OPPOSITION No B 2 519 463

OpCapita Red Bidco S.à.r.l., 5, rue Guillaume Kroll, 1882 Luxembourg, Luxembourg (opponent), represented by Friese Goeden Patentanwälte PartGmbB, Widenmayerstr. 49, 80538 München, Germany (professional representative)

a g a i n s t

Melfort Capital Limited, 171 Main Street, Road Town, Tortola, 1110, British Virgin Islands (applicant), represented by Hamlins LLP, Roxburghe House, 273-287 Regent Street, London W1B 2AD, United Kingdom (professional representative).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 519 463 is partially upheld, namely for the following contested goods:

Class 18: Bags; handbags; rucksacks; purses.

Class 25: Clothing; footwear; headgear; swimwear; wetsuits for water-skiing.

2. European Union trade mark application No 13 690 623 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 690 623, namely against all the goods in Classes 18 and 25. The opposition is based on German trade mark registration No 39 656 162. 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), if the applicant so requests, the opponent shall 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 shall be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

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.

The contested application was published on 11/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 11/02/2010 to 10/02/2015 inclusive.

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

Class 18: Leather and imitation leather, goods made of these materials included in this class; animal skins and furs; trunks and suitcases; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear; belts.

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

On 09/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 14/02/2016 to submit evidence of use of the earlier trade mark. Since the time limit expired on a non-business day (a Sunday), the evidence of use submitted by the opponent on 15/02/2016 (the first business day after the expiry of the time limit) is considered to have been submitted within the time limit.

The evidence to be taken into account is the following:

• Printouts in German from www2.knd.com, containing information on the company ‘NKD’, and from de.wikipedia.org, providing information on the company ‘NKD Deutschland GmbH’, said to be ‘one of the biggest clothing retailers in Germany and Austria’. The Wikipedia extracts also state that in November 2013 the financial investor ‘OpCapita’ took over the ‘NKD’ head office in Bindlach, Germany, and the ‘NKD’ stores. None of the printouts makes reference to the earlier sign.

• Excerpts consisting of pages from various catalogues in German, indicated by the opponent to date from between 2012 and 2015. Those dating from 2015 fall outside the relevant timeframe, as the earliest one of them dates from 26/02/2015. The remaining excerpts (13 pages altogether) date from between 2012 and 2014. Some of these excerpts also show the exact date of the catalogue, such as 26/11/2012 or 10/09/2012. Others make reference to a specific day, such as 28/08/2014 or 06/11/2014. The excerpts include images of various items of clothing and of people modelling items of clothing. The catalogues include images of shirts, T-shirts, socks, jackets, sweatshirts, shorts, boxer shorts, pyjamas, polo shirts and jeans, as well as a single image of a bag and a hat. For each item of clothing the price is specified. On most of the pages the following signs are displayed above and below the images of clothing: , , and the following sign appear on a sweatshirt.

• Twelve images of items of packaging for the following goods: men’s vests, men’s briefs, unisex lined trousers, unisex lined tops, men’s pyjamas and men’s boxer shorts. The main text referring to the goods in question (including their fibre content) is in German (main language), followed by an English translation. However, there are also indications in Italian, Croatian, Polish, Slovak, Slovene and French. The items of packaging, furthermore, depict the signs and . The goods are marked as ‘produced for NKD’, Bindlach, Germany. On each of the items of packaging there is an indication of the date (they are dated between 20/12/2012 and 03/11/2014), in the form of a print date or the date of the file containing the packaging material.

• Eight purchase orders in German and English, dated between 09/12/2010 and 27/06/2014. The orders were placed by ‘NKD Vertriebs GmbH’/’NKD Services GmbH’ with companies in China and Bangladesh. They are either signed by the parties or accompanied by additional excerpts from what appear to be the online order systems of ‘NKD’. The documents are, in essence, orders for various items of clothing, such as polo shirts, casual shirts and rollneck shirts. The quantities vary between 3 680 and 28 420 items per purchase order. On some of the documents there is an indication that the goods are to be marked with ‘NKD own label’, namely ‘Reward Fashion’. Furthermore, some of the purchase orders contain information about the price at which the goods were bought from the manufacturing company and the price at which they were sold. For instance, in a purchase order dated 08/07/2013 for 14 140 casual shirts, the buying price (at which the goods were ordered from Bangladesh) of each item is shown as USD 4.65 and the ‘NKD Sales Price’ is shown as EUR 12.99. The latter is also indicated on the price tag (with a barcode) of the shirt in a photograph (the items listed below) that accompanies the purchase order. Furthermore, some of the order forms contain a depiction of the product ordered within the order form itself. In addition to these eight purchase orders, there are two in which no indication of the quantity of products ordered is given. Eight more purchase orders fall outside the relevant timeframe.

