OPPOSITION No B 2 591 371

The Haussmann B.V., Oudezijds Voorburgwal 274, 1012GL Amsterdam, Netherlands (opponent)

a g a i n s t

Hausmann's GmbH, Flora-Neumann-Str. 6, 20357 Hamburg, Germany (applicant), represented by Lichte Rechtsanwälte, Kaiser-Wilhelm-Str. 93, 20355 Hamburg, Germany (professional representative).

On 10/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 591 371 is partially upheld, namely for the following contested goods and services:

Class 25: Suits; layettes [clothing]; swimming costumes; bathing drawers; bathrobes; swimming caps; bath sandals; bath slippers; swimwear and beachwear; baseball caps; bandanas [neckerchiefs]; berets; clothing of leather; clothing of imitations of leather; paper clothing; clothing; all the aforesaid goods included in Class 25; brassieres; gowns; costumes (masquerade -); carnival costumes; mittens; football boots; gabardines [clothing]; clothing for gymnastics; gymnastic shoes; belts (clothing); low shoes; scarves; gloves [clothing]; slippers; chemisettes [shirt fronts]; shirts; wooden shoes; trousers, included in Class 25; knee-high stockings; stocking suspenders; hoods [clothing]; ready-to-wear clothing; hats; corsets; collars; neckties; skull caps; leather clothing; underwear; liveries; bibs, not of paper; maniples; cuffs; mantillas; corselets; robes; coats; caps [headwear]; ear muffs [clothing]; combinations [clothing]; slippers; parkas; pelerines; petticoats; pullovers; pyjamas; mackintoshes; skirts; sandals; sashes (for wear); neck scarfs [mufflers]; sleepshirts; veils [clothing]; knickers; lace boots; shoes, all the aforesaid goods included in Class 25; footwear, all the aforesaid goods included in Class 25, aprons for cooking; overalls; ski boots; briefs; socks; sock suspenders; athletics shoes; boots, all the aforesaid goods included in Class 25; headbands [clothing]; stoles; tights; stockings; sweaters; sweat shirts; tee-shirts; togas; knitwear [clothing]; singlets; uniforms; underwear; pants; underwear; waistcoats, included in Class 25; linen; top hats; hats; jackets [clothing].

Class 35: Administrative order processing; advertising; online advertising on a computer network; presentation of companies on the internet and other media; sponsoring in the form of advertising; rental of advertising space, including on the internet (banner exchange); publicity columns preparation; advertisement for others on the internet; services in the field of merchandising (sales promotion).

2. European Union trade mark application No 13 844 519 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 844 519 for the word mark ‘Hausmann`s’, namely against all the goods and services in Classes 25, 35 and 43. The opposition is based on European Union trade mark registration No 13 778 551 , as well as on Benelux trade mark registrations No 937 787 and No 958 320 for the word marks ‘HAUSSMANN SUITES’ and ‘Haussmann Departmentstore’, respectively. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF THE BENELUX MARKS

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted 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 Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit 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 Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence 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.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, the notice of opposition was not accompanied by any evidence as regards earlier Benelux trade mark registrations No 937 787 and No 958 320 on which the opposition is based.

On 21/12/2015, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit finally expired on 21/12/2017.

The opponent did not submit any evidence concerning the substantiation of the earlier Benelux trade marks. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks. Therefore, the opposition will proceed on the basis on the earlier EUTM on which the opposition was, inter alia, based.

