OPPOSITION No B 2 171 257

Jean-Claude Coste, 202, rue de Rivoli, 75001 Paris, France (opponent), represented by Cabinet Herrburger, 115, boulevard Haussmann, 75008 Paris, France (professional representative)

a g a i n s t

N.G.M. Sprl, Beverlaai 73, 8500 Kortrijk, Belgium (applicant), represented by K.O.B. n.v., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).

On 29/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 171 257 is partially upheld, namely for the following contested goods and services:

Class 18: Leather and imitation leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas.

Class 35: Wholesaling and retailing and online retail stores in relation to clothing, footwear, headgear, fashion accessories, luggage, rucksacks and bags, leatherware, umbrellas, parasols, spectacles and sunglasses.

2. European Union trade mark application No 11 439 924 is rejected for all the above goods and services. It may proceed for the remaining 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 11 439 924. The opposition is based on European Union trade mark registrations No 8 698 045, No 10 601 631 and No 11 083 623 and on international registrations designating the European Union No 1 023 393 and No 1 132 108. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

SUBSTANTIATION OF THE INTERNATIONAL EARLIER MARKS

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered – Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards international trade marks No 1 023 393 and No 1 132 108 on which, inter alia, the opposition is based.

On 10/05/2013, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. After an extension of the cooling-off period requested by both parties, this time limit expired on 15/07/2015.

The opponent did not submit any evidence concerning the substantiation of the earlier international trade marks.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his international earlier marks or earlier rights as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier international marks. The opposition will proceed based on only the remaining earlier marks.

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:

EUTMA 8 698 045 (earlier mark 1)

Class 9: Spectacles (optics); optical goods; alidades; spectacle frames, spectacle cases, instruments containing eyepieces, spectacle glasses, sunglasses.

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery, wallets; change purses; handbags, rucksacks, wheeled shopping bags; bags for climbers, bags for campers, travelling bags, beach bags, school bags; vanity cases (not fitted); collars and covers for animals; net shopping bags and shopping bags; bags or sachets (envelopes, pouches) of leather, for packaging.

Class 25: Clothing, footwear, headgear, shirts; clothing made from leather or imitation leather; belts (clothing); furs (clothing); gloves (clothing); scarves; ties; hosiery; socks; slippers; beach shoes, skiing or sports shoes; diapers of textile; underwear.

EUTMA 10 601 631 (earlier mark 2)

Class 9: Spectacles (optics); optical goods; alidades; spectacle frames, eyewear cases, spectacle lenses, sun glasses and spectacles.

Classes 18 and 25: identical to earlier mark 1

Earlier marks 1 and 2 seek protection, regardless of the specification of additional goods, for the entire class heading of Class 25 of the Nice Classification. They were filed on 19/11/2009 and 30/01/2012, respectively. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade mark applications filed before 21/06/2012, the Office considers that 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 when the filing was made, in this case the 9th and 10th editions, respectively.

Consequently, in order to take account of the entire alphabetical list in Class 25 of these earlier rights, the Opposition Division will compare the goods and services of the contested sign with both (i) the general indications specified and (ii) any items in the alphabetical list that do not fall within the natural and usual meaning of these general indications.

In the case of Class 25, the Opposition Division has identified the following items in the alphabetical list covered by these earlier rights that do not fall within the natural and usual meaning of these general indications:

Class 25: Boot uppers; cap peaks; dress shields; fittings of metal for shoes and boots (fittings of metal for footwear in the 10th edition); footwear uppers; hat frames [skeletons]; heelpieces for boots and shoes (heelpieces for footwear in the 10th edition); heelpieces for stockings; heels; inner soles; non-slipping devices for boots and shoes (non-slipping devices for footwear in the 10th edition); pockets for clothing; ready-made linings [parts of clothing]; shirt fronts; shirt yokes; soles for footwear; studs for football boots [shoes]; tips for footwear; welts for boots and shoes (welts for footwear in the 10th edition).

Therefore, as regards this class, both the general indications specified and the items listed above will be compared.

EUTMA 11 083 623 (earlier mark 3)

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 9: Spectacles (optics); Optical goods; Alidades; Spectacle frames, Eyewear cases, Instruments containing eyepieces, Spectacle lenses, Sun glasses and spectacles.

