OPPOSITION No B 2 709 817

Cesar Arias Alda, Curtidores, 2, 03203 Elche (Alicante), Spain (opponent 1) and Esperanza Arias Alda, Curtidores, 2, 03203 Elche (Alicante), Spain (opponent 2), represented by Maria del Carmen Ruiz Vazquez, Espinosa y Cárcel, 9-bajo, 41005 Sevilla, Spain (professional representative)

a g a i n s t

Titos d.o.o., Ljudevita Posavskog 36b, Zagreb 10000, Croatia (applicant), represented by Mladen Vukmir, Gramaca 2 L, Zagreb 10000, Croatia (professional representative).

On 15/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 709 817 is partly upheld, namely for the following contested goods and services in Classes 18, 25 and 35:

Class 18 (in its entirety): Bags and backpacks.

Class 25 (in its entirety): Clothing, namely, shirts, pants, jackets, dresses; footwear; headwear included in this class; scarves.

Class 35 (in its entirety): Retail and online retail of shirts, pants, jackets, dresses, footwear and headwear, scarves, sunglasses, wrist watches, jewellery, paper, cardboard and goods made from these materials, namely flyers, posters, transparencies, advertising boards, business cards, envelopes, writing paper, notepads and notebooks, labels, exercise books, folders, pamphlets, periodicals, magazines, leaflets, bags and backpacks.

2. European Union trade mark application No 15 088 909 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.

REASONS:

The opponents filed an opposition against some of the goods and services of European Union trade mark application No 15 088 909 (figurative mark:
“ ”), namely against all the goods and services in Classes 9, 14, 16, 18, 25 and 35. The opposition is based on European Union trade mark registration No 10 009 439 (figurative mark: “ ”). The opponents invoked Article 8(1)(b) and 8(5) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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 will be rejected.

The applicant requested that the opponents submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 10 009 439.

In the present case, the date of filing of the contested trade mark is 09/02/2016.

Earlier trade mark No 10 009 439 was registered on 18/10/2011. Therefore, the request for proof of use is inadmissible.

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 and services in Classes 18, 25 and 35 on which the opposition is based are the following:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Commercial retailing of clothing, footwear, leather goods, bags, belts and fashion accessories.

The contested goods and services in Classes 9, 14, 16, 18, 25 and 35 are the following:

Class 9: Sunglasses.

Class 14: Wrist watches, jewellery.

Class 16: Paper, cardboard and goods made from these materials, namely flyers, posters, transparencies, advertising boards, business cards, envelopes, writing paper, notepads and notebooks, labels, exercise books, folders, pamphlets, periodicals, magazines, leaflets.

Class 18: Bags and backpacks.

Class 25: Clothing, namely, shirts, pants, jackets, dresses; footwear; headgear included in this class; scarves.

Class 35: Retail and online retail of shirts, pants, jackets, dresses, footwear and headgear, scarves, sunglasses, wrist watches, jewellery, paper, cardboard and goods made from these materials, namely flyers, posters, transparencies, advertising boards, business cards, envelopes, writing paper, notepads and notebooks, labels, exercise books, folders, pamphlets, periodicals, magazines, leaflets, bags and backpacks.

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

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 Classes 9 and 14

Luxury goods such as sunglasses in Class 9 and jewellery in Class 14 are considered dissimilar to all the opponents’ goods and services, including clothing, footwear and headgear. Their nature and main purpose are different. The main purpose of clothing is to dress the human body, whereas glasses are for improving eyesight, and jewels are for personal adornment. They do not have the same distribution channels and are neither in competition, nor complementary. Even though some fashion designers nowadays also sell sunglasses and jewellery under their marks, this is not the rule; it tends to apply only to (commercially) successful designers. The same applies to wrist watches, which are different in nature and purpose from the opponents’ goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different.

Contested goods in Class 16

All the contested goods have different natures and purpose from the opponent’s goods and services. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these goods come from the same or economically linked undertakings. Therefore, they are dissimilar.

Contested goods in Class 18

The contested bags include, as a broader category, the opponents’ travelling bags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested backpacks are included in the broad category of, or overlap with, the opponents’ travelling bags. Therefore, they are identical.

Contested goods in Class 25

Footwear; headgear included in this class are identically contained in both lists of goods.

The contested clothing, namely, shirts, pants, jackets, dresses; scarves are included in the broad category of the opponents’ clothing. Therefore, they are identical.

Contested services

The contested retail and online retail of bags are identical to the opponents’ Commercial retailing of bags.

The contested retail and online retail of footwear are identical to the opponents’ Commercial retailing of footwear.

The contested retail and online retail of shirts, pants, jackets, dresses and scarves are included in the broad category of the opponents’ commercial retailing of clothing. Therefore, they are identical.

The contested retail and online retail of backpacks are included in the broad category of, or overlap with, the opponent’s commercial retailing of bags. Therefore, they are identical.

The remaining contested retail and online retail of headgear, sunglasses, wrist watches, jewellery, paper, cardboard and goods made from these materials, namely flyers, posters, transparencies, advertising boards, business cards, envelopes, writing paper, notepads and notebooks, labels, exercise books, folders, pamphlets, periodicals, magazines, leaflets are considered similar to the opponent’s commercial retailing of clothing, footwear, leather goods, bags, belts and fashion accessories. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

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 are directed at the public at large. The degree of attention is considered average.

3. The signs

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.

The element “TITOS” of the contested sign is not meaningful in certain territories, for example, in those countries where Greek is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as consumers in the United Kingdom.

Both signs are figurative marks depicting a star missing a point, the lower right point in the earlier trade mark and the upper right point in the contested sign. Furthermore, at the bottom of the contested sign the word ‘TITOS’ is written in upper case letters, but this element is smaller than the rest of the sign. Contrary to the applicant’s claim, the consumer will not associate the word with the former Yugoslavian leader Josip Bros Tito.

The contested sign has no elements that could be considered clearly more distinctive than other elements.

The figurative element of the contested trade mark overshadows the verbal element of the mark by virtue of its central position and size. The figurative element is the visually dominant element of the contested trade mark.

Visually, the signs have in common the depiction of a star with the same number of points, namely four. As regards the figurative elements, the only difference is which point is missing. The additional word ‘TITOS’ in the contested sign does not affect the outward appearance significantly, because of its much smaller size. Therefore, the signs are visually similar to an above average degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, each sign will be recognised by the relevant consumers as an incomplete star. Therefore, they will be associated with the same meaning. The additional word ‘TITOS’ in the contested sign has no meaning in English and cannot, therefore, influence the outcome of the conceptual comparison. The signs are conceptually identical.

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 opponents claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods and services are partly identical, partly similar and partly dissimilar. The signs are visually similar to an above average degree and conceptually identical.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Taking into account the visual similarity to an above average degree, the conceptual identity between the signs, the average degree of distinctiveness of the earlier trade mark and the identity and similarity between the goods and services, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld.

Contrary to the opinion of the applicant, the differences between the signs are not sufficient to distinguish them clearly from each other. They will be regarded as coming from the same undertaking or from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponents´ European Union trade mark registration. 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.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

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 76(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 opponents do not submit appropriate evidence.

According to Rule 19(1) EUTMIR, 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 Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party 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 10/06/2016 the opponents were given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 15/10/2016.

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

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

COSTS

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

Magnus ABRAMSSON

Peter QUAY

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.