• Photographs of various items of clothing (corresponding to the orders detailed above), bearing labels (placed on the item of clothing itself and/or on a separate paper tag) and price tags with prices in several currencies (including euros) along with a barcode. The photographs show the type of product ordered. The labels and tags on the clothing bear the following signs: , , , . Some of the price tags also bear an indication of the year (e.g. 2012). Furthermore, as explained by the opponent and shown in some of the photographs, the order number is attached to the item of clothing, demonstrating that photograph and purchase order relate to the same product.

• Sales figures: two separate documents drafted by the opponent and said to provide sales figures (or quotas) for certain products for the territory of Germany. One of the documents gives information for the fourth quarter of 2011 and refers to the item numbers and the order numbers of the products. Two of the order numbers correspond to the numbers of the abovementioned purchase orders for shirts. However, no actual sales or turnover figures are provided. The second document gives, as explained by the opponent, sales figures for products ordered in some of the abovementioned purchase orders. All of these orders, however, fall outside the relevant timeframe.

Preliminary notes

In its observations, the opponent claims that its company has taken over the German company ‘NKD Deutschland GmbH’, so that the use of the sign is made by the latter company. The evidence submitted originates from and relates to a company referred to simply as ‘NKD’, or as ‘NKD Vertriebs GmbH’/‘NKD Services GmbH’. Given the opponent’s explanation, it can be concluded that the evidence refers to the company that was the owner of the sign (or the economic group to which that company belongs) at the relevant time.

Furthermore, according to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

It follows that, even if the company (group) from which the evidence originates was not the previous proprietor of the mark, the fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by this other company (economic group) was made with the opponent’s consent and thus is equivalent to use made by the opponent.

In its observations, 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

In its observations, the applicant argues that there is no evidence that the goods were placed on the German market.

The opponent states that the goods for which purchase orders were submitted, were ordered and received from companies in China and Bangladesh. It further explains that the goods are usually delivered to Hamburg and mostly sold within Germany.

It can be seen from the eight purchase orders that are dated within the relevant timeframe (i.e. between 09/12/2010 and 27/06/2014) that the company (companies) ‘NKD Vertriebs GmbH’/‘NKD Services GmbH’, based in Bindlach, Germany, ordered large amounts of clothing from companies with addresses in China and Bangladesh. On some of the orders it is explicitly stated that the ‘port of arrival’ is Hamburg. In any case, the address of the ordering company suggests that the goods were ordered to be shipped to Germany.

An overview of the rest of the documents suggests that the goods were then marketed in Germany. This can be inferred from the language of the catalogues and the main language of the packaging materials, namely German, as it is a regulatory requirement for goods (particularly clothing) traded on German territory to give product information (and, in the case of clothing, the fibre content) in German. Furthermore, on some of the purchase orders it is stated specifically that the sale prices are in euros. The prices also appear in euros, inter alia, on the packaging, as well as on the price tags shown in the photographs of clothing.

The use of additional languages, as well as German, in the catalogues and on the packaging, does not prevent a conclusion that the evidence relates to the relevant territory. The use of English (and indications in various languages) is common nowadays in trade. The same applies to the listing of prices in various currencies on the price tags of the products. Often, a producer/provider does not trade within the borders of only one country and at least some basic information about the product is provided in English and in other languages, and the prices are given in various currencies, to facilitate export and import trade.

Taking into account all the above, it is considered that the evidence relates to the relevant territory.

Time of use

Most of the catalogue excerpts (i.e. those dated between 2012 and 2014), all of the items of packaging and some of the purchase orders (i.e. the eight dated between 09/12/2010 and 27/06/2014) and price tags refer to 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 as well during the relevant period of time. 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).

