OPPOSITION No B 2 433 194

TAO Technical-Wear GmbH, Bauhofstraße 10a, 90571 Schwaig b. Nürnberg, Germany (opponent), represented by Intellectual Property IP-Götz Patent- und Rechtsanwälte, Königstr. 70 Am Literaturhaus, 90402 Nürnberg, Germany (professional representative)

a g a i n s t

Taoraywang fashions ltd, The Old Barn Myers Grove Lane, Sheffield S6 5JH, United Kingdom (applicant), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative).

On 20/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 433 194 is upheld for all the contested goods and services, namely:

Class 25: Clothing; footwear; headgear.

Class 35: Retail services connected with the sale of clothing and clothing accessories.

2. European Union trade mark application No 13 130 323 is rejected for all the contested goods and services. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 130 323 for the figurative mark , namely against all the goods and services in Classes 25 and 35. The opposition is based on German trade mark registrations No 39 511 539 for the word mark ‘TAO’, No 30 362 876 for the figurative mark , No 30 660 110 for the figurative mark and No 30 633 994 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, 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 opponent cites as justification for its opposition, 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.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based. However, for reasons of procedural economy, the Opposition Division will first examine the evidence in relation to the opponent’s German trade mark registration No 39 511 539 for the word mark ‘TAO’ and only if necessary proceed to further examination of the remaining figurative marks.

The contested application was published on 12/08/2014. The opponent was therefore required to prove that the word trade mark on which the opposition is based was put to genuine use in Germany from 12/08/2009 to 11/08/2014 inclusive.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 25: Functionally adapted clothing for sports and leisure time, including socks, specific for use in triathlon and other ambitious endurance sports.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing of the opposition), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 14/11/2018, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing of the opposition), the Office gave the opponent until 19/01/2019, later extended upon the opponent’s request to 19/03/2019, to submit evidence of use of the earlier trade mark. On 19/03/2019, within the time limit, the opponent submitted evidence of use.

The opponent indicated that its submissions were ‘confidential’, thus expressing a special interest in keeping these documents confidential vis-à-vis third parties. In accordance with Article 114(4) EUTMR, the special interest must be sufficiently justified. In the present case, the special interest has not been sufficiently justified or elaborated upon. Therefore, the Opposition Division does not consider these submissions confidential. In any event, the Opposition Division will describe the evidence in general terms, without disclosing commercially potentially sensitive information.

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

• Four catalogues in German dated 2012/2013, containing examples of the opponent’s ‘TAO’ sports- and leisure clothing products together with their prices (B1-B8). On the top of many of the pages, the following sign is affixed , and the following signs are also used affixed on clothing items as follows: (for example on page 45 of catalogue B1 and on page 41 of catalogue B5), (for example on page 51 of catalogue B3) and (for example on page 25 of catalogue B5).

• Sets of invoices divided per items which have been cross-referenced in the catalogues (such as ‘Artikel 63615 Sport- und Freizeithose Primeval Pants’, ‘Artikel Sport- und Freizeit Poloshirt W´S Ambition, Art.-Nr. 63602’, ‘Sport- und Freizeitjacke Skyrocket, Art.-Nr. 85005’, ‘Sportsocken INTERMEDIATES, Art.-Nr. 89003’, ‘Laufhose W‘s Windtech Tights, Art.-Nr. 80017’, ‘Laufshirt TELERAN SHIRTY, Art.-Nr. 81015’) dated 2012/2013 and addressed to various customers, among which big retailers in different cities of Germany, displaying both the word version and the following ‘TAO’ sign on the top left of each invoice, next to the name of the former company name of the opponent: . The invoices refer to various items of clothing (such as pants, shorts, t-shirts, polo-shirts, jackets, waistcoats, underpants, undershirts and socks) but also hats, sunbreakers and clothing accessories, such as ‘clip bottle accessories’ and ‘small pocket accessories’ (B12, B14, B16, B18, B20, B22).

