OPPOSITION No B 2 472 580

GUESS? IP HOLDER L.P., 1444 South Alameda Street, Los Angeles, California 90021, United States (opponent), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative)

a g a i n s t

Wun Ton Li Activity Design Co., Ltd., 2F. No. 173 Sec. 3, Ho Pin E. Rd., Wan Hua District, Taipei, Taiwan (applicant), represented by Wolfgang Hellmich, Lortzingstr. 9/2. Stock, 81241 München, Germany (professional representative).

On 20/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 472 580 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 271 309, namely against all the goods and services in Classes 18, 25 and 35. The opposition is based on European Union trade mark registrations No 135 376, No 135 640 and No 858 886 as well as on a non-registered trade mark (for all Member States of the European Union and for the European Union itself). The opponent invoked Article 8(1)(b), 8(5) and 8(4) EUTMR.

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 three earlier figurative trade marks, all based on the form of an inverted triangle. The Opposition Division finds it appropriate to examine the opposition in relation to all the opponent’s trade marks at the same time.

1. The goods and services

The goods on which the opposition is based are, inter alia, the following:

Class 18 (of earlier trade marks No 135 376 (earlier mark 1)) and No 135 640 (earlier mark 2)): Goods made wholly or principally of leather, leather imitations, hides or animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harnesses and saddlery; wallets, attache cases, briefcases and suitcases; vanity cases; purses; luggage; handbags.

Class 25 (of all the earlier trade marks): Articles of clothing; footwear; headgear; jeans, shirts, jackets, vests, pants, sweaters, jumpsuits, shorts, hats, overalls, caps, dresses, blouses, sweatshirts, t-shirts, sweatpants, neckties, brassieres, camisoles, bathing suits, sports coats, suits, robes, pyjamas, belts, briefs, coats, leotards, hosiery, gloves, pantyhose, scarves, ponchos, slips, sun visors, tights, outerwear, underwear, skirts, headbands for wear incorporating peaks, tights and footwear, children’s clothing; trousers, shoes, socks, suspenders, bibs, booties, coverups, jumpers; infants’ and babies clothing; lingerie, swimwear.

The contested goods and services are the following:

Class 18: Wallets; purse; umbrella; walking cane; clothing for pets; backpack for pets; leather tag; infant carrying bag; backpack; suitcase; hand bag; sports bag; beach bag; luggage; imitation leather; card case.

Class 25: Shirts; T-shirts; clothing; skirts; pants; raincoats; boots; shoes; bandanas; ties; hats; socks; gloves for clothing; belts; coats; aprons; sleep mask.

Class 35: Retail service for clothing; retail service for glasses; retail service for clothing garments; retail service for hand bags; retail service for shoes; retail service for jewelry; retail service for bags, shoes, hats and clothings on the internet; import and export agency; business consultation service; marketing service; business assistance service; retail stores for bags, shoes, hats and clothing; auction service; Providing commercial information.

Some of the contested goods and services are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier marks.

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 assumed to be identical are directed at the public at large and the professional public. The degree of attention will vary between average and higher than average depending on the price of the goods and the importance of the services.

3. The signs

1) 2) 3)
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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

Each earlier trade mark comprises an inverted triangle, black in marks 1) and 2) and red in mark 3). Earlier trade marks 1) and 2) include an additional question mark device in the bottom corner. The dot of the question mark is replaced by a small triangle. Earlier trade mark 2) also includes the letters ‘GUESS’ in upper case.

Earlier trade mark 3) consists of only the inverted triangle in red.

The contested sign is in the shape of an inverted triangle with rounded points. Little circles in the three points make it resemble a label. Within the triangle is the word element ‘Hater’ in lettering that resembles handwriting.

Earlier trade marks 1) and 2) are composed of a distinctive punctuation mark and a non-distinctive figurative element (triangle) as well as a distinctive verbal element in mark 2).

The figurative elements consist of only a simple geometrical shape, namely a triangle, so they will be considered commonplace and banal. Therefore, the verbal elements are more distinctive than the figurative elements.