The rest of the evidence (e.g. one catalogue dated 2015 and some of the purchase orders) are dated outside the relevant timeframe; they do not demonstrate use made during the relevant period and therefore cannot be taken into account.

However, the catalogue excerpts, the items of packaging, the purchase orders and the price tags dated within the relevant timeframe suffice to demonstrate that use has been made within the relevant period.

Extent of use

In its observations, the applicant argues that the opponent has not proved the 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, 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.

Special circumstances, for example lower sales figures during the initial marketing phase of a product, could be of relevance when assessing the genuineness of the use (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 53).

Furthermore, use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers is under way (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 37).

As stated above, the opponent (its predecessor) placed large orders for clothing from companies in China and Bangladesh.

Furthermore, it can be seen from some of these purchase orders that items of clothing were ordered with ‘NKD own label’, namely the sign ‘Reward Fashion’, to be used on the hang tag. The price tags and the labels (on the items themselves and/or on separate paper tags) bear the figurative signs shown above. From all the requirements set out in the purchase orders it can be inferred that the opponent (its predecessor) ordered large amounts of clothing (the smallest order amounts to 3 680 items) to be manufactured, marked with the brand (sign) requested by the opponent, attached to price tags and delivered to Germany. As the orders were placed over a continuous period of time, lasting more than three years, it is apparent that they were regular business transactions.

It is, therefore, evident that the opponent (or the previous proprietor) consistently made expenditures on placing purchase orders for a substantial amount of clothing over a continuous period of time. Furthermore, the goods ordered (the items of clothing) were already equipped with everything needed (labels, prices, tags, barcodes) for them to be marketed under the signs shown above. The photographs submitted (on some of which the date can be seen) show goods corresponding to those specified in the purchase orders, labelled and tagged with a price (often in various currencies), a barcode and the sign specified by the opponent, as well as the signs shown above. It is reasonable to conclude that the items of clothing were ordered, priced and tagged to enable the opponent (its predecessor) to market them under the signs shown above.

Furthermore, the excerpts from catalogues submitted contain images of various items of clothing including shirts, as well as other types of clothing, with the individual price for each item provided. This suggests that the goods ordered were advertised with the purpose of commercialising them. The catalogues, furthermore, cover a considerable period of three years (i.e. 2012-2014).

The items of product packaging – showing the product name (and a depiction of the product), the producer’s name, the signs specified above, indications relating to the product in several languages (including German) – are further indications that the products were marketed or prepared for marketing. These items of evidence also relate to a continuous period of time, matching the period covered by the catalogues, namely 2012-2014.

Although the sales figures submitted do not provide information on the amount of goods marketed or how or to what extent the mark was used in Germany, the other documents submitted, namely the purchase orders, the catalogues, the packaging, and the labels and tags, when considered as a whole, demonstrate that during a continuous period of time within the relevant timeframe the opponent used the mark for goods that were marketed or prepared for marketing, as the opponent (or its predecessor company or group) consistently ordered large amounts of clothing, placed advertisements and prepared packaging for the marketing of the goods in question.

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

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the signs shown above appear on the packaging, as well as on the labels and the price tags, of the goods in question. In the catalogues submitted, the signs shown above appear above or below the products depicted. The same signs (with some slight variations in colour), clearly visible, appear on the labels and the tags of the products. Therefore, a link can be made between the signs used on the catalogues, which also appear on the labels and price tags of the items of clothing, and the items of clothing themselves.

The Opposition Division considers, therefore, that the evidence shows use of the signs shown above as a trade mark.

Sign used as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which 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 42(2) and (3) EUTMR, Article 15 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 evidence submitted demonstrates use of the signs , , , , with some variations in colour, on labels, tags and catalogues, as well as directly on the products.

The applicant argues that the earlier mark is not used as registered, as additional words such as ‘fashion’, ‘classic’ or ‘haka’ are used with it, or there are additional figurative elements.

