guns; mechanical action toys; kites; electric action figures with lights and sounds; collectible items namely action figures, plastic toy figurines in various sizes, toy finger rings, yo-yo's, spin tops, plastic toys, toys incorporating magnets; plush toys and flying discs; costume masks; stuffed toy animals in various sizes; equipment sold as a unit for playing card games; game boards for trading card games; toy stamps with figures; toy and water pistols, guns, and cannons; dolls and baby dolls; balloons; bathtub toys; skateboards surf boards and swim boards; balls, namely, footballs and handballs; electronic toys; jigsaw puzzles are all kinds of toys, games and playthings. These goods are dissimilar to all of the opponent’s goods. The contested goods are intended to entertain children and grown-ups. They do not satisfy the same needs as the various goods of the earlier marks of the opponent. They generally do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary.

Contested services in Class 41

The contested Education; Providing of training; Entertainment; Sporting and cultural activities, includes electronic games services provided by means of the Internet, mobile phones, mobile devices; the provision of on-line electronic publications and digital music from the Internet, mobile phones and mobile devices are rendered by individuals or institutions aimed at developing and improving people’s cognitive skills, and are services intended to entertain or to engage the attention; therefore, they are dissimilar to all the earlier goods. Apart from being different in nature, given that services are intangible whereas goods are tangible, they meet different needs, do not fulfil a similar function from the consumer’s point of view and differ in their relevant public and usual distribution channels. The applicant’s services do not have any elements in common with the earlier goods. They are not complementary, they do not have similar purposes and it is not usual within the market for the contested services to be provided by the same undertakings. Indeed, although there is a certain degree of complementarity between some of the goods and services under comparison (e.g. the contested sporting activities in Class 41 and the opponent’s athletic shoes in Class 25), this is not conclusive on its own for a finding of similarity between the goods and services. It is not common market practice for gyms, for example, to sell sporting articles that they have manufactured directly. Consequently, consumers would not believe that the goods and services at issue have a common commercial origin.

2. The signs

TOD’S (Earlier EUTMs No 10 158 889 and No 407 031) (Earlier EUTMs No 4 208 377 and No 4 295 531)	TOTZ
Earlier trade marks	Contested sign

The relevant territory is the European Union.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the relevant public.

Visually, the signs are similar to the extent that they coincide in the letters ‘TO’. However, they differ in the remaining letters of the verbal elements of the earlier marks ‘D’S’ and the apostrophe between them, as well as the last two letters of the contested sign, namely ‘TZ’. Furthermore, the earlier marks grouped above under No 2 contain additional figurative elements, namely the frame-type decoration as well as the slight stylisation on the verbal element, ‘TOD’S’.

Aurally, the signs are highly similar since both the letters ‘D’ and ‘T’ are dental consonants and since the sound of the letter ‘S’ is very close to that of the letter ‘Z’ in Italian.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

Earlier EUTMs No 10 158 889 and No 407 031 have no elements that could be considered clearly more distinctive than other elements.

As regards earlier marks No 4 208 377 and No 4 295 531, they are composed of a distinctive verbal element and of a less distinctive figurative element in the form of an elliptical frame of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

The contested sign has no elements which could be considered clearly more distinctive than other elements.

The signs under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, earlier marks No 10 158 889 and No 4 295 531 have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be similar to various degrees are directed at the public at large with an average degree of attention.

6. Global assessment, other arguments and conclusion

The contested goods and services have been found to be partially similar (to various degrees) and partially dissimilar to the goods of the earlier marks.

The marks under comparison are aurally highly similar and have no conceptual differences that could assist the public in differentiating them.

Moreover, the signs compared are visually similar to the extent that they share two letters out of four, namely the first and second letters of the verbal elements of the marks, ‘TO’. The differences lie in the last two letters ‘D’S’ (plus apostrophe) of the earlier marks, versus ‘TZ’ of the contested sign. Additionally, the verbal element of earlier marks No 4 208 377 and No 4 295 531 is slightly stylised and they both contain a figurative element which has no counterpart in the contested sign. These marks are presumed to have at least a normal degree of inherent distinctiveness, together with the rest of the earlier marks.