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 and services

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

Class 35: Business consultancy relating to investment projects and project development and exploitation of department stores and restaurants; business consultancy with regard to retail services in the field of consumer products; advertising, promotion and publicity services; business and advertising assistance in the sale of consumer products; market research and analysis; organization of commercial actions; marketing; retail services in the field of consumer products, namely cosmetics, skin-, nail-, hair- and body care products, cleaning preparations, cutlery, household apparatus, image and sound carriers, jewellery and watches, paper, calendars, diaries, posters, stickers, cards, postcards, writing books, drawing books, price tags, paper tags, gift tags, gift wrap paper, booklets, note pads, address books, albums, photo albums, printed matter, school and office articles (stationery), home decoration products, furniture, mirrors and picture frames, household or kitchen utensils and containers, foodstuffs, alcoholic beverages, articles for cleaning purposes, glassware, porcelain and earthenware, textile and textile goods, such as tea towels, towels, bed covers, table covers and curtains, clothing, footwear, headgear and fashion accessories, lace and embroidery, games and playthings; business management advertising and sales promotion services; business economic and organizational services; business consultancy in relation to bookkeeping; the provision of commercial information; assistance in business management including supervision and advising enterprises in the field of personnel and personnel affairs.

Class 36: Financial and monetary affairs; financial consultancy services relating to investment projects and project development; financing of project development; Management of financial assets and real estate, as well as providing advice in relation thereto; rental of real estate; services of a holding company; initiating loyalty programs including the organization of savings and discount actions.

Class 45: Research and guidance on legal issues; advice and research technical and legal in the field of intellectual property law and related fields of law.

The contested goods and services are the following:

Class 25: Suits; layettes [clothing]; swimming costumes; bathing drawers; bathrobes; swimming caps; bath sandals; bath slippers; swimwear and beachwear; baseball caps; bandanas [neckerchiefs]; berets; clothing of leather; clothing of imitations of leather; paper clothing; clothing; all the aforesaid goods included in Class 25; brassieres; gowns; costumes (masquerade -); carnival costumes; mittens; football boots; gabardines [clothing]; clothing for gymnastics; gymnastic shoes; belts (clothing); low shoes; scarves; gloves [clothing]; slippers; chemisettes [shirt fronts]; shirt yokes; shirts; wooden shoes; trousers, included in Class 25; knee-high stockings; stocking suspenders; hoods [clothing]; ready-to-wear clothing; hats; corsets; collars; neckties; skull caps; leather clothing; underwear; liveries; bibs, not of paper; maniples; cuffs; mantillas; corselets; robes; coats; caps [headwear]; cap peaks; ear muffs [clothing]; combinations [clothing]; slippers; parkas; pelerines; petticoats; pullovers; pyjamas; mackintoshes; skirts; sandals; sashes (for wear),; neck scarfs [mufflers]; sleep suits; veils [clothing]; knickers; lace boots; shoes, all the aforesaid goods included in Class 25; footwear soles; footwear, all the aforesaid goods included in Class 25, aprons for cooking; overalls; ski boots; briefs; socks; sock suspenders; athletics shoes; boots, all the aforesaid goods included in Class 25; boot uppers; headbands [clothing]; stoles; tights; stockings; sweaters; sweat shirts; tee-shirts; togas; knitwear [clothing]; singlets; uniforms; underwear; pants; underwear; pockets for clothing; waistcoats, included in Class 25; linen; top hats; hats; jackets [clothing].

Class 35: Administrative order processing; advertising; online advertising on a computer network; presentation of companies on the internet and other media; sponsoring in the form of advertising; rental of advertising space, including on the internet (banner exchange); publicity columns preparation; advertisement for others on the internet; services in the field of merchandising (sales promotion).

Class 43: Bar services; catering for the provision of food and beverages; catering industry services; cafés, cafeterias, canteens, restaurants, snack-bars and self-service restaurants.

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 terms ‘such as’ and ‘including’, used in the applicant’s and the opponent’s lists of services, indicate that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (on the use of ‘in particular’, which has the same function as ‘including’ and ‘such as’, see a reference in 09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