• Screenshots (taken using the Wayback Machine) of websites of various online retailers where the opponent’s items of clothing (such as pants, shorts, t-shirts, polo-shirts, jackets, waistcoats, underpants, undershirts, tank tops and socks), hats and sunbreakers were offered for sale within the relevant period (B10-11, B13, B17, B23). Both, the word sign ‘Tao’ or the following signs and are displayed. One Facebook screenshot belongs to an ice-skating team page, dated 11/2013, in which the team members are wearing t-shirts with the following prominent sign . One website screenshot is dated 03/2019, but it states (in German, and translated by the opponent) that the specific item of clothing (shorts) with the sign affixed on it is offered for sale on that website since 05/2013 (B23).

• The opponent’s website at www.tao.info, with screenshots taken within the relevant period (for example 03/2013 at B9) and the opponent’s Facebook page, with items of ‘TAO’ clothing posted within the relevant timeframe (for example, 12/2013 and 02/2014, 03/2014, 05/2014).

• Affidavit of the opponent’s product manager dated 06/2016 and submitted in German with an English translation (B24). It explains that ‘TAO’ products have been sold consistently and predominantly on the German market since the mid-nineties. It further explains that distribution in Germany in the years 2012/2013 already was made, among others, by direct distribution on the Internet, by third Internet traders and by local retail places in several hundred local sales places, as for example by big department store chains. On the German market, the total turnover of sportswear and casual wear under the trademark ‘TAO’, including socks for endurance sports, were substantial in the years 2013/2014. It is further stated that the four catalogues provided as Annexes B1-B8 have been printed in several copies, the vast majority of which was circulated on the German market to retailers and customers. Moreover, it is claimed that all products contained in the catalogues are tagged in sewn-in labels with the trademark ‘TAO’. In case of outerwear, the tagging is additionally made by applying the below logo in a contrasting colour, on the exterior of the product, at a clearly visible place: . On t-shirts, coats, the tagging is made in the breast area and on trousers in the upper leg area as shown in the catalogues.

As far as the affidavit is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) 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 means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been 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 perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

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

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

Place of use

The evidence, in particular the catalogues, the invoices, the websites’ screenshots show that the place of use is ‘Germany’. This can be inferred from the language of the documents (‘German’), the currency mentioned (‘Euros’) and some addresses in ‘Germany’. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence, such as for example the catalogues and the invoices, is dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because it refers to the use of the trade mark within the period, such as for example the retailer’s website screenshot in Annex B23.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices filed as Annexes B12, 14, 16, 18, 20 and 22, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. They show that a considerable number of jackets, pants, shorts, t-shirts, polo shirts, socks, waistcoats and underwear (inter alia) were sold by the opponent in Germany over a sufficient period of time. In addition to the catalogues and other material, the invoices essentially support the information provided by the opponent.

Use of the mark need not be quantitatively significant for it to be deemed genuine.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the trade mark is used as the word mark ‘TAO’ and in other forms such as , and .

The Opposition Division is of the opinion that this use is considered as use of the mark ‘TAO’.

First of all, it should be noted that the terms ‘technical wear’ in some of the signs as used are non-distinctive with regard to the goods in question.

These English terms will be easily understood by the relevant public to refer to ‘technical’ clothing, due to their closeness to their German correspondents (for example technisch). This is also because the use of English-language terms to describe or advertise goods is not uncommon in the relevant market segment (sports clothing). The relevant public, for example, is familiar with the English term ‘sportswear’ (information extracted from Duden on 18/12/2019 at https://www.duden.de/suchen/dudenonline/sportswear), which stands for sporty daily wear, casual wear). ‘Technical wear’ here will be perceived by the relevant public not as an indication of origin but as a type of clothing, which has other technical and functional properties in addition to the mere clothing function.

The difference in the figurative representation of the signs as used does not affect the distinctive character of the mark, because the additional figurative elements and aspects are purely decorative. The most distinctive and dominant element is in any case the letter sequence ‘TAO’.

Therefore, the variants of the mark as used by the opponent do not alter the distinctive character of the mark in the form in which it was registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 39 511 539.

1. The goods and services

The goods on which the opposition is based and for which use has been proved are the following:

Class 25: Functionally adapted clothing for sports and leisure time, including socks, specific for use in triathlon and other ambitious endurance sports.

The contested goods and services are the following:

Class 25: Clothing; footwear; headgear.

Class 35: Retail services connected with the sale of clothing and clothing accessories.