The beginnings of the verbal elements of the conflicting marks are identical. Consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical beginnings of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s European Union trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar (to various degrees) to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent and in relation to similar (to various degrees) goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist a likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

As the opposition is not fully successful on the basis of Article 8(1)(b) EUTMR, the Opposition Division will now continue with the analysis of the remaining grounds of the opposition, namely Article 8(5) EUTMR, as regards earlier European Union trade mark registrations No 10 158 889 and No 4 295 531.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods and services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

In the notice of opposition as well as in its accompanying observations, the opponent has claimed reputation for ‘bags and leather goods’ in Class 18. However, as can be seen from the comparison of goods and services, none of the registered trade marks invoked for the contested classes concern ‘bags and leather goods’ in Class 18. The goods for which reputation is claimed must be those for which the mark is registered. See in this regard decision of 28/04/2011, R 1473/2010-1 ‘SUEDTIROL’, in which it was clarified that reputation can only be invoked for the goods and services protected by the mark (paragraph 49). Therefore, reputation cannot be claimed for ‘bags and leather goods’ in Class 18 by the opponent and the Opposition Division will now proceed to the examination of reputation only for ‘shoes’ in Class 25.

According to the opponent, earlier European Union trade mark registrations No 10 158 889 and No 4 295 531 have reputation in Italy.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 19/12/2012. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Italy prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 25: Shoes.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 27/01/2014 the opponent submitted evidence of reputation.

• Exhibits 1 to 6 present consolidated results for the years 2008 – 2012 and Exhibit 7 presents a document on Tod’s S.P.A.’s nine months consolidated results, from January to September 2013.

Exhibits 1, 2, 3, 4, 5, 6 and 7 are financial reports providing an overview of the results for the Tod’s S.P.A. group and for the part of the group comprising the ‘TOD’S’ trade mark. According to these documents, the trade mark ‘TOD’S’ represents more than half of the group’s breakdown by brand. Moreover, the importance of the trade mark ‘TOD’S’ has increased over the years, going from 50.4% as of 31/12/2008 to 59.6% as of 09/2013 (with the exception of the year 2009, during which the importance of the trade mark slightly decreased to 48.9%).

These documents also provide information regarding the nature of the goods sold under this trade mark. Thus, as of 31/12/2008, 68.8% of the products sold were shoes. Over the years, the relative share of sales for shoes increased (shoes represented 77.1% of consolidated sales as of September 2013).

As to the geographical territory where these goods are sold, it must be noted that Italy is where the biggest part of the sales take place. Indeed, even though the share of the Italian market has decreased from 54.3% of total sales in 2008 to 34.7% as of September 2013, account must be taken of the fact that the results and sales of the group have increased from EUR 713 135 000 in 2009 to EUR 963 132 000 in 2012. Furthermore, Italy remains the territory where most of the goods are sold, with 34.7% of the goods being sold there, whereas 24.0% of the goods are sold in China and 21.7% of the goods are sold in the rest of Europe.

These documents also highlight the fact that the Tod’s S.P.A. group pays special attention to the distribution of its products. As regards the distribution channels, the group states that ‘the prestige of the Group brands and the high degree of specialization necessary to offer the respective products to customers entails distribution through a network of similarly specialized stores’ (Exhibit 6, page 30). The strategy of the group to pay attention to the distribution channels is reflected by the large investments made accordingly; hence EUR 21 700 000 were invested in 2012 in Directly Operated Stores, representing the largest share (43%) of all investments made by the group for that year (Exhibit 6, page 40).

These large investments made in 2012 reflect ‘the impact of the strategic decision to render the independent distribution even more selective on the internal market, with a view to conserving the exclusive nature and positioning of our products’ (Exhibit 6, page 44). As a result, the turnover by channel has gone from 47.4% as of 31/12/2008 to 60.8% as of September 2013. In Italy, the Tod’s S.P.A. group owned 44 Directly Operated Stores, compared to only 4 franchised stores, as of 31/12/2012 (Exhibit 6, page 66).