In earlier trade mark 3), which consists of a plain inverted red triangle, the shape is considered a non-distinctive element, as it is commonplace and banal. The colour is considered the only distinctive element of this purely figurative trade mark.

The contested sign is composed of a distinctive verbal element and a non-distinctive figurative element (triangle).

None of the trade marks has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the inverted triangle shape, which has been considered the non-distinctive element of all three earlier trade marks. However, the contested sign differs from all the earlier marks in the graphical details of the triangle and the word elements. The differentiating graphical details of the contested sign are the little circles in the corners, the rounded points and the outline of the triangle, which give it as a whole the appearance of a (metallic) label.

In addition, earlier trade mark 1) differs in the question mark, earlier trade mark 2) differs in the question mark and the word element ‘GUESS’, and earlier trade mark 3) differs in the red colour.

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).

As the signs coincide only in a non-distinctive element, namely the shape of the triangle, but differ in all the other aspects described above, to which more attention will be paid, the signs are dissimilar.

Aurally, in earlier trade mark 1) the question mark device will not be pronounced. In earlier trade mark 2), the public will pronounce only the word element ‘Guess’. In the contested trade mark, the word element ‘Hater’ will be pronounced.

Irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation differs in all pronounced elements of the trade marks (‘Guess’ versus ‘Hater’), which are the elements to which the public will pay more attention, as they are more distinctive.

As the contested sign and earlier trade mark 2) do not coincide aurally in any element, it is concluded that the signs are aurally dissimilar.

Purely figurative signs are not subject to a phonetic assessment. As earlier trade marks 1) and 3) are purely figurative, it is not possible to compare the signs aurally.

Even if a part of the public might try to describe the figurative element of earlier mark 3) as ‘red inverted triangle’ or the equivalent in any other language, irrespective of the different pronunciation rules in the different parts of the relevant territory, the pronunciation would differ in the description of the device and the pronounced element ‘Hater’ of the contested trade mark. In this case, the result would be the same as for both of the other earlier trade marks. The signs would not aurally coincide in any element and would be aurally dissimilar.

Conceptually, earlier trade marks 1) and 2) and the contested trade mark have no meaning as a whole for the public in the relevant territory.

All three earlier trade marks are in the shape of an inverted triangle and the trade marks will be associated with this concept. Earlier trade marks 1) and 2) will also be associated with the concept of a question mark.

Both word elements, ‘Guess’ in earlier mark 2) and ‘Hater’ in the contested trade mark, will be understood by the English-speaking part of the public: ‘Guess’ as ‘the act of guessing’ (see Collinsdictionary.com) and ‘Hater’ with the meaning of ‘someone who hates a specified person or thing’ (see Collinsdictionary.com).

A part of the public will recognise the figurative element of the contested trade mark as an inverted triangle and the remaining part of the public will recognise it as a (metallic) label.

For the part of the public that recognises the inverted triangles and associates them with the concept thereof, the situation is as follows:

The trade marks coincide in the concept of the triangle for the relevant public. However, for the English-speaking public they differ in the additional concepts: the meaning of the word element ‘Hater’ of the contested trade mark; the concept of the question mark in earlier trade mark 1); the concepts of the question mark and the word element ‘GUESS’ in earlier trade mark 2); and the concept of the colour in earlier trade mark 3).

That means they coincide only in a non-distinctive element but differ in distinctive ones in all combinations, so that for the English-speaking part of the public they are conceptually dissimilar.

For the non-English-speaking part of the public, the contested sign differs from earlier trade marks 1) and 2) in the concept of the question mark and from earlier trade mark 3) in the concept of the colour.

In this case as well, the trade marks coincide in the non-distinctive element and differ in the distinctive elements, so they are conceptually dissimilar.

If the public sees in the contested trade mark the concept of a label and it coincides with any of the earlier marks in any element, they are also conceptually dissimilar.

As, for the English-speaking public, the contested trade mark has a non-distinctive concept in common with the earlier marks and they all convey additional concepts, the marks will be seen as conceptually dissimilar.

For the non-English-speaking public, the contested trade mark conveys no concept apart from the non-distinctive element that it has in common with the earlier marks, so the marks are conceptually dissimilar.

