CANCELLATION No 12787 C (INVALIDITY)

Hugo Boss Trade Mark Management GmbH & Co. KG, Dieselstr. 12, 72555 Metzingen, Germany (applicant), represented by Dennemeyer & Associates, Landaubogen 1-3, 81373 München, Germany (professional representative)

a g a i n s t

Yanhu Feng, C/ Mesón de Paredes, 49, 28012 Madrid, Spain (EUTM proprietor), represented by Onofre Indalecio Sáez Menchón, Gran Via, 69-4° Of. 412, 28013 Madrid, Spain (professional representative).

On 30/05/2018., the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 11 702 801 is declared invalid for some of the contested goods, namely:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hi ...Show moredes; Trunks and travelling bags; Umbrellas and parasols; Whips, harness and saddlery.

Class 25: Clothing & headgear.

3. The European Union trade mark remains registered for all the remaining goods and services, namely:

Class 18: Walking sticks.

Class 39: Distribution and Storage of goods.

4. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 11 702 801 , namely against all the goods in Classes 18 and 25. The application is based on European Union trade mark registration No 49 262 . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claims that there is a likelihood of confusion, including a likelihood of association, due to the high similarity between the marks and the identity or at least high degree of similarity between the goods.

The applicant argues that both marks consist of three words, where the first word consists of only one syllable and is repeated again as the last
word (BOSS/BESS). The middle word is dissyllabic in both cases, although these middle words also share the vowel ‘U’ in their first syllable, on which emphasis in pronunciation lies for both signs (HUGO/SUPE). The applicant also states that the ending ‘SS’ is rather distinctive in itself due to its sharp pronunciation. On the other hand, it points out that the average consumer will assume that ‘HUGO BOSS’ included in the earlier mark is the name and surname of a person and thus will accredit to the surname a suitability to distinguish the goods from others.

The applicant considers that the dominant elements are ‘BOSS’ (in case of the earlier mark) and ‘BESS’ (in case of the challenged mark). As regards these two elements, the consumers will memorise: the initial letter, the order of consonant-vowel-consonant-consonant, which are identical. As regards the middle vowels O and E included in both marks respectively, they are both pronounced short and unstressed and will only makes less impression when pronounced. Visually, the marks are similar since they are composed of elements following the exact same pattern and using the same font.

Finally, the applicant states that the distinctive character of the earlier mark has been further enhanced because it enjoys recognition on the market by the relevant public within the European Union. In support of its claim, the applicant filed some evidence that will be listed and assessed further in the decision.

The EUTM proprietor argues that the decision of 14/11/2014 B 2 193 566, rejected the opposition and allowed the registration of the current contested trade mark on the basis of the earlier European Union mark No 49 262 which now serves as the basis of the declaration of invalidity. Therefore, the Cancellation Division should not contradict the adopted resolution as it concerns the same parties having identical subjects and motives. The proprietor adds that since the factual basis has not changed significantly, the Office is bound by the results of the previous decision. In support of its observations, the EUTM proprietor filed a copy of the Opposition decision.

In reply, the applicant reiterates its previous arguments on the existence of likelihood of confusion. It challenges the proprietor’s argument on res iudicata by arguing that there exists no provision that would generally prohibit a request for invalidity in cases of preceding oppositions. In addition, the previous opposition decision did not even decide on substance as proof of use of the earlier mark was found insufficient.

The proprietor did not submit arguments in reply.

RES IUDICATA

The proprietor’s claims that the resolution of the Opposition Division, its declarations and conclusions, should continue to refer to the Cancellation Division, in accordance with “nemo potest venire contre factum proprium”, by which the administration is obliged to respect its own actions, especially those acts that have permitted the parties in a proceeding to legitimately acquire rights on a registered European Trade Mark. More specifically, they should not contradict the adopted resolution, as they challenge the same parties having identical subjects and motives.

Pursuant to Article 63(3) EUTMR, an application for revocation or for a declaration of invalidity shall be inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits, either by the Office or by an EU trade mark court as referred to in Article 123, and the decision of the Office or that court on that application has acquired the authority of a final decision. This is what is known as the ‘triple-identity’ requirement.

