CANCELLATION No 12 844 C (INVALIDITY)

The North Face Apparel Corp., 3411 Silverside Road, Wilmington, Delaware 19810, United States of America (applicant), represented by Akran Intellectual Property S.r.l., Via Del Tritone 169, 00187 Rome, Italy (professional representative)

a g a i n s t

Atacado de Confecções FortSul LTDA, Avenida Fernando Ferrari, 458, Porto Alegre Rio Grande do Sul 90200, Brazil (EUTM proprietor), represented by Giovanna Paola Girardi, Calle Alvaro Caballero, 11, 28023 Madrid, Spain (professional representative).

On 25/05/2018, the Cancellation Division takes the following

DECISION

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

2. European Union trade mark No 12 912 507 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 080.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) No 2017/1001 (codification) (EUTMR), Delegated Regulation (EU) No 2017/1430 (EUTMDR) and Implementing Regulation (EU) No 2017/1431 (EUTMIR), 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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 all the goods and services of European Union trade mark No 12 912 507 ‘THE SOUTH FACE’ (word). The application is based on, inter alia, European Union trade mark registration No 5 002 746 . The applicant invoked Article 60(1)(a) EUTMR in connection with Articles 8(1)(b) and 8(5) EUTMR (reputation claimed for clothing).

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that EUTM No 12 912 507 ‘THE SOUTH FACE’ (word) should be declared invalid. It first explains that it is part of VF Corporation and ‘The North Face’ is the most valuable trademark of the whole group, that includes many other trade marks (see annex 1). The gear offered under ‘The North Face’® mark is frequently ranked highly in consumer ratings (see Annex 2), sponsors big events and is wore by celebrities (see annexes 3 to 6). The applicant is proprietor of several trade marks and domain names, for the distinctive mark 'The North Face' (see annexes 7 to 13). The applicant has made continuous and uninterrupted use of ‘The North Face’, in Italy and throughout the European Union, through intense advertising campaigns, including paper and digital media, with broad distribution, at both national and international level (see annexe 14). Several shops have been opened within the European Union (see annex 15). The commercial success of a brand also exposes it to the risk of unlawful attempts at free-riding by third parties (see contested trade mark in annex 16). The marks bear a high degree of visual, phonetic and conceptual similarity. Both marks have the same structure and are conceptually in opposition which make them easy to associate. 'The north face' indicates the coldest wall of a mountainside, exposed towards the north, in contrast with the more accessible and milder ‘south face'. The goods and services are identical or similar. In addition, the EUTM owner’s is intented to take unfair advantage from the reputation of the applicant’s well known trademark. The contested mark does not seem to be used within the European Union but it is used in Brazil with a figurative element resembling the one used by ‘The North Face’, which makes it evident that the intention is to free ride business strategy of the applicant to the detriment of its distinctive character, reputation and goodwill. The EUTM proprietor is gaining an unfair advantage for its business activities, from the enormous selling power of the TNF brand. In addition, the EUTM proprietor’s conduct is heavily detrimental to the repute of such marks, given that its production escapes the strict quality controls. This constitutes a serious threat to the applicant’s goodwill and to its trade mark portfolio, since the fidelity of consumers is gained through a long, slow process of loyalty building.

The applicant filed the following evidence in order to support its arguments:

• Annex 1: VF Corporation 2014 Annual Report,

and VF Corporation 2015 Annual Report,

• Annex 2: Magazines from 2009 showing ‘The North Face’ products are highly ranked (backpack and running shoes).

• Annex 3: ‘The North Face’ sponsors professional athletes from the worlds of running, climbing, skiing and snowboarding.

• Annex 4: The New York Times, 13/11/2008 article about Barak Obama wearing ‘The North Face’ articles.

• Annex 5: USA Today 23/01/2008, article about Victoria Beckham wearing ‘The North Face’ articles.

• Annex 6: Article on http://wwd/com/markets-news/ready-to-wear-sportswear/north-face-unveils-never-stop-global-ad-campain-10246145/print-preview/ about the First global advertising campaign of The North Face in September 2015 (among which France, Germany and the UK were included).

• Annex 7: EUTM "The North Face" (device), registered with No 5 002 746 on 15/06/2007, filed on 21/03/2006, in Classes 9, 12, 18, 22, 25 and 35.

• Annex 8: EUTM "The North Face "(word) registered with No 3 731 502 on 22/06/2005, filed on 26/03/2004, in Classes 35, 37 and 41, duly renewed.