Finally, Tod’s S.P.A. has stated that it is a player in the field of luxury goods, that ‘the TOD’S brand is known for shoes and luxury leather goods’ (Exhibit 6, page 30) and that it operates ‘in the luxury sector under its proprietary brands (TOD’S, HOGAN and FAY) and licensed brands (ROGER VIVIER)(Exhibit 6, page 29). ‘TOD’S Group: A Global Luxury Player’ also appears on Exhibits 3, 4, 5 and 7.

It follows from all this evidence that the Tod’s S.P.A. group strictly controls the distribution of its goods in order to ensure its status as a player in the field of luxury and to protect its image. That is why the group’s strategy is to develop and increase the number of Directly Operated Stores that fall under the direct surveillance of the group.

• Exhibits 8, 9, 10, 11 and 12 form a total of 368 invoices covering the period from 15/01/2008 to 30/09/2013. All of them are in Italian and come with a partial translation into English. The company name ‘Tod’s S.P.A.’ appears on all the invoices, however the figurative trade mark itself does not appear on any of them. The invoices contain product codes and the name/description of the products in Italian. No catalogue was provided with those invoices; therefore it is impossible to ascertain which goods they refer to. All the invoices are addressed to Italian addresses such as ‘SANT’ ELPIDIO A MARE’, ‘LECCE’, ‘ZOLA PEDROSA’, ‘PAVIA’, ‘PESCARA’ or ‘ROMA’.

• Exhibits 13 to 20 consist of hundreds of advertisements from various Italian national newspapers (e.g. La Repubblica, Il Messaggero, La Stampa and Corriere della Sera), Italian magazines (e.g. Vogue, Marie Claire and Gentleman), Italian specialised magazines (e.g. AD Architectural, Internazionale and Traveller) and Italian tabloids (e.g. Grazia and Chi). However, exhibits 17 to 19, which represent about 40% of the submitted advertisements, relate to the period from 2013 to 2014 and are therefore irrelevant since the contested trade mark was filed on 19/12/2012.

All of these advertisements come with an accompanying invoice in Italian with no translation into English. Most of the advertisements are dated and cover the period from 2008 to 2014; those that are not dated can be dated thanks to the accompanying invoices from the advertising companies. As a result, all the extracts can be dated to the period from 2008 to 2014. Each of the provided advertisements contains the sign along with a photograph of a pair of shoes. In most cases, the shoes are worn by models or celebrities.

• Exhibits 21, 22 and 23 present different charitable commitments in which the Tod’s S.P.A. group is involved, namely its membership of the Teatro alla Scala Foundation, its support of the Save the Children charity for its work in Japan, and finally its patronage of the Coliseum restoration project. These documents are two pages long each and are dated 09/06/2011, 22/05/2012 and 22/06/2011 respectively. The sign does not appear on any of these documents and no mention of the relevant goods is made.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in Italy for shoes.

Indeed, it follows from the evidence provided that a significant part of the Italian public will recognise the trade mark in relation to luxury shoes.

The relevant goods are luxury goods. In the present case, the number of people who know the mark may be much higher than the number of actual buyers of the relevant goods as these are luxury goods, which many may know, but few can afford. Therefore, the relevant public is the Italian public at large.

In the present case, considering the huge investments made by the opponent to promote its trade mark, defend its image and increase the recognition of its trade mark on a national level (e.g. the intensive advertisement of the trade mark throughout the years in numerous national newspapers and magazines, which represents a huge investment on the part of the opponent and which is proved by the numerous accompanying invoices, Exhibits 13 to 20), it must be assessed that a high degree of recognition of the trade mark has been reached.

Moreover, the opponent has shown beyond doubt that the trade mark had achieved a degree of recognition with the relevant public in the relevant territory for at least four years before the filing date of the contested sign (Exhibits 1 to 12). Finally, thanks to its financial reports (Exhibits 1 to 7), the importance of the trade mark’s share in the market of the relevant territory and the financial value of the trade mark have been established. It is worth mentioning that the annual report of the Tod’s S.P.A. group provides evidence of significant probative value, given that the group is a publicly traded company and that its annual reports to the shareholders are audited by PWC, an independent source, and are available to any interested party.

