OPPOSITION No B 3 013 961

Walmart Apollo, LLC, 702 Southwest 8th Street, Bentonville, Arkansas 72716, United States of America (opponent), represented by Appleyard Lees IP LLP, 15 Clare Road, Halifax, West Yorkshire HX1 2HY, United Kingdom (professional representative)

a g a i n s t

Tailor & Cutter (Cambridge) Limited, 39 High Street, St Martins, Stamford PE9 2LP, United Kingdom (applicant).

On 23/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 013 961 is partially upheld, namely for the following contested goods:

Class 25: Footwear; belts.

2. European Union trade mark application No 15 008 121 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 008 121 for the word mark ‘TAILOR & CUTTER’, namely against all the goods and services in Classes 14, 24, 25 and 40. The opposition is based on United Kingdom trade mark registrations No 3 003 551 and No 3 139 254, both for the word mark ‘TAILOR & CUTTER’ in Class 25. The opponent invoked Article 8(1)(a) and (b), and Article 8(5) 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.

1. The goods and services

The goods on which the opposition is based in relation to both earlier marks are the following:

Class 25: Clothing, footwear, headgear.

The contested goods and services are the following:

Class 14: Precious metals and their alloys and trinkets and jewellery in precious metals or coated therewith, not included in other classes; precious stones; horological and chronometric instruments; jewellery; bracelets, chains, cufflinks, tie-bars; scarf rings, pendants, clips, brooches, pins; buckles for watchstraps; watches, clocks, parts and fittings for watches and clocks including watchstraps; key rings, key holders made of precious metals.

Class 24: Bed covers; table covers.

Class 25: Footwear; belts.

Class 40: Textile treatment; treatment of fabric.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘including’, used in the applicant’s list of goods in Class 14, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 14

When comparing the contested goods in Class 14, which are mainly precious metals and precious stones, goods in precious metals and, in general jewellery, clocks and watches, with the opponent’s clothing, footwear, headgear in Class 25, they are considered dissimilar. Their nature and main purpose are different. The main purpose of clothing is to dress the human body, whereas jewels are for personal adornment. They do not have the same distribution channels and are neither in competition, nor complementary. Furthermore, they target different publics and are normally not manufactured by the same kinds of undertakings. In this regard, even though some fashion designers nowadays also sell fashion accessories (such as jewellery) under their marks, this is not the rule and it tends to apply only to (commercially) successful designers.

Contested goods in Class 24

The main point of contact between the contested bed covers; table covers in Class 24 and the opponent’s clothing in Class 25 is that they are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, for protection and/or fashion, whereas bed covers; table covers in Class 24 are for household purposes and interior decoration. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. The same applies to the comparison between the contested goods in Class 24 and the opponent’s footwear, headgear in Class 25, which, moreover, can have a non-textile nature. Therefore, these goods are considered dissimilar.

Contested goods in Class 25

Footwear is identically contained in both lists of goods.

The contested belts are included in the broad category of the opponent’s clothing. Therefore, they are identical.

Contested services in Class 40

The contested textile treatment; treatment of fabric in Class 40 are dissimilar to the opponent’s clothing in Class 25. The goods and services under comparison have different natures and purposes. They differ in distribution channels and are not in competition or complementary. The treatment of the opponent’s goods (such as dyeing, or waterproofing them) would in no case be offered by their manufacturer to the customer as an independent service or option, but would form part of the manufacturing process. Furthermore, manufacturers of the opponent’s goods would probably not themselves undertake these transformation processes of the raw textiles but would rather resort to specialized undertakings. The same applies to the comparison between the contested services in Class 40 and the opponent’s footwear, headgear in Class 25, which, moreover, can have a non-textile nature. Therefore, they are also dissimilar.

2. The signs

TAILOR & CUTTER	TAILOR & CUTTER
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods, as established above in section a) of this decision, are also identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

The rest of the contested goods and services are dissimilar. As the 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.

The Opposition Division will continue with the examination of the remaining grounds of the opposition, namely Article 8(5) EUTMR, in connection with these goods and services.

REPUTATION — ARTICLE 8(5) EUTMR

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 will 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 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 will 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 Article 7(1) EUTMDR, the Office will 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 Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must 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 mark.

On 10/01/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. After an extension of the time limit and a suspension of the opposition proceedings, this time limit expired on 07/09/2019.

The opponent did not submit any evidence concerning the reputation of the trade marks 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.

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

Marta GARCÍA COLLADO

Eva Inés PEREZ SANTONJA

Cindy BAREL

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.