Class 18: identical to earlier mark 1.

Class 25: Clothing, footwear, headgear, shirts; clothing made from leather or imitation leather; belts (clothing); furs (clothing); gloves (clothing); scarves; ties; hosiery; socks; slippers; beach shoes, skiing or sports shoes; underwear.

Further to previous final decisions affecting the application at issue, the list of contested goods and services is as follows:

Class 18: Leather and imitation leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas.

Class 35: Import and export, administrative processing of purchase orders; office work; wholesaling and retailing and online retail stores in relation to clothing, footwear, headgear, fashion accessories, luggage, rucksacks and bags, leatherware, umbrellas, parasols, spectacles and sunglasses, electrical apparatus, electronic and solar-powered battery chargers, electronic apparatus and accessories for electronic apparatus, vehicles, beverages, batteries, gadgets; marketing and advertising; presentation on communication media for the purpose of selling clothing, footwear, headgear, fashion accessories, luggage, rucksacks and bags, leatherware, umbrellas, parasols, spectacles and sunglasses, electrical apparatus, electronic and solar-powered battery chargers, electronic apparatus and accessories for electronic apparatus, vehicles and accessories for vehicles, beverages, batteries, gadgets.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under 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 18

The contested leather and imitation leather; animal skins, hides; trunks and travelling bags; umbrellas are identically contained in both lists of goods.

The contested goods made of these materials [leather and imitations of leather] and not included in other classes overlap in particular with the opponent’s handbags, as the latter can be made of leather and imitations of leather, as well as from other materials such as textiles. These goods are considered identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principle applies to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services or wholesale services. Therefore, the contested services wholesaling and retailing and online retail stores in relation to clothing, footwear, headgear, fashion accessories, luggage, rucksacks and bags, leatherware, umbrellas, parasols, spectacles and sunglasses are considered similar to a low degree to the opponent’s spectacles (optics); sunglasses in Class 9, trunks and travelling bags; umbrellas, parasols; handbags, rucksacks in Class 18 and clothing, footwear, headgear; belts (clothing); furs (clothing); gloves (clothing); scarves; ties in Class 25.

However, retail services of specific goods and different or similar goods are not similar. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary. Therefore, the contested services wholesaling and retailing and online retail stores in relation to electrical apparatus, electronic and solar-powered battery chargers, electronic apparatus and accessories for electronic apparatus, vehicles, beverages, batteries, gadgets are considered dissimilar.

The contested import and export services can be defined as the international trade and exchange of goods. A company that provides these services may also provide parallel activities such as freight services or delivery of goods. These services normally require the involvement of customs authorities in both the country of import and the country of export. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods.

The contested administrative processing of purchase orders and office work cover services that are aimed at performing day-to-day operations that are required by a business to achieve its commercial purpose, including administration and support services in the ‘back office’. These services mainly involve activities typical of secretarial services.

The contested marketing and advertising; presentation on communication media for the purpose of selling clothing, footwear, headgear, fashion accessories, luggage, rucksacks and bags, leatherware, umbrellas, parasols, spectacles and sunglasses, electrical apparatus, electronic and solar-powered battery chargers, electronic apparatus and accessories for electronic apparatus, vehicles and accessories for vehicles, beverages, batteries, gadgets are services consisting in providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.

In light of the above, all these remaining contested services are dissimilar to the opponent’s goods (including the items in the alphabetical lists of Class 25 of earlier marks 2 and 3), although the opponent’s goods may be the subject of some of the contested services. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs and have different purposes. They do not have the same producers/providers, relevant public or distribution channels. Furthermore, they are neither in competition nor complementary.

2. 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 and services found to be identical or similar to a low degree are directed mostly at the public at large, although some are directed at business customers with specific professional knowledge or expertise (the wholesale services in Class 35). The degree of attention will be average.

3. The signs

EUTMA 8 698 045 (earlier mark 1) JITROIS EUTMA 10 601 631 and EUTMA 11 083 623 (earlier marks 2 and 3)	J3
Earlier trade marks	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Earlier mark 1 and the contested sign are word marks. It should be emphasised that the protection of word marks comprises upper case and lower case, using a mixture of the two and in a variety of common fonts.