• Annex 9: EUTM "The North Face Endurance Challenge" (word), registered with no. 6 136 121 on 12/11/2008, filed on 25/07/2007, in Classes 18, 25 and 41.

• Annex 10: Italian trademark "The North Face" (device), registered with No 1 463 559 23/09/2011, filed on 20/06/2011, renewal of the previous registration No  946 846 of 9/11/2001, for goods in class 9.

• Annex 11: Italian trademark "The North Face" (word), registered with No  1 463 557 on 23/09/2011, filed on 20/06/2011, renewal of the previous registration of 946 848 on 9/11/2001, for products in class 9.

• Annexes 12 and 13: domain names: www.thenorthface.com (see copy taken from database NIC.com) and www.thenorthface.it

• Annex 14: Press clippings dated 25/07/2008 about The North Face showing The North Face can be counted among the top 10 brands of outdoor clothing in the world.

• Annex 15: The North Face stores in European cities (see the website http://www.thenorthface.it/tnf-it-it/store-locator/, a print out of which is provided).

• Annex 16: EUTM N° 12 912 507 THE SOUTH FACE field on 25/05/2014

• Annex 17: B 2 372 806 of 30/09/2015, Texteis vs. Extra Group about comparison of sales services in class 35.

• Annex 18: decision of the Trademark Trial and Appeal Board of the USPTO,rendered on 20/09/2011, in opposition proceedings n. 91 190 587, proposed by TNF against Neus Trading, recognising the fame of The North Face.

• Annex 19: Abstract taken from the website www.atacadofortsul.com.br showing that the Applicant combines the contested word mark ‘The South Face’ with a reversed ‘half dome’ .

The EUTM proprietor requests proof of use of all earlier trade marks.

For the sake of procedural economy, the applicant decides to file evidence of use of earlier EUTM No 5 002 746 in relation to clothing, footwear and headgear (class 25) and on-line retail services; retail store services (class 35) (and of EUTM Registration No 3 431 502 "The North Face" in relation to on-line retail services; retail store services, not assessed for economy of proceedings). It also asks the Office to consider the proof of use filed as proof which supports the applicant’s claim of reputation.

The EUTM proprietor considered that the evidence is not sufficient to prove genuine use. It can only demonstrate that the applicant owns a successful business and that its products commercial channels are extremely specialized, either because they are focused in outdoor and action sports or because they are flagship shops. In its view, surprisingly the applicant has not furnished any invoices, thus the extent of the commercial activity with regard to the goods and services the earlier trademarks were registered for cannot be established. The evidence submitted could, at most, make it probable or credible that there is a trademark being used, however it is not clear for which type of goods and services. According to the proprietor, the evidence submitted is also not enough to render the application of the protection given by Article 8(5) EUTM possible. The EUTM proprietor not only has a right to use its registered trademark because of its right to use the opposite words, but the origin of the products also have a connection with the term SOUTH, as they originate from the “southern hemisphere”, where the company is established. It then states that there is no detriment to the applicant.

PROOF OF USE

The EUTM proprietor requested the applicant to submit proof of use of the trade marks on which the application is based. The request has been filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the date of the application for a declaration of invalidity. For reasons of economy of the proceedings, the applicant filed evidence only in relation to earlier EUTMs No 5 002 746 and 3 731 502. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s EUTM registration No 5 002 746.

According to Article 64(2) and (3) EUTMR, if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of filing or, where applicable, priority of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.

The application for a declaration of invalidity was filed on 20/04/2016. The date of filing of the contested trade mark is 27/05/2014. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in the European Union from 20/04/2011 to 19/04/2016 inclusive. Since the earlier mark was registered more than five years prior to the date of filing of the contested EUTM, use of the earlier mark had to be shown also for the period from 27/05/2009 to 26/05/2014 inclusive. It is noted that two relevant periods overlap.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the application is based. Although the applicant mentioned that for the sake of procedural economy, it filed evidence of use of earlier EUTM No 5 002 746 in relation to clothing, footwear and headgear (class 25) and on-line retail services; retail store services (class 35), the Cancellation Division notes that the earlier EUTM does not cover these general categories, but the goods following the expressions ‘namely’ and ‘including’, respectively, in Classes 25 and 35, which both restrict in fact the list of goods and the retail services to those specific goods and services listed after them (on the use of “namely” and “including”, see the reference in judgment of 09/04/2003, T-224/01, Nu-tride, EU:T:2003:107).