However, a prior decision by the Office in opposition proceedings between the same parties and relating to the same mark does not preclude a later cancellation request based on the same earlier rights (judgments of 14/10/2009, T-140/08, TiMiKinderjoghurt, EU:T:2009:400, § 36, appeal to the Court dismissed; 22/11/2011, T-275/10, Mpay24, EU:T:2011:683, § 15; 23/09/2014, T-11/13, Mego, EU:T:2014:803, § 12), since the cause of action is different.

Therefore, the EUTM proprietor’s claim is rejected as unfounded.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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

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.

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

Class 18: Leather and imitations of leather, and goods made of these materials (included in class 18), in particular small leather ...Show more goods; trunks and travelling bags; bags; umbrellas and parasols.

Class 25: Clothing for men, women and children; stockings; headgear; underwear; nightwear; swimwear; bathrobes; belts; shawls; acc ...Show moreessories, namely headscarves, scarves, shawls, dress handkerchiefs; ties; gloves; shoes; belts of leather.

The contested goods are the following:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hi ...Show moredes; Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Whips, harness and saddlery.

Class 25: Clothing & headgear.

Contested goods in Class 18

Leather and imitations of leather, Trunks and travelling bags; Umbrellas and parasols are identically contained in both lists of goods.

The term in particular used in the applicant’s list of goods in Class 18, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of in particular see reference in judgment of 09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

Therefore, the contested goods made of these materials and not included in other classes (leather and imitations of leather) are identically contained in both lists of goods (including synonyms).

The contested animal skins, hi ...Show moredes refer to the skins of various kinds of animals. The applicant’s leather is tanned animal skin and therefore similar in nature to animal skins and hides and serves a similar purpose, namely the production of leather or fur goods. Despite certain differences in processing, these goods may target the same consumers and have some points in common with regard to their commercial origin.

Whips are instruments used for driving animals; harnesses are the gear or tackle with which a draft animal pulls a vehicle or implement; and saddlery is equipment for horses, such as saddles and harnesses. Furthermore, the applicant’s goods made of these materials (included in class 18) (leather and imitations of leather) and the contested whips; harnesses; saddlery coincide in their nature, as they all could be goods made of leather. Their purpose, in the broadest sense, may also be the same as that the contested goods are and the applicant’s goods may also be for leading or equipping a living being. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the applicant in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

The contested walking sticks are canes or other staffs used as aids for walking. They are different to the earlier goods in Classes 18 (leather goods, leather and imitations of leather, bags and umbrella) and 25 (Clothing, shoes, headgear). They are sold in different outlets; they are of a different nature and serve a different purpose from the earlier goods. Therefore, these goods are dissimilar.

Contested goods in Class 25

Headgear is identically contained in both lists of goods.

The contested clothing includes, as a broader category, the applicant’s clothing for men, women and children. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

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 included in Classes 18 and 25 such as umbrellas or clothing found to be identical or similar to various degrees are directed at the public at large. The degree of attention will be average.

However, some of the goods such as leather and imitation of leather, animal skins are raw materials that go to industry for further processing. They are also directed at the professional public in the relevant field. The degree of attention will be rather enhanced since the consumer will generally exercise a higher degree of care and will buy the goods only after careful consideration.

3. The signs

Earlier trade mark	Contested trade mark

The relevant territory is the European Union.

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

The earlier mark is a figurative mark which consists of the central verbal element ‘BOSS’ written in fairly standard black letters in bold. Below this element and in a much smaller size, the elements ‘HUGO BOSS’ are written in standard capital letters. The element ‘BOSS’ is the dominant element (most eye-catching) due to its size and position, the remaining elements ‘HUGO BOSS’ play a secondary role.

Furthermore, the central element ‘BOSS’ will be perceived by the English speaking part of the public as a person in control of a group or situation, however for another part of the public it conveys no meaning or it refers to a surname. Be as it may be, since it has no relation to the relevant goods, it has an average degree of distinctive character.

On the other hand, ‘HUGO’ is a common name which, seen together with ‘BOSS’, will be perceived at least by the majority of the relevant public as a name and a surname. Since none of the elements has any relation to the relevant goods, they have an average degree of distinctive character.