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 ‘including’, used in the opponent’s list of goods, 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 25

The contested clothing include, as a broader category, the opponent’s functionally adapted clothing for sports and leisure time, including socks, specific for use in triathlon and other ambitious endurance sports in the same class. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested footwear; headgear are similar to the opponent’s functionally adapted clothing for sports and leisure time, including socks, specific for use in triathlon and other ambitious endurance sports in the same class, as they have the same purpose, since they are used to cover and protect various parts of the human body against the elements. They are also articles of fashion and are often found in the same retail outlets, targeting the same relevant public. Consumers, when seeking to purchase clothes, will expect to find footwear and headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those 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.

Therefore, the contested retail services connected with the sale of clothing and clothing accessories are similar to a low degree to the opponent’s functionally adapted clothing for sports and leisure time, including socks, specific for use in triathlon and other ambitious endurance sports in Class 25.

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, including to a low degree, are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

TAO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

The opponent claims that the common element ‘TAO’ will be perceived as a given name quite uncommon in the European Union, reminding vaguely of an Asian philosophy. The applicant claims as well that ‘TAO’ in the earlier mark will be perceived as a first name. According to the German dictionary (information extracted from Duden on 18/12/2019 at https://www.duden.de/suchen/dudenonline/tao) it refers to all underlying, all-pervasive principle in Taoism. In all these scenarios, this term is considered distinctive to a normal degree, since its meaning is not directly related to the relevant goods and services in a clear way that could impair its distinctiveness.

The applicant claims that there is no reason to assume that the relevant consumer would dissect the contested sign in order to extract the letters ‘TAO’ from the element ‘TAORAY’. On the contrary, the Opposition Division notes that the graphic representation of the contested sign highlights the dissection in this particular case (‘TAO’ in black and ‘RAY’ in white letters). The opponent argues that the terms ‘RAY’ and ‘WANG’ will be perceived as surnames and provides Wikipedia extracts in support of its allegations. It cannot be however excluded that for part of the public these terms are meaningless. In any event, in both scenarios, these elements are normally distinctive. The stylisation of the contested sign does not prevent consumers from perceiving the letters as such, as explained above. Furthermore, as consumers are accustomed to the stylisation of verbal elements in trade marks, they will perceive such stylisation of the contested sign as merely a decorative depiction of the word elements.

The contested sign has no element that could be considered more dominant (more eye-catching) than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the only or first and distinctive element ‘TAO’ (and its sound). However, they differ in the additional verbal elements of the contested sign, namely the distinctive elements ‘RAY WANG’ (and their sound).

Therefore, the signs are visually and aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Insofar as both signs begin with the meaningful and distinctive word ‘TAO’, the signs are conceptually similar to an average degree for that part of the public that will perceive the additional words of the contested sign ‘RAY WANG’ as surnames, and, for those who will see these additional words as meaningless, the signs are conceptually highly 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has 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 mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods and services have been found to be identical or similar (including to a low degree) to the opponent’s goods. They target the general public displaying an average degree of attention. The signs have been found to be visually and aurally similar to a below average degree and conceptually to an average degree - for those who see the additional verbal elements of the contested sign as surnames - or highly similar - for those who see the additional verbal elements of the contested sign as meaningless. The earlier mark enjoys a normal degree of distinctiveness.

The additional verbal elements ‘RAY’ and ‘WANG’ to the contested sign are not sufficient to dispel a likelihood of confusion or, at least, a likelihood of association between the signs. The fact remains that the contested sign fully incorporates, in its distinctive and, most importantly, in its initial part, the earlier mark ‘TAO’. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Moreover, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same undertaking or economically linked undertakings.

In the present case, it cannot be excluded that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is common today for companies to make small variations of their brands, for example, by altering their font or color, or by adding terms or elements, or to create a modernized version of the brand. In the present case it is very likely that consumers perceive the contested sign as a new version or a brand variation of the opponent’s mark, denoting a product line, given the fact that both signs consist or begin with the same distinctive element ‘TAO’.

Considering all the above, there is a likelihood of confusion (association) on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 39 511 539. It follows that the contested trade mark must be rejected for all the contested goods and services.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the contested goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268), nor the evidence of use in relation to that earlier rights.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Manuela RUSEVA

Valeria ANCHINI

Sofía SACRISTÁN MARTÍNEZ

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.