In other words, the applicant’s evidence will be assessed for:

Class 25: Clothing, namely, men's, women's, and children's t-shirts, shirts, tops, sweatshirts, sweatpants, pants, side zip pants, shorts, trousers, jeans, vests, parkas, anoraks, coats, jackets, wind-resistant jackets, jacket hoods, pullovers, sweaters, coveralls, underwear, thermal underwear, boxer briefs, sleepwear, lingerie, loungewear, hosiery, socks, tights, gloves, mittens; outerwear, namely, shells, one-piece shell suits, ski wear, ski suits, ski vests, ski jackets, ski bibs, bib overalls, bib pants, snowboard wear, snow pants, snow suits, rain wear, rain jackets, rain pants, gaiters, namely, neck gaiters, leg gaiters and ankle gaiters; skirts, skirts, dresses, swimsuits, swim trunks; footwear, namely, athletic shoes, sneakers, trail running shoes, climbing shoes, hiking shoes, slippers, climbing slippers, boots, trekking boots, hiking boots, snowshoes, clogs, sandals; headgear, namely, caps, hats, headbands, bandanas, scarves, ear bands, earmuffs, balaclavas, visors, beanies; belts.

Class 35: On-line retail services; retail store services; all including camping and outdoor gear and equipment, books, food, hardware, clothing, sportswear, eyewear, footwear, headgear, sports equipment and related accessories.

According to Article 19(2) EUTMDR in conjunction with Article 9(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 01/09/2016 the applicant was given two months to submit proof of use. An extension was granted until 06/02/2017.

On 06/02/2017 the applicant submitted evidence as proof of use.

The evidence to be taken into account is, in particular, the following:

• Affidavit of Ms Christine M. Hernandez, in her capacity as Assistant General Counsel for The North Face Apparel Corp (The Applicant) stating that it is a wholly owned subsidiary of VF Corporation, an American worldwide apparel and footwear company founded in 1899. According to the affidavit, the North Face is the largest brand in the outdoor and action sports coalition. Europe has been the region outside North America where the brand has expanded the most over the last 5 years. In addition to sponsorships and activities that directly benefit the products, the applicant actively supports various charities. For example, The North Face® brand has committed to programs that encourage and enable outdoor participation, such as The North Face Endurance Challenge® and The North Face Explore Fund® programs. The applicant’s THE NORTH FACE trademark is used to distinguish high performance outdoor apparel, footwear, equipment and accessories. The trademark THE NORTH FACE is physically present on the products themselves, on labels attached to the products, on shop signs and store fronts in which the products are sold and on the bags in which the products are placed at the moment of purchase.

• Annex 1 - VF Corporation 2014 Annual Report, Page 6 And VF Corporation 2015 Annual Report making reference to a specialized sector “outdoor and action sports”.

• Annex 2 and 2.1: Article titled ‘The North Face builds on strategic shift towards mobile marketing after campaign success’. The North Face ‘Jester’ backpack was ranked the highest in 2009 by Consumer Reports for backpack reviews, whereas ‘The North Face’ single-track running shoe was awarded ‘Gear of the Year’ in 2010 by Outside magazine, as well as ‘Best Debut’ by Runner’s World in the same year.

• Annex 3: TNF sponsors professional athletes from the worlds of running, climbing, skiing and snowboarding, extract from a fashion journal WWD dated 29/09/2015.

• Annex No 4: Extract from CSRwire, press release and news distribution website dated 29/08/2015 mentioning the North Face never stop campaign.

• Annex No 5 and 5.1: On 22/06/2012, a new THE NORTH FACE store opened in Macron, near Venice, in Italy. At the time, this was the 10 single brand store in Italy and this was shortly followed by store number 11 which opened in Turin, Italy, in September 2012.These developments were reported on an online mountain sports journal named MountainBlog. (http://www.mountainblogit).

• Annex 6 and 6.1: During the years 2012, 2013 and 2014 THE NORTH FACE presence in France expanded with the opening of both online and brick & mortar stores. On 17/08/2012, it was reported on the Skiinfo website (www.skiinfo.fr) that the applicant had opened a new online store for the French market. Reference is made to an advertising campaign for the French market starting on 19/09/2011 and promotion of THE NORTH FACE on 930 French cinema screens and on Montagne TV.