Earlier marks 2 and 3 are a figurative sign in which the verbal element ‘jitrois’ is depicted in almost standard black lower case letters and followed by a dot.

Neither of the signs has any element that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in their first letter, ‘J’, which will first catch the attention of the reader. On the other hand, they differ in their remaining elements, namely the number ‘3’ of the contested sign and the letters ‘itrois’ in the earlier marks. Earlier marks 2 and 3 also contain figurative elements (see above). However, their visual impact is negligible.

Therefore, the signs are visually similar to a low degree.

Aurally, the signs are identical for the French-speaking public. The figurative element of the dot at the end of earlier marks 2 and 3 will not be pronounced by the public. For the remaining part of the public, the signs coincide at least in the sound of their first letter, ‘J’. In some languages, the coincidence go up to the sound of the letters ‘I’, ‘T’, ‘R’ and/or ‘S’. Therefore, the degree of aural similarity varies from low to average in these cases.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the French-speaking part of the public will identify in all the signs the same concept of the number 3, expressed as a digit, or as a word. To that extent, the signs are conceptually similar to an average degree. Based on the aural perception, there is even a complete identity of concepts since the French-speaking public will understand the signs as referring to the same concepts of the letter ‘J’ and the number 3, without attributing any meaning to the combination of these elements as a whole.

For the remaining part of the public, the signs are not conceptually similar, since the concept of the number 3 will be identified in the contested sign and the earlier marks will not be associated with any meaning.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

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

According to the opponent, the earlier trade marks have a reputation not only in France but in most of the European Union in connection with the goods for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Extracts from magazines showing fashion shoots. The models are wearing clothes designated as coming from various brands and designers, including ‘Jitrois’ and ‘Jean-Claude Jitrois’. These magazines are not dated or the dates are illegible. Likewise, there is no information on distribution or publication area.

• Various ‘jitrois’ catalogues and digital lookbooks dated 2010-2016. The earlier marks are not visible on the articles of clothing. In addition, there are no reference numbers or price lists. However, some contact addresses in the European Union, namely in France and the United Kingdom, are indicated at the end of these documents.

• Undated extracts from unidentified websites, in which the earlier marks either do not appear or are illegible.

• An picture of a woman from an unidentified source, with a caption mostly in Asian-style characters in which the word ‘jitrois’ appears twice; however, no explanation of this item of evidence was submitted.

• Two undated magazine articles in English that refer to the French designer Jean-Claude Jitrois. There is not information on the distribution or publication area of these magazines.

• An undated extract from an unidentified website showing a handbag ‘by Jitrois’.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through use, let alone a reputation.

Although the documents show a certain use of a mark ‘JITROIS’ in relation to clothing and bags, there is little or no indication of the extent, time and place of use. Moreover, the evidence provides no information about the market share and the degree of recognition of the marks on the relevant market as a result of such use.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade marks have a reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their 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. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. 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 lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (20/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17 et seq.).

The contested goods are identical and the contested services are partly similar to a low degree and partly dissimilar to the opponent’s goods.

At least for the French-speaking part of the public, the marks in dispute are aurally identical and conceptually similar to an average degree. Based on the aural perception, there is even a complete identity of concepts for this part of the public. Furthermore, the signs have the same first letter, which will first catch the attention of the reader.

It must also be pointed out that likelihood of confusion includes the likelihood of association in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or economically linked undertakings.

Finally, account should be taken of the normal degree of distinctiveness of the earlier marks and the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must place their trust in their imperfect recollection of them (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Furthermore, consumers normally perceive a mark as a whole and do not analyse its details.

Based on all the foregoing, it is considered that the abovementioned identity and similarity between the signs and between some of the goods and services are sufficient for at least part of the public to believe that these goods and services come from the same undertaking or economically linked undertakings.

Therefore, the Opposition Division considers that the marks convey similar overall impressions and that, for at least a part of the public, a likelihood of confusion between them cannot be safely excluded, even in relation to the services found to be similar to a low degree.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade marks.

The rest of the contested 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 services cannot be successful.

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 or 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 European Union 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.

1. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined 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. Conclusion

As seen above, reputation of the earlier trade mark is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on Article 8(5) EUTMR.

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

Loreto URRACA LUQUE

Steve HAUSER

Oana-Alina STURZA

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.