If the contested sign’s figurative element is seen not as a triangle but as a label, it has no element at all in common with the earlier marks, so they marks are conceptually dissimilar.

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

4. Distinctiveness of the earlier marks

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

The opponent claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence in order to prove such a claim.

For the sake of completeness, it should be mentioned that the opponent’s request, made on 30/01/2015, for a two-month extension of the deadline to prove enhanced distinctiveness could not be taken into consideration, as the proof of enhanced distinctiveness has to be filed within the deadline to prove further facts and the grounds. This deadline, set for 06/06/2015, is not extendable.

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

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:2000:205 § 22 et seq.)

Visually, the signs are dissimilar. Aurally, either they are dissimilar or it is not possible to compare the signs.

For the English-speaking part of the public as well as for the part of the public that recognises the figurative element of the contested trade mark as a label, the signs are conceptually dissimilar due to the conceptual differences. For the non-English-speaking public, the signs are conceptually dissimilar because they coincide only in the non-distinctive shape of the triangle.

The goods and services have been assumed to be identical.

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).

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). Therefore, the considerable visual differences between the signs caused by the additional different verbal and figurative elements are particularly relevant when assessing the likelihood of confusion between them. Therefore, the visual difference caused by the stylised word element ‘Hater’ of the contested trade mark will ensure that the relevant public will not confuse the trade marks. This applies even more to the English-speaking public, as the meanings of the words further differentiate the marks conceptually.

Even if the goods and services were identical, this could not counterbalance the overwhelming differences between the signs.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same component of a triangle, constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same figurative component as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was analysed by the General Court in its judgment of 23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

One condition is that the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of trade marks using a ‘triangle shape’, and moreover that it uses such a family in the same fields as those covered by the contested trade mark.

The argument that there is a ‘family of marks’ must be claimed before the expiry of the time limit set for substantiating the opposition. The opponent must prove within the same time limit that it has used the marks forming the alleged family in the marketplace to such an extent that the relevant public has become familiar with this family of marks as designating the goods and/or services of a particular undertaking.

The time limit for substantiating the opposition was the 06/06/2015; as that day fell on a weekend, the effective deadline was 08/06/2015. By that date, the opponent had neither claimed the ground of a family of marks nor filed any proof of the existence of a series.

The evidence that the opponent filed to prove the use of the trade marks at the request of the applicant cannot be taken into account, as these documents were filed after the aforementioned deadline.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will examine the opposition at the same time in relation to all the earlier registered European Union trade marks, for which the opponent claimed repute in the EU and all Member States of the European Union.

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

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

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

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

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 06/02/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 06/06/2015; as that day fell on a weekend, the effective deadline was 08/06/2015.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent also based the opposition on the unregistered trade mark for all Member States of the European Union and the European Union itself in relation to clothing, fashion accessories, watches, glasses.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

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

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

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

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

Non-registered use-based trade marks exist in a number of the Member States and are signs that indicate the commercial origin of a product or service. Therefore, they are signs that function as a trade mark. The rules and conditions governing acquisition of rights under the relevant national law vary from simple use to use having acquired a reputation. Neither is their scope of protection uniform, although it is generally quite similar to the scope of protection under the provisions in the EUTMR concerning registered trade marks.

Article 8(4) EUTMR reflects the existence of such rights in Member States and grants the proprietors of non-registered marks the possibility of preventing the registration of an EUTM application where they would succeed in preventing use of that EUTM application under the relevant national law, by showing that the conditions set by the national law for prohibiting use of the later EUTM are satisfied and the other conditions of Article 8(4) EUTMR are met. As non-registered trade marks are not protected at European Union level, a ‘European Union non-registered trade mark’ is not an eligible basis for opposition.

The opponent claimed to use the non-registered trade mark in Member States of the European Union.

The notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade or any information relating to the existence of the non-registered trade marks or the scope of protection in the Member States in question.

On 06/02/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 06/06/2015; as that day fell on a weekend, the effective deadline was 08/06/2015.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sigrid DICKMANNS

Claudia MARTINI

Richard BIANCHI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal 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 Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from 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.