• Annex No 7 and 7.1 is an abstract from the blog Randozone (www.randozone.com), a French website focusing on mountain activities, dated 21/10/2012 informing its readers about the opening of a 240mz flagship THE NORTH FACE store in Lyon, France, on 26/09/2012.

• Annex No 8 is an extract from the real estate web journal REP Europe Real Estate” (http://europe-re.com/). The article is dated 17/09/2013 and reports the opening of a new THE NORTH FACE flagship store on 13/09/2013 in Boulevard Saint Germain, Paris, France.

• Annex No 9 and 9.1 is an extract from the French marketing blog “Ursofrench (http://ursofrench.fr/). The article, dated 6/12/2013 reports the opening of three new stores in Paris, France on the occasion of which the applicant organized a campaign to raise awareness about issues concerning preservation of the polar environment. The photos show the particular ice sculptures created for the occasion, where THE NORTH FACE trademark appears on the base, located in some of the most renowned squares in Paris (Place de la Bastille, Place de la République and in Montparnasse), as well as the entrance of THE NORTH FACE store in Saint Germain.

• Annex No 10 and 10.1 is an extract from the French web journal “OutdoorExperts” (http://outdoorexperts.fr/). The article is dated 1/9/2014 and reports the opening of the fourth THE NORTH FACE store in Paris, France. The article also reports that this opening brought the total store count in France to 15.

• Annex N° 11 and 11.1 a store was opened in Florence, Italy on 17/09/2014 as reported by ToscanaMediaChannel (www.toscanamediachannel.it), an Italian information website focussing on the upcoming events in the city of Florence, Italy on 12/09/2014.

• Annex No 12 and 12.1 at the end of 2014, a store was inaugurated in Vielha, Spain, on 7/12/2014 as reported on the website of the Spanish magazine Solonieve (http://solonieve.es/) in an article dated 4/12/2014.

• Annex No 13 and 13.1 is an extract from the sports web blog “UltraSport maratone e dintorni” (http://ultramaratone.maratone.dintorni.over-blog.it/). This article, dated 3/9/2012, is a review of a series of THE NORTH FACE Ultra-Trail du Mont-Blanc® events, specifically, a series of sponsored mountain marathons that took place between Italy and France, namely in Courmayeur, Champex and Chamonix during the period from August 27 to September 2012. The article reports an estimated 134 000 followers via the Livetrail.net site and a total 660.000 spectators during the week of the event and further refers to the following years’ 11th anniversary event, during the period from 26/08/2013 to 1/9/2013. Lastly, the article also shows the poster of the event (also attached in a larger format for ease of analysis, Annex No, 13.2) complete with date, location and trademark.

• Annex No 14 is an extract from a report dated 3/9/2014, of SNEWS (http://www.snewsnet.com/), an independent source for outdoor and fitness news, products, trends and education. This article also reports the event referred to above i.e. THE NORTH FACE Ultra-Trail du Mont-Blanc® event which took place in August 2014. As previously described, the race takes place on Europe’s tallest mountain, Mont Blanc, and attracts challengers and visitors from around the world. THE NORTH FACE Ultra Trail du Mont Blanc has been called “the most prestigious trail race in the world”, with participants from 5 continents, 77 countries and THE NORTH FACE being title partner/main sponsor since the first edition in 2003.

• Annex No 15 is an extract from an article published on the website of Brandwave, a marketing agency specialising in the sports market (http://brandwavemarketing.com/portfolio/north-face-pods/). The article refers to a tradeshow in Munich, Germany in 2012, where some Experiential Pods have been created for the applicant to present its new products, namely a new airbag system implemented inside backpacks, that would prevent skiers from being smothered in case of avalanches, giving the end user the chance to understand directly their features and their innovative practical applications.

• Annex No 16 is an extract of the front and back covers of the THE NORTH FACE annual workbooks the years 2011, 2012, 2013, 2014 and 2015. These workbooks are used during sales meetings and are a representation of the products that will be available during the upcoming seasons. The Workbooks are provided to the sales representatives of authorized retailers to determine which THE NORTH FACE products they will carry for the particular season. The workbooks shown bear the relevant trademark, together with the indication of the distribution sales teams in the European Union.