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

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 suits; layettes [clothing]; swimming costumes; bathing drawers; bathrobes; swimwear and beachwear; bandanas [neckerchiefs]; clothing of leather; clothing of imitations of leather; paper clothing; clothing; all the aforesaid goods included in Class 25; brassieres; gowns; costumes (masquerade -); carnival costumes; mittens; gabardines [clothing]; clothing for gymnastics; belts (clothing); scarves; gloves [clothing]; chemisettes [shirt fronts]; shirts; trousers, included in Class 25; knee-high stockings; stocking suspenders; hoods [clothing]; ready-to-wear clothing; corsets; collars; neckties; leather clothing; underwear; liveries; bibs, not of paper; maniples; cuffs; mantillas; corselets; robes; coats; ear muffs [clothing]; combinations [clothing]; parkas; pelerines; petticoats; pullovers; pyjamas; mackintoshes; skirts; sashes (for wear); neck scarfs [mufflers]; sleep suits; veils [clothing]; knickers; aprons for cooking; overalls; briefs; socks; sock suspenders; headbands [clothing]; stoles; tights; stockings; sweaters; sweat shirts; tee-shirts; togas; knitwear [clothing]; singlets; uniforms; underwear; pants; underwear; waistcoats, included in Class 25; jackets [clothing]; all the aforesaid goods included in Class 25 (all clothing); swimming caps; baseball caps; berets; hats; skull caps; caps [headwear]; top hats; hats (all headgear); bath sandals; bath slippers; football boots; gymnastic shoes; low shoes; slippers; wooden shoes; slippers; sandals; lace boots; shoes, all the aforesaid goods included in Class 25; footwear, all the aforesaid goods included in Class 25, ski boots; athletics shoes; boots, all the aforesaid goods included in Class 25 (all footwear); linen (textile goods), are all goods that fall under the broad categories of clothing, headgear, footwear and textile goods. On the other hand, the opponent’s services in Class 35 cover the retail in the field of consumer products, namely clothing, footwear, headgear and fashion accessories, textile goods, which comprise retail of identical categories of products.

In principle, retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public. Therefore, all the above contested goods in Class 25 are considered similar to a low degree to the opponent’s retail in the field of consumer products, namely clothing, footwear, headgear and fashion accessories and textile goods.

However, the contested shirt yokes; pockets for clothing (clothing); cap peaks (headgear); boot uppers; footwear soles (footwear) represent only parts of the respective clothing, headgear and footwear end products. Unlike the above commented consumer products of these broad categories, the contested goods here are not meant for the public at large but for professionals involved in the fashion design and manufacturing of clothing, footwear, headgear and the accessories thereof. Furthermore, they do not have the same distribution channels as in the case of the goods above, for instance outlets, fashion stores and boutique shops. Even though these goods may be complementary to goods of the clothing, headgear and footwear sector, they are in no way identical to them. As said above, a similarity between retail services and the retailed goods may be justified only in cases where the goods in the compared categories are identical. This is, however, not the case with the contested shirt yokes; pockets for clothing; cap peaks; boot uppers; footwear soles, which are evidently not identical to the broad categories of clothing, headgear and footwear, neither are they to any other categories of products retailed by the opponent. Therefore, these contested goods are considered dissimilar to the opponent’s retail services in Class 35.

These goods are further dissimilar to any of the remaining opponent’s services in Classes 35, 36 and 45 since they have no commercial points in common; in particular, they have different natures (goods vs services), different intended purposes, relevant publics, distribution channels, as well as different producers/providers.

Contested services in Class 35

The contested administrative order processing overlaps with the opponent’s organization of commercial actions to the extent that the relevant commercial actions may be processing of orders. These services are identical.

The contested advertising; online advertising on a computer network; sponsoring in the form of advertising; rental of advertising space, including on the internet (banner exchange); publicity columns preparation; advertisement for others on the internet; presentation of companies on the internet and other media; services in the field of merchandising (sales promotion) overlap with the opponent’s advertising, promotion and publicity services. These services are identical.