The Opposition Division cannot agree with the applicant’s argument. In the evidence submitted, the sign ‘REWARD’ is depicted in various colours in rather standard typefaces, and even when the letters are depicted on several lines they are clearly readable. In some of the depictions used, the sign ‘REWARD’ is accompanied by additional figurative elements such as a circle around the first letter ‘R’, in addition to the use of different colours, but these elements are of a decorative nature and thus do not alter the distinctive character of the sign in question.

Finally, the fact that the sign is used with additional words such as ‘collection’, ‘fashion’, ‘haka’ or ‘NRD’ does not mean that the sign has not been used as registered, as the opponent is not required to provide proof of use of the trade mark alone. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T‑463/12, MB, EU:T:2014:935, § 43). For instance, the use of the earlier mark with the word ‘NKD’ (referring to the company name of the previous owner) does not alter the distinctive character of the earlier mark, as the earlier mark as used in the submitted materials is clearly perceptible.

Furthermore, the use of additional indications is not an uncommon business practice, as a certain product can have different varieties and these may need to be indicated to facilitate communication between the trading parties. Companies commonly use a single trade mark for a whole product type or range and produce sub-brands for separate lines of products within this range. In the present case, the additional indications do not alter the facts that the earlier trade mark is clearly used on the packaging, labels and tags, as well as in the catalogues, and that there are indications and images of the relevant goods. Furthermore, additions such as ‘fashion’ and ‘collection’ will be perceived by the average consumer as descriptive terms, as they are English words widely used to refer to a line of clothing.

It follows that the use of the signs demonstrated by the evidence listed above constitutes use of the mark as registered or in a form essentially the same as that registered and, therefore, constitutes use of the mark under Article 15 EUTMR.

Use in relation to the registered goods

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, and 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 for some of the goods for which it is registered.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for a number of clothing items, such as different types of shirts, shorts, pyjamas, trousers belonging to the following category in the specification of Class 25: clothing. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for clothing in Class 25.

For the rest of the goods on which the opposition is based, there is little or no information provided in the documents submitted. There is one single reference to a bag and a hat in the advertising material submitted; however, this does not suffice to demonstrate that these products were marketed under the sign in question, as there is no further information about actual commercial realisation.

Therefore, the Opposition Division will only consider clothing in Class 25 in its further examination of the opposition.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 25: Clothing.

The contested goods are the following:

Class 18: Bags; handbags; suitcases; rucksacks; purses; umbrellas; parasols; beach umbrellas [beach parasols].

Class 25: Clothing; footwear; headgear; swimwear; wetsuits for water-skiing.

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 18

The opponent’s clothing in Class 25 is used to cover parts of the human body and protect them against the elements. It also includes articles of fashion.

The contested bags; handbags; rucksacks; purses are related to articles of clothing in Class 25. This is because consumers are likely to consider the contested goods as accessories that complement articles of outer clothing, as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing to directly produce and market related bags; handbags; rucksacks; purses. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; and beach umbrellas [beach parasols] are the abovementioned devices usually used for protection from the weather at the beach. The nature of these goods is very different from that of clothing in Class 25. They serve very different purposes (protection from rain/sun versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.

The same reasoning applies to suitcases. These goods are considered dissimilar to clothing. Suitcases are for carrying things when travelling and do not satisfy the same needs as clothing. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

The contested swimwear; wetsuits for water-skiing are included in the broad category of the opponent’s clothing. It follows that these goods are identical.

The contested footwear serves the same purpose as the opponent’s clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar.

The contested headgear and the opponent’s clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, headgear and clothing are considered similar.

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 found to be identical or similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

REWARD
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 earlier sign is word mark, consisting of the element ‘REWARD’, and the contested sign is a figurative mark, consisting of the element ‘RÉARD’, written in a bold, rather standard typeface and in upper case letters; the depiction of the mark would not divert the consumer’s attention from the letters as such. The accent on the letter ‘E’ of the contested sign would be perceived as an accent, and would not change the relevant public’s perception of the letter ‘E’ as that letter.

The applicant argues that the signs would have different meanings for the public in the relevant territory. It states that the earlier mark would be perceived as an English word with no particular meaning or as the English word ‘reward’, meaning ‘to give something to someone in recognition of their services, efforts or achievements’. It argues that the contested sign would be perceived as a French word with no particular meaning or associated with the ‘name of fashion designer Louis Réard’.