• Annex No 17 shows some examples of the clothing tags that were applied to the hangers in THE NORTH FACE stores in the European Union. The tags also bear specifications in 5 different languages of the European Union (more specifically, English, French, Portuguese, Spanish and German). On the bottom of the each it is possible to read the date of release and the planned use for the fall and / or spring clothing collection (a larger representation of the release date information is also provided for ease of reference).

• Annex No 18 shows an example of hangtags attached to the clothing bearing the relevant trademark.

• Annex No 19 depicts another example of the use of THE NORTH FACE trademark together with the relevant tags and their application on the products themselves.

• Annex No 20 is a photographic summary of the applicant’s campaign with Intersport, one of the world’s leading sporting goods retailers (www.intersport.com) for the period from September to November 2014 in relation to stores in Germany, Italy, Austria, France and Spain. The clothing items depicted bear the relevant trademark.

• Annex No 21 is an extract from the fashion web blog HYPEBEAST (https://hypebeast.com/, dated November 17, 2014 where it was reported that a new collection of jackets, bearing the relevant trademark, was introduced in the 2014 Fall / Winter Collection and was made available in London, U.K.

• Annex No 22 are extracts from the website www.thenorthface.com listing stores in which the applicant’s THE NORTH FACE products are sold in the five main markets of the European Union (Germany, U.K., Italy, Spain and France).

• Annexes No 23, 23.1, 23.2, 23.3 and 23.4 are testimony to sales of THE NORTH FACE products bearing the relevant trademark during the relevant period through the online retailer AMAZON in the UK (amazon.co.uk). It is possible to read very positive consumer reviews about THE NORTH FACE products.

Affidavits from the parties or their employees

As far as the affidavit is concerned, Article 10(6) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR 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.

Overall assessment of the evidence

The EUTM proprietor argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use for the goods and services for which the earlier mark is registered.

The EUTM proprietor’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Cancellation Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Most of the evidence of use is dated within the relevant periods, namely from 27/05/2009 to 26/05/2014 inclusive and from 20/04/2011 to 19/04/2016 inclusive. As shown in the annual reports (annexes 1), The North Face is the most valuable brand of the applicant. The brand has become global and in particular it opened many stores within the European Union (annexes 6 to 12 and annex 22). It is used as a trade mark to distinguish goods and services and is also clearly used as registered. It is a trade mark for technically advanced outdoor clothing, equipment and footwear. Therefore it is not correct to say that the evidence does not show use for the goods and services for which the mark is registered. Even if the applicant did not organise the evidence relating it to the specific goods and services covered by the mark, it is possible to consider the mark has been put into genuine use for most of them. The annual workbooks and the list of stores in the website of the applicant (annexes 16, 18 and 22) show that the place of use is at least Germany, Italy, Austria, France and Spain. This can be inferred from the language of the documents and the addresses of the numerous stores in the different countries of the European Union. The VF Corporation Annual Reports (annexe 1) support the affidavit and provide sufficient information concerning commercial volume, length of period and frequency of use. Contrarily to what mentioned by the EUTM proprietor, invoices are not mandatory and all type of evidence can be used. Evidence of use may be of an indirect/circumstantial nature, such as evidence about the opening of new stores, pictures of advertising campaigns, sponsorship of events and use of the brand by celebrities. Such indirect evidence can play a decisive role in the overall assessment of the evidence submitted. Its probative value has to be carefully assessed. For instance, the judgment of 08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq. found that catalogues in themselves could — under certain circumstances — be conclusive evidence of sufficient extent of use. Even if part of the evidence is not relevant (the one referring to the USA), and even if there are no surveys, no evidence about the investments done in advertising the trade mark within the European Union, no invoices, etc. the evidence as a whole is sufficient to understand without making suppositions that the trade mark has been put into genuine use. The goods marked are selected, presented and offered to the public through many different stores within the European Union. Consequently, the evidence of use in its entirety sufficiently indicates the time, place, extent and nature of use of the applicant’s trade mark for theses goods and services for which it is registered and on which the application is based.

As already mentioned, the evidence shows that the mark has been used as registered at least for the following good and services:

Class 25: Clothing, namely, men's, women's, and children's t-shirts, shirts, tops, sweatshirts, pants, shorts, trousers, anoraks, jackets, wind-resistant jackets, sweaters; outerwear, namely, ski wear, rain wear; footwear, namely, athletic shoes, sneakers, trail running shoes, climbing shoes, hiking shoes; headgear, namely, caps, headbands.

