OPPOSITION No B 2 763 665

Skechers U.S.A., Inc. II, 228 Manhattan Beach Blvd., Manhattan Beach, California 90266, United States (opponent), represented by D Young & Co LLP, 120 Holborn, London EC1N 2DY, United Kingdom (professional representative)

a g a i n s t

Shazia Saleem Limited, Flat 2, 107 Mayes Road, London N22 6UP, United Kingdom (applicant).

On 01/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 763 665 is upheld for all the contested goods, namely:

Class 18: Articles made from leather or imitation leather, namely handbags and travelling bags; handbags, purses and wallets; umbrellas; wheeled shopping bags; bags; travelling bags; handbags; briefcases; vanity cases; travelling sets and key cases made of leather; umbrella covers, rucksacks; purses, not of precious metal; music cases; school satchels; garment bags for travel.

Class 25: Men and women clothing; dresses; shirts; T shirts; sweatshirts; tops; jackets; scarves; belts; children clothing; knitwear; bathrobes; bibs, not of paper; headbands (clothing); boas (necklets); mufflers; socks; layettes (clothing); hoods (clothing); shawls; ties; corsets (underclothing); fur stoles; neckerchiefs; bathing caps and sandals; caps (headwear); gloves (clothing); underclothing; sports jerseys; mantillas; stockings; bow ties; pareos; pyjamas; underwear; swimming costumes; gymnastic and sports outfits.

2. European Union trade mark application No 15 440 101 is rejected for all the contested goods. It may proceed for the remaining (non-contested) goods (namely for all the goods in Classes 14 and 20).

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 440 101 for the figurative mark , namely against all the goods in Classes 18 and 25. The opposition is based on, inter alia, earlier EUTM No 14 466 131 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(4) and 8(5) EUTMR.

The opposition is based on more than one earlier trade mark. For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 14 466 131, for which the opponent claimed repute in the EU, and for which no proof of use was validly requested.

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.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested sign; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the above mentioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark. In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested sign was filed on 17/05/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 18: Duffle bags, backpacks, tote bags, cinch sacks, messenger bags, handbags

Class 25: Leisurewear and sportswear, namely short-sleeved and long-sleeved tops, bottoms, shirts, sports jerseys, sports bras, bralettes, tank tops with shelf bras, tops, shelf bras, shell tops, halter tops, tube tops, body suits, bandeau tops, off-the-shoulder tops, short-sleeved and long-sleeved T-shirts, tunics, pullovers, hooded tops, sweaters, cardigans, jackets, vests, coats, sweatshirts (with or without zips); leisurewear and sportswear, namely blouses, shorts, running shorts, compression shorts, trouser shorts, chino shorts, board shorts, capri trousers, cropped trousers, leggings, sweatpants, trousers, pants, skirts, skorts, jump suits, unitards, dresses, jumpers, underwear, lingerie, swimwear, swimsuits, beachwear, bathing suit cover-ups, singlets, tank tops, polo shirts, button down shirts, Henley tops, mock neck pullovers (with or without zips); leisurewear and sportswear, namely briefs, caps, hats, visors, baseball caps, golf hats, beanies, headbands, wristbands, scarves, ties, gloves, socks, belts.

After the limitations filed by the applicant on 14/06/2018 and 24/07/2018, the opposition is directed against the following goods:

Class 18: Articles made from leather or imitation leather, namely handbags and travelling bags; handbags, purses and wallets; umbrellas; wheeled shopping bags; bags; travelling bags; handbags; briefcases; vanity cases; travelling sets and key cases made of leather; umbrella covers, rucksacks; purses, not of precious metal; music cases; school satchels; garment bags for travel.