The contested mark is also a figurative mark consisting of the central verbal element ‘BESS’ written in standard capital letters in bold. Below this element, in a smaller size, the words ‘SUPE BESS’ are written in standard capital letters. The element ‘BESS’ is the dominant element of the earlier mark due to its size and position, the remaining elements ‘SUPPE BESS’ play a secondary role. All the three elements included in the contested mark are fanciful. Since they have no relation to the relevant goods, they have an average degree of distinctive character.

Visually, the signs coincide in the string of letters ‘B*SS’ of their dominant elements BOSS/BESS. This sequence of letters is replicated in the identical although non dominant terms BOSS/BESS placed below the central words included in both signs respectively. In its observations, the applicant states that the marks are visually similar since they are composed of elements following the exact same pattern and using the same font. The Cancellation Division concurs with this finding, since the marks coincide in a central element and two secondary terms below them, all written with the same type of letters and font. Therefore, the graphical representation of the elements within the marks is similar.

However, the signs differ in their non dominant words ‘Hugo’ and ‘Supe’ as well as in the middle letters ‘o’ and ‘e’ of the elements BOSS/BESS included in both marks respectively.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /b*ss/, present in their respective dominant elements /boss-bess/, this sound of letters being replicated in their non-dominant elements.

However, the pronunciation differs in the sound of the middle letters ‘o’ versus ‘e’ of the elements ‘boss/bess’ as well as in the sound of the letters /hugo/ and /supe/ included in both marks respectively.

The applicant states that, as regards BOSS/BESS, the consumers will memorise the initial letter and the order of consonant-vowel-consonant-consonant, which are identical. As regards the middle vowels O and E included in both marks respectively, they are both pronounced short and unstressed and will only makes less impression when pronounced. The Cancellation Division agrees with the applicant’s argument since the marks consists of three words having the same structure and the same number of letters, the ending SS being striking when pronounced.

Therefore, the signs are aurally similar to an average degree.

Conceptually, while the majority of the relevant public in the relevant territory will perceive the elements ‘HUGO BOSS’ included in the earlier mark as a name and a surname, and the central BOSS either fanciful or as a surname or, for the English-speaking part of the public, as a person in control of a group or situation, the contested mark lacks any meaning in that territory.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 mark

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

According to the applicant, the earlier trade mark enjoys a high degree of distinctiveness as result of its long-standing and intensive use in the European Union for goods in Classes 18 and 25. This claim must be properly considered given that the distinctiveness of the earlier trade mark 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 (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528), 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). In line with opposition proceedings, in invalidity proceedings an invalidity applicant relying on enhanced distinctiveness or reputation must prove that its earlier right has acquired enhanced distinctiveness or reputation by the filing date of the contested EUTM that is 01/04/2013. In addition, the reputation or the enhanced distinctive character of the earlier mark must still exist when the decision on invalidity is taken.

The applicant submitted the following evidence:

• Enclosure 2: An extract from www.wikipedia.org dated 16/06/2016 which features the particulars of the business of HUGO BOSS. It started as a clothing company in 1924.

• Enclosure 3: An online news article published on wuv.de ranking The strongest apparel and fashion brands in Germany published in 2012. It had 1.489.823 visits. Moreover, the mark “BOSSHUGO BOSS” scored the highest ranking and, according to the article, is known to almost 100% to the relevant public for the subject fashion and apparel goods.

• Enclosure 4: a survey conducted by Socio Polis, Centre of Social Technologies, in Ukraine in 2014. The survey was conducted to establish the degree of fame of the trademark BOSS and Lareboss in Ukraine. The results show that 87,4% of the respondents indicated that they know Boss or Hugo Boss trademarks, 75,3% claimed that they associated the mark with clothing, 67,1% that they associated the mark with perfumery and other cosmetic products and 55,8% that they linked the subject mark with leather accessories. Moreover, 25, 4% associated the mark with footwear and still about 22, 5% associated it with watches. It includes the questions actually asked and the breakdown of responses.

• Enclosure 5: a ‘mafoScorecard’ extract from BrandFeel in German with a translation into English. It refers to the mark BOSS HUGO BOSS in the fashion. The survey (2011) serving as a basis for the findings and determinations was conducted among about 500 participants (512 in this case), each answering 25 questions concerning reputation of the mark, Image (quality, dynamics, modernness and the like), and distinctiveness.