Class 35: Retail store; all including clothing, sportswear, footwear, headgear.

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.

The application is based on more than one earlier trade mark. As above mentioned, the Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s EUTM registration No 5 002 746.

1. The goods and services

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 and services on which the application is based are in particular the following:

Class 25: Clothing, namely, men's, women's, and children's t-shirts, shirts, tops, sweatshirts, pants, shorts, trousers, anoraks, jackets, wind-resistant jackets, sweaters; outerwear, namely, ski wear, rain wear; footwear, namely, athletic shoes, sneakers, trail running shoes, climbing shoes, hiking shoes; headgear, namely, caps, headbands.

Class 35: Retail store; all including clothing, sportswear, footwear, headgear.

The contested goods and services are the following:

Class 25: Footwear; Headgear; Clothing.

Class 35: Marketing of ready-made clothing, footwear and clothing; Retail services connected with the sale of clothing and clothing accessories; Retail store services in the field of clothing; Mail order retail services connected with clothing accessories; Wholesale services in relation to footwear; Wholesale services in relation to headgear; Wholesale services in relation to clothing; Wholesale services in relation to fabrics; Retail services in relation to fabrics; Retail services in relation to clothing; Retail services in relation to footwear; Retail services in relation to headgear.

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.

Contested goods in Class 25

The contested footwear; headgear; clothing include, as broader categories, the applicant’s specific items of footwear; headgear; clothing for which the mark is genuinely used. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the applicant’s goods.

Contested services in Class 35

The contested retail services connected with the sale of clothing and clothing accessories; retail store services in the field of clothing; mail order retail services connected with clothing accessories; retail services in relation to clothing; retail services in relation to footwear; retail services in relation to headgear are retail services related to clothing, footwear, headgear and clothing accessories. The applicant has shown use for retail store services; all including clothing, sportswear, footwear, headgear. Therefore, the services are identical.

The contested retail services in relation to fabrics are similar to the applicant’s retail services in relation to clothing, even if clothing are finished articles while fabrics are semi-finished articles destined to a different public and are in fact different goods. In fact, retail services relating to specific goods are considered to be similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use.

The contested wholesale services in relation to footwear; wholesale services in relation to headgear; wholesale services in relation to clothing; wholesale services in relation to fabrics are different types of wholesales services. They are similar to the applicant’s retail services in relation to clothing, retail services in relation to footwear; retail services in relation to headgear because they are also services related to the sale of the same goods although not directed to the final consumer but to intermediaries.

The contested marketing of ready-made clothing, footwear and clothing are also found similar at least to a low degree to the applicant’s retail services in relation to clothing, retail services in relation to footwear; retail services in relation to headgear. The activity of retail in goods as a service for which protection of an EUTM can be obtained does not consist of the mere act of selling the goods, but in the services rendered around the actual sale of the goods, which are defined in the explanatory note to Class 35 of the Nice Classification by the terms ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’. Moreover, the Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (judgment of 07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34). Marketing services consist of 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. In order to fulfil this target, many different means and products might be used. Although these services are usually 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. they are also more and more provided by the companies themselves when offering their goods for sale. In fact, nowadays, the border line between producing the goods, retailing them and creating strategies of sales is becoming more and more blurred thanks to new technologies that allow manufacturers to directly offer their goods for sale and making their own promotions campaigns.

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 various are directed at the public at large. The degree of attention is average.

3. The signs

	THE SOUTH FACE
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any 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, by analogy). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid. In the present case, the Cancellation Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public because both marks are in English.

The earlier mark is a figurative mark displaying THE NORTH FACE vertically and a logo all in white over a red square. THE NORTH FACE would be understood as to the coldest wall of a mountainside, exposed towards the north. Since they have any relation to the relevant goods and services, they are distinctive.

The word elements and the logo are co-dominant in terms of size and distinctive. Although when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The contested mark is a word mark including THE SOUTH FACE and it will be understood as the milder face of a mountainside exposed towards the south. Since they have any relation to the relevant goods and services, they are distinctive.

Visually and phonetically, the signs coincide in ‘THE’ and ‘FACE’ and have the same structure. However, they differ respectively in ‘NORTH/SOUTH’ and visually in the figurative characteristics of the earlier trade mark. Overall, phonetically since the differences are in the middle of the mark, they are similar to an average degree while visually, considering the importance of the word elements compared to logos, they are also similar to an average degree.

