OPPOSITION No B 2 531 328

Hugo Boss Trade Mark Management GmbH & Co. KG, Dieselstr. 12, 72555 Metzingen, Germany (opponent), represented by Dennemeyer & Associates, Poccistr. 11, 80336 München, Germany (professional representative)

a g a i n s t

Bosie Limited, Linksview Cottage 1 Links Terrace, Peterhead Aberdeenshire AB42 2AD, United Kingdom (applicant), represented by Graham Watt & Co LLP, St. Botolph's House, 7-9 St. Botolph's Road, Sevenoaks, Kent TN13 3AJ, United Kingdom (professional representative).

On 05/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 531 328 is upheld for all the contested goods.

2. European Union trade mark application No 13 751 409 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 751 409. The opposition is based on, inter alia, European Union trade mark registration No 49 221. The opponent invoked Article 8(1)(b) 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 more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 49 221.

1. The goods

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

Class 24: Woven fabrics and textile goods, included in class 24, in particular handkerchiefs and hand towels; Bed and table linen, wall hangings of textile.

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

The contested goods are the following:

Class 24: Textiles and textile goods; bed and table covers; travellers' rugs, textiles for making articles of clothing; duvets; covers for pillows, cushions or duvets.

Class 25: Clothing, headgear, footwear.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’ 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 24

The contested textiles include as a broad category the opponent’s woven fabrics. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, the goods are identical.

Following the above finding the contested textiles for making articles of clothing overlap with the opponent’s woven fabrics in the part ‘woven fabrics for making articles of clothing’, therefore they are identical.

Textile goods are identically contained in both lists of goods and services (including synonyms).

The contested bed and table covers are included in the opponent’s broader category of bed and table linen. The goods are, therefore, identical.

Travellers' rugs; duvets; covers for pillows, cushions or duvets are included in the opponent’s broader category of textile goods, included in class 24. The goods are identical.

Contested goods in Class 25

Headgear is covered by both specifications in exactly the same terms. The goods are identical.

The contested clothing can be seen as a summary term that covers in general the opponent’s clothing for men, women and children. Therefore, the goods are identical.

The contested footwear includes as a broader category the opponent’s shoes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise in the field of textiles and clothing manufacturing. The degree of attention is considered to be average.

3. The signs

BOSS	BOSIE
Earlier trade mark	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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

Both marks are word marks without any elements being more distinctive or dominant than others.

Visually, the signs coincide in their initial three letters ‘BOS-’ and differ in the last letter ‘S’ of the earlier mark versus the last two letters of the contested sign, namely ‘IE’.

The first parts, which represent the major parts of the conflicting marks (three out of four of the earlier and three out of five letters of the contested sign) are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BOS(S) – Bos-’, since the double ‘S’ of the earlier mark will be pronounced as a single ‘S’. It is to be noted that the letter ‘S’ of the contested sign may also be pronounced as ‘Z’ depending on some linguistic specifics in different parts of the relevant territory. It is however difficult to conclusively opine on the pronunciation of the contested sign, as far as this verbal element is not an existing Spanish word. The pronunciation differs in the sound of the letters ‛ie’ of the contested mark, which have no counterparts in the earlier sign.

In any case, despite the possible pronunciation of the letter ‘S’ as ‘Z’ of the contested sign the signs are aurally similar to an average 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.

The opponent argues that the verbal element ‘BOSS’ might be associated with a person of higher ranking, an employer or a supervisor for the English-speaking part of the public. While this is true, it is irrelevant for the current assessment based on the perception of the Spanish-speaking part of the relevant public. Without any evidence to the contrary the Opposition Division cannot conclude that the consumer in Spain will link the earlier mark to the corresponding English word (see decision of 28/04/2016, R 1494/2015-4, Bess, § 23).

The same is valid in relation to the possible meaning of the contested sign in Scottish as argued by the applicant. Not to speak that Scottish is not an official language of the European Union at all.

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

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

It has been established that the signs are visually and aurally similar to an average degree where the coincidence lies in the beginnings of the signs. The signs do not have concepts which could eventually help consumers distinguish between them on a conceptual level. The level of attention in relation to the goods at hand is average.

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).

Another well-established principle in the assessment of 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).

By applying the above principles, bearing in mind the identity of the goods and the level of similarity between the signs established on visual and aural level, the Opposition Division finds that there exists a likelihood of confusion on part of the relevant Spanish public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In its observations, the applicant argues that some trade mark searches in national registers revealed registrations of the opponent’s trademarks which co-exist with marks such as ‘BOSSA’, ‘BOSE’, ‘BOSSINI’, ‘BOS’, etc. The applicant argues that if this is the case, either the opponent contented to co-exist with these registrations, or they have been unsuccessful in preventing them from being registered and comes to the conclusion that the applicant’s mark applied for should be treated no differently.

It is to be noted that none of the mentioned registrations are owned by the applicant. There may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved, etc. It is not for the Opposition Division to opine on the strategy of the opponent in managing its marks and business vis-a-vis third parties and/or draw conclusions based on probabilities as to why these marks are on the register. Not to speak that the mere existence on the registry does not mean that the marks coexist in the market. Last but not least, it is important to note that the Office shall in principle be restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the registry) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark which might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist as already mentioned above.

In the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The argument raised by the applicant that the search carried by EUIPO did not reveal any similar EUTMs is also not conclusive as to the existence of such marks since the criteria applied by a software is an objective mathematical average (coinciding number of letters out of a fixed number of letters of verbal elements with fixed length, etc.) while the finding of similarity between signs is not a mathematical relationship. The Opposition Division finds it necessary to explicitly point this out since this seems to be the understanding and the approach of the applicant with regard to the comparison of signs. Definitions like ‘25% longer’ and ‘almost 60% shorter’ to be found in the applicant’s observations relating to the comparison of signs are obviously not conclusive as to the finding of similarity between the signs since consumers are not prone to complicated calculations when confronted with trade marks. Moreover, as mentioned above, consumers rarely have the chance to make a direct comparison between different marks.

Therefore, this argument of the applicant also has to be set aside.

The opposition is well founded on the basis of the opponent’s European Union trade mark registration No 49 221. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. If the earlier mark enjoyed an enhanced degree of distinctiveness this would only strengthen the opponent’s case. Anyhow, the result would be the same.

As the earlier right European Union trade mark registration No 49 221 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Oana-Alina STURZA

Plamen IVANOV

Julia SCHRADER

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.