Class 25: Men and women clothing; dresses; shirts; T shirts; sweatshirts; tops; jackets; scarves; belts; children clothing; knitwear; bathrobes; bibs, not of paper; headbands (clothing); boas (necklets); mufflers; socks; layettes (clothing); hoods (clothing); shawls; ties; corsets (underclothing); fur stoles; neckerchiefs; bathing caps and sandals; caps (headwear); gloves (clothing); underclothing; sports jerseys; mantillas; stockings; bow ties; pareos; pyjamas; underwear; swimming costumes; gymnastic and sports outfits.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 17/03/2017, the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

 A witness statement (filed as Annex 1) from the Managing Director of Skechers U.S.A. Ltd., a company related to the opponent’s (Skechers U.S.A., Inc. II), namely the opponent’s subsidiary in the United Kingdom (see page 2 of witness statement, paragraph 6). In this document, it is, inter alia, stated that the opponent’s SKECHER shoes are distributed in the European Union through a variety of subsidiaries in France, Germany, Italy, Spain, the Netherlands and the United Kingdom and made available for purchase through a variety of channels such as department stores (e.g. Harrods or Brantano in the United Kingdom, and Schuh Bode in Germany). A list of names is provided in Annex 1 and print outs from stores’ websites are attached as Exhibits PY3 and PY16, attachments to Annex 1, showing the mark as a word mark and as depicted below on various types of footwear:

.

Pictures of footwear and packaging showing, inter alia, the mark as depicted above are attached as Exhibits PY2 and PY15. Extracts of the opponent’s e-commerce websites targeting customers in Denmark, Germany and the UK and showing the brand as above and as a word mark, in relation to footwear, are attached as Exhibit PY5.

The witness statement (on page 3, paragraphs 12-13) also provides a table listing net sales figures for SKECHERS shoes in 2015 in France, Germany, Italy and Spain, and in 2011-2015 in the United Kingdom, showing significant net sales figures for the countries listed, amounting to several tens of thousands of millions of euros/pounds sterling per year per country.

 Some examples of advertising artwork in English and German and of advertisements and press and blog articles in English, some of which are dated (namely, 2001, April 2015, August 2016, February 2015 and February 2017); a photograph of what is known as a POS (point of sale) display in English, dated 2014, and pictures of stores in Germany and Spain showing this POS display are attached as Exhibits PY6 and PY7.

 Printouts of social media (Facebook, Instagram, Twitter) UK pages advertising SKECHER shoes (Exhibits PY8 and PY17).

 Thirty-one invoices issued by Skechers U.S.A. Ltd. (the opponent’s subsidiary in the UK) to various addresses in various cities throughout the UK, dated within the period 26/03/2015 to 30/01/2017, showing the use of the SKECHER mark in relation to footwear (Exhibit PY9).

 Extracts of annual reports of Sketchers U.S.A. Inc. (a company related to the opponent’s) covering 2015 and 2016, stating, inter alia, that the largest direct sales increases in 2016 came from subsidiaries in the UK, Germany and Spain and that global net sales amounted to billions of dollars in both 2015 and 2016 (Exhibits PY10 and PY11).

 Extracts of the Footwear Industry Awards’ website, showing that SKECHERS footwear was awarded prizes in the EU in 2013, 2014, 2015 and 2016 (as Sports Brand of the Year; Fashion Footwear Brand of the Year; Footwear Brand of the Year) at the UK Footwear Industry Awards and in 2015 (as Mainstream Women’s Footwear Brand of the Year) at the London Drapers Footwear Awards (Exhibit PY13).

On the basis of the above, the Opposition Division concludes that the earlier trade mark, EUTM No 14 466 131, has a reputation in at least the United Kingdom for footwear.

The abovementioned evidence, the majority of which — although certainly not exclusively — relates to the United Kingdom, indicates that the earlier trade mark has been used for a substantial period of time in the relevant EU territory. The sales figures and marketing efforts, as well as, in particular, the awards won during the years preceding the contested sign’s filing, suggest that the trade mark has a consolidated position in the market in relation to footwear, at the very least in the United Kingdom. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys a reputation in at least the United Kingdom.

According to Article 8(5) EUTMR, the relevant territory for establishing the reputation of the earlier mark is the territory of protection: the earlier mark must have a reputation in the territory where it is registered. Therefore, for EUTMs the relevant territory is the European Union. Nevertheless, the Court has clarified that, for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice (06/10/2009, C‑301/07, Pago, EU:C:2009:611, § 29-30). In the present case, in view of the facts, it is clear that the earlier EUTM at issue is known in a substantial part of the EU by a significant part of the relevant public regarding the footwear for which that trade mark is registered.

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence related to the