The applicant submits a printout from a dictionary providing information on the meaning of the English word ‘reward’, as well as two printouts from en.wikipedia.org, providing information on ‘Languages of Germany’ (stating that ‘English (56%)’ is among the ‘main foreign languages’ spoken in Germany) and on ‘Louis Réard’, being a ‘French automobile engineer … best known for launching a two-piece swimsuit’.

However, Wikipedia entries cannot be considered a reliable source of information, as they can be amended by Wikipedia’s users. Furthermore, the evidence submitted does not provide any information demonstrating that the English word ‘reward’, which is not a basic English word, would be understood by the average consumer of the goods in question. There is no proof that the average consumer of the relevant goods in the relevant territory would be familiar with the name of the French engineer, either. In the absence of any evidence to show that consumers in the relevant territory would perceive the signs in question as referring to a meaningful English word or to a French designer, the applicant’s argument must be rejected. Finally, it cannot be inferred that the relevant public would necessarily perceive the earlier sign as an English word and the contested sign as a French word, as the accent on the letter ‘E’ in the contested sign is also used in other EU languages.

It is therefore considered that the signs under comparison have no meaning for the public in the relevant territory and are distinctive.

Visually and aurally, the signs coincide in the letters (and sounds) ‘RE*ARD’ (the letter ‘E’ has an accent in the contested sign), that is, five out of six letters in the earlier mark and all the letters of the contested sign. The signs differ in the third letter (and sound) ‘W’ in the earlier mark, which has no counterpart in the contested sign. As explained above, the typeface of the contested sign is rather standard and does not contribute to the differences between the signs in question.

Considering the coinciding sequences of letters and sounds, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 claims that the earlier trade mark enjoys enhanced distinctiveness.

Pursuant to Article 41(4) EUTMR, within the period fixed by the Office, the opponent may submit facts, evidence and arguments in support of its case (the substantiation period). Therefore, any claim of enhanced distinctiveness and the evidence to support such a claim should be made and submitted within the substantiation period.

On 20/05/2015, the opponent was given two months, commencing after the end of the cooling-off period, to submit any material regarding the substantiation of its earlier right. This time limit expired on 25/09/2015.

However, the opponent’s claim of enhanced distinctiveness and the submission of evidence (listed above) were made only on 15/02/2016, after the deadline set by the Office for the substantiation of the earlier right.

Pursuant to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted within the time limit set by the Office. Therefore, the opponent’s claim of enhanced distinctiveness and the evidence submitted after the substantiation period could not be taken into account.

However, for the sake of completeness and as the evidence is already listed above, it is concluded that, even if it had been submitted on time, the evidence would not suffice to demonstrate that the earlier trade mark had acquired a high degree of distinctiveness through its use.

Despite showing use of the earlier right for some of the relevant goods, the evidence does not provide information about the recognition of the earlier sign in relation to these goods. The evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence is insufficient to show the degree of recognition of the trade mark by the relevant public.

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 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 contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods. The degree of attention will be average when choosing the relevant goods.

The signs are visually and aurally highly similar, as they coincide in the sequence of letters ‘RE*ARD’ (the letter ‘E’ has an accent in the contested sign). The signs differ in the third letter, ‘W’, of the earlier mark, which, however, is placed between the first two coinciding letters, ‘RE’, and the last three coinciding letters, ‘ARD’.

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). Therefore, the fact that the coinciding letters of the signs are in prominent positions is of material importance when assessing the likelihood of confusion between the signs.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘REWARD’. In support of its argument the applicant refers to some trade mark applications and registrations in the European Union. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. Therefore, the evidence filed does not demonstrate the exposure of the public to widespread use of signs containing the element ‘REWARD’.

In the light of all the foregoing considerations and in particular the visual and aural similarities between the signs and the identity or similarity between the goods, the Opposition Division considers that the similarities between the signs prevail over their differences and that the relevant public could believe that the goods found to be identical or similar came from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration.

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

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

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

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

The Opposition Division

Loreto URRACA LUQUE

Irina SOTIROVA

Irina SOTIROVA

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.