• Enclosure 6: results of an Online-Survey conducted in November 2011. lt shows the status of HUGO BOSS and its competitors, as well as the awareness and image of HUGO BOSS product lines in of Germany, France, Italy, Spain, United Kingdom, China, Russia and the USA. The survey includes the participants profiles and incomes, the sample and the methodology. HUGO BOSS scored the 8^th position among other fashion brands.

• Enclosure 7: a Judgment from the Paris Court of First Instance from 12/10/2005 in which it is stated that the mark BOSS is renowned and known by a significant part of the public concerned.

• Enclosure 8: an affidavit signed by Ms. Judith EckI, Authorized Representative of HUGO BOSS Trademark Management GmbH & Co. KG on 27/06/2016. This document states that the mark BOSS HUGOBOSS has been extensively used in the European Union, at least since 1970. The statement shows that the Net Sales increased from 2010 to 2015.

As far as the affidavit is concerned, Article 22(4) EUTMDR (applicable to cancellation proceedings by virtue of Rule 19(2) EUTMDR) expressly mentions written statements referred to in Article 78(1) EUTMDR as admissible means of proof of use. Article 78(1) EUTMDR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a 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. The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

Having examined the remaining material listed above, the Cancellation Division concludes that the earlier trade mark has acquired a high degree of distinctive character through use on the market for the earlier goods.

The survey conducted in 2011 shows a high brand awareness for ‘HUGO BOSS’ for clothing and accessories in a substantial part of the European Union, namely in France, Germany, Italy, Spain and the United Kingdom. Furthermore, the earlier mark ranked among the most valuable marks in Germany and worldwide.

The evidence indicates that the earlier trade mark has been used for a substantial period of time in a substantial part of the relevant territory. The brand recognition studies carried out and the Brandfeel Scorecard together with the rankings of the TOP fashion brands, the judgment of the French Court from 2015 and the sales figures provided in the affidavit, when globally assessed, provide enough indications that the trade mark has a consolidated position in the market. The Cancellation Division finds that, when considered in its totality, the evidence submitted by the applicant indicates that the earlier trade mark enjoys a high degree of distinctiveness among the relevant public.

The evidence mainly concerns clothing, apparel goods and accessories (Classes 18 and 25).

On the basis of the above the Cancellation Division concludes that the earlier trade mark enjoys a high degree of distinctiveness among the relevant public for goods in Classes 18 and 25.

5. Global assessment, other arguments and conclusion

The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between the goods may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods have been found to be partially identical, similar to varying degrees and dissimilar.

Taking into account especially the fact that the signs coincide in the sequence of letters ‘B*SS’ of their respective dominant and distinctive elements placed in the same order, and that visually and aurally, the marks follow the same pattern, including a central dominant element below of which there are two words including the same number of letters and following the same syllabic, all represented in a similar manner, including the use of the same font, it is considered that the similarities between the signs are enough to counteract the dissimilarities. The mere presence of the differing elements, which play a secondary role, are not sufficient to counteract that the overall impression of the signs is similar and that there is a likelihood of confusion for those goods found identical or similar, even taking into account the high degree of attention of the public. Moreover, the likelihood of confusion is even more justified taking into account the enhanced distinctive character of the earlier mark through use as stated above since the more distinctive the earlier mark, the greater will be the likelihood of confusion.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion on the part of the public and, therefore, the application is partly well founded on the basis of the applicant’s European Union trade mark registration No 49 262.

Pursuant to the above, the contested trade mark must be declared invalid for the goods found to be identical or similar to those of the earlier trade mark. The application is successful insofar as the goods that are similar to a low degree are concerned since according to the interdependence criteria stated above, the low degree of similarity of the goods is compensated by the enhanced distinctiveness of the earlier mark and the high degree of visual similarity and the average degree of aural similarity of the signs.

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

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 109(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

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

The Cancellation Division

Elisa ZAERA CUADRADO

Carmen SÁNCHEZ PALOMARES

José Antonio GARRIDO OTAOLA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.