3. The ‘link’ between the signs

As seen above, the earlier marks are deemed to be reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

Firstly, the Opposition Division deems it appropriate to recall that the opposition on these grounds is directed against the following remaining goods:

Class 28: Games and toys, namely board games, card games, action type target games, and parlour games; beanbags; toy building blocks; cardboard and plastic caps, namely but limited to for toy guns, holders for caps, and cap guns; mechanical action toys; kites; electric action figures with lights and sounds; collectible items namely action figures, plastic toy figurines in various sizes, toy finger rings, yo-yo's, spin tops, plastic toys, toys incorporating magnets; plush toys and flying discs; costume masks; stuffed toy animals in various sizes; equipment sold as a unit for playing card games; game boards for trading card games; toy stamps with figures; toy and water pistols, guns, and cannons; dolls and baby dolls; balloons; bathtub toys; skateboards, surf boards and swim boards; balls, namely, footballs and handballs; electronic toys; jigsaw puzzles.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities, includes electronic games services provided by means of the Internet, mobile phones, mobile devices; the provision of on-line electronic publications and digital music from the Internet, mobile phones and mobile devices.

As seen above, the earlier mark has a reputation for:

Class 25: Luxury shoes.

As already established in the analysis of the ground under Article 8(1)(b) EUTMR, these remaining contested goods and services are dissimilar to the reputed goods of the opponent.

The contested goods in Class 28 are all kinds of games, toys and certain sporting articles, normally used by children or teenagers and are meant for their entertainment. The remaining contested services in Class 41 are education, training, entertainment, sports and on-line electronic publication related services.

Although the opponent broadly claimed that ‘the Tod’s brand is known for shoes and luxury leather goods, with styles that have become icons of modern living; Tod’s is known in the luxury goods sector as the perfect combination of tradition, modernity and quality’, it did not put forward a convincing line of thought to support the claim that an association or link between the signs would be established by the relevant public. Despite the positive values of tradition, modernity and quality being desirable qualities, the claims made by the opponent are extremely broad concepts associated with many different fields of activity and commonly used in the marketing and promotion of all sorts of goods and services by many companies, and the opponent cannot claim to monopolise them.

The toys, games and sporting articles and the services of education, training, entertainment and cultural activities are very different and have nothing in common with the opponent’s goods presumed to have a reputation; the ways these goods are manufactured and used, the services provided, the senses they affect and their distribution channels are quite different. Moreover, it has been proven by assessing the evidence of reputation, and the opponent himself states, that his reputed goods belong to the fashion industry and moreover the sector known as luxury goods. This cannot be said about any of the contested goods or services, one of which is mainly directed towards entertaining children or doing sports, whilst the other is towards educating, training or holding cultural and sports activities. None of these market sectors or fields has any natural links to those goods usually included in the term luxury goods.

Taking into account the evidence submitted by the opponent, there is no doubt that the opponent’s shoes are luxury goods that will be distributed via carefully selected channels that are completely different from the ones that will sell the applicant’s sports goods or toys or provide the contested services. The mere fact that some luxury shoes might be used for sports is not sufficient to establish any link between the relevant goods and services, which still have a different nature and inherent characteristics.

From the above, it is clear that the opponent’s reputed goods and the contested goods and services clearly do not belong to the same, or adjacent, market segments and that they have a high degree of dissimilarity.

In consequence, taking into account the completely different areas of potential use of the trade marks in question, and also the fact that the contested sign, although containing the succession of the sequence of letters ‘TO’, also presents differences with respect to the earlier marks, there can be no possibility of the applicant benefiting from the reputation of the earlier marks. There will be no detriment to the distinctive character of the earlier marks.

Indeed, as regards this last aspect, it must be noted that the remaining contested goods and services are so remote from the opponent’s goods in question that dilution seems improbable: a typical consumer of toys, games and sporting articles, as well as education, training, cultural and sporting activities, who is familiar with the opponent’s goods is unlikely to think of those goods when confronted with the sequence of letters ‘TO’, used in connection with luxury shoes. This is all the more true as the sequence of letters is accompanied, in the contested sign, by other letters, and forms a distinctive verbal element ‘TOTZ’.

Therefore, taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ric WASLEY

Gailé SAKALAITÉ

Martin EBERL

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal shall be filed in writing at the Office within two months of the date of notification of this decision. It shall be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal shall be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.