Contested services in Class 43

The contested bar services; catering for the provision of food and beverages; catering industry services; cafés, cafeterias, canteens, restaurants, snack-bars and self-service restaurants are essentially services related to the provision of foods and drinks in particular venues or ad hoc. They have nothing in common with any of the opponent’s services in Class 35, namely professional business services, in Class 36, namely financial and real estate services, or in Class 45, namely legal services and advice in the sector of intellectual property. It is apparent that the opponent’s services mostly target various professional publics and clients with an interest in business, finances, real estate or legal affairs advice. They are available through different channels from those through which the contested services are provided, namely physical premises for the provision of food and drinks, and are provided by different undertakings. These services are considered dissimilar.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to a low degree are directed at the public at large, for instance in the case of the retail services in Class 35 and the goods in Class 25, as well as at business customers with specific professional knowledge or expertise in the areas of business management and consultancy and/or advertising.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

	Hausmann`s
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 verbal elements ‘HAUSSMANN’ (where the bar of the letters ‘A’ is missing) and ‘Hausmann’s’ will most likely be understood by the relevant public as variant spellings of a surname of German origin. In particular, the final ‘s’ accompanied by an apostrophe in the contested sign will be understood as making the word possessive. It cannot be excluded that, for a part of the public, the verbal element of the earlier mark may not be associated with any meaning. In any event, the verbal elements are considered distinctive in relation to the goods and services in question.

The applicant’s sign is a word mark and therefore, it is immaterial whether it is written in upper, lower or title case letters. The verbal element in protected as such and not for its written form. The opponent’s earlier mark bears some minor stylisation, in particular as it concerns the two letters resembling and playing the role of an ‘A’; both letters do not bear their characteristic connecting feature. Nevertheless, consumers usually tend to pay more attention to the verbal elements themselves and not to the ornaments or the slight stylisation that may embellish them.

Neither sign has any element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the sequence of letters ‘HAUS*MANN*’, whereby they only differ in the additional letter ‘S’ in the middle of the earlier mark. Furthermore, the signs differ in the stylisation of the earlier mark, as well as in the apostrophe and the additional letter ‘S’ in the contested sign. However, 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. Bearing in mind the minor stylisation of the earlier mark and the repetitive character of the additional letter ‘S’, as well as the final position of the differing verbal part ‘`s’ in the contested sign, the signs are considered aurally and visually highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the identical surname ‘Haus(s)mann’, to the extent it will be understood, or its possessive form, the signs are conceptually at least highly similar for a part of the public. For the consumers who do not see a meaning in the marks, a conceptual comparison cannot be carried out.

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 and services 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 goods and services in question are partly identical and similar to a low degree and partly dissimilar and the degree of attention of the relevant public will vary depending on the nature of the goods and services, as indicated above. The earlier mark enjoys a normal degree of distinctiveness.

The signs are found visually, aurally and, for a part of the public, conceptually at least highly similar to the extent that they coincide in most of their letters, in particular ‘HAUS*MANN’; the coincidence in the surname ‘HAUS*MANN’ will lead to a conceptual association and similarity for a part of the public. As said above, the verbal elements of the signs only differ in some negligible elements such as the repetitive letter ‘S’ within the earlier mark, as well as in the additional apostrophe and letter ‘S’ in the contested sign.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). Consequently, it is highly probable that consumers will not pay attention to the differences between the signs. In particular, the additional letter ‘S’ in the earlier mark may be easily overlooked since it follows another letter ‘S’ and the final, non-prominent, part of the contested sign may be misheard in some cases.

In spite of these differences in the word elements, there is a likelihood of confusion because the visual and aural coincidences are overwhelming. The earlier mark bears only a minor stylisation, which is not sufficient to outweigh the similarities between the signs. Furthermore, as explained above, for a significant part of the public the signs will bear a connotation of a surname, which will lead to an additional conceptual link between the signs and increase the probability of confusion.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the present case, the similarities between the signs are considered sufficient to outweigh the low degree of similarity between some of the goods and services in question, in particular the goods in Class 25 and the services in Class 35.

Regarding the applicant’s claim that the opponent has ceased its commercial activity in the relevant market, the consideration of such a circumstance is out of the scope of the present opposition proceedings.

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 European Union trade mark registration.

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

The rest of the contested goods and services 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 and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Monika CISZEWSKA

Manuela RUSEVA

Gueorgui IVANOV

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.