Conceptually, the public in the relevant territory will perceive the earlier mark as previously described. As the signs will be associated with a similar meaning, namely they both make reference to faces of a mountain, although the faces are opposite in their orientation, the signs are conceptually similar at least to an average degree.

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 recognition among the relevant public in the European Union for ‘clothing’ which once again is not covered as such by the trade mark and is not protected as a broad category therefore enhanced distinctiveness will be considered for clothing, namely, men's, women's, and children's t-shirts, shirts, tops, sweatshirts, pants, shorts, trousers, anoraks, jackets, wind-resistant jackets, sweaters; outerwear, namely, ski wear, rain wear for which it is registered and evidence of use was brought. 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).

The enhanced distinctiveness of the earlier trade mark should exist

1. at the time of filing of the contested EUTM application (namely on 27/05/2014) and

2. at the time of the present decision.

Having examined the material listed above, the Cancellation Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through use on the market. The first step is to examine the inherent distinctive character of the mark.

The mark is a figurative mark composed of words and logo in white over a red square and it has an average degree of inherent distinctiveness on its application date (namely 21/03/2006) for the goods in question. The word elements per se also have an inherent distinctive character as their semantic meanings do not have a direct relation with the goods.

The second step is to check whether the earlier mark has acquired enhanced distinctiveness at the time of filing of the contested EUTM application as a consequence of the use that the applicant has made of it. Enhanced distinctiveness requires recognition of the mark by the relevant public.

The Court has given some guidance in respect of the evaluation of distinctiveness acquired through use of the earlier mark and provided a non-exhaustive list of factors:

In making that assessment, account should be taken, in particular, of

• the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered;

• the market share held by the mark;

• how intensive, geographically widespread and long-standing use of the mark has been;

• the amount invested by the undertaking in promoting the mark;

• the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking;

• and statements from chambers of commerce and industry or other trade and professional associations. (Judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

The evidence of enhanced distinctiveness acquired through use must refer to both (i) the relevant geographical area and (ii) the relevant goods and services. The opponent may claim enhanced distinctive character of the earlier mark for only part of the registered goods and services. According to the evidence submitted, the Office must establish precisely for which goods and services distinctiveness has been acquired. The nature, factors, evidence and assessment of enhanced distinctiveness are the same as for reputation. However, a finding of reputation requires that a certain threshold of recognition be met whilst, as set out above, the threshold for a finding of enhanced distinctiveness may be lower.

In the present case, the mark has acquired since 2006 a high degree of distinctive character within the European Union where it has been intensively used in several Member States as shown by the press clipping. The North Face can be counted among the top 10 brands of outdoor clothing in the world (annex 14 of the first submission of evidence). Since 2006, the mark has been intensively and broadly used within the European Union (see annex 1 annual reports of both submissions), advertised (see annex 6 first submission, annex 20 second submission), sponsored big events (see annexes 13, 14 second submission) and exposed in exhibits (see annex 15 second submission). Therefore there is enhanced distinctiveness at least for the specific articles of clothing for which use has been acknowledged.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are identical or similar to different degrees. They are directed at general public whose degree of attention is average. The earlier mark enjoys an enhanced degree of distinctiveness for specific clothing articles. The signs have their first and last words ‘THE’ and ‘FACE’ in common and have the same grammatical structure. The signs have been found visually, aurally and conceptually similar to an average degree. One is the opposite of the other in terms of meaning but they both likely refer to the concept of FACE of a mountain. The figurative aspects in the earlier mark are of lesser importance considering that the attention generally focuses on word elements.

‘Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion’ (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). As previously mentioned the visual differences between the signs caused by the additional figurative characteristics of the earlier sign are not counterbalancing the similarities between the word elements of the signs. In addition, the earlier sign enjoys an enhanced degree of distinctiveness for specific clothing articles. Therefore, there is a risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, and this constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17). This applies to services found similar to a low degree because of the similarities between trade marks and the risk of association.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration No 5 002 746. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

As the earlier right No 5 002 746 leads to the success of the application and the cancellation of the contested trade mark for all the goods and services against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the application is fully successful on the grounds of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the application, namely Article 8(5) EUTMR in conjunction with Article 60(1)(a) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Pierluigi M. VILLANI

Jessica LEWIS

Carmen SÁNCHEZ PALOMARES

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Article 109(8) EUTMR, such a request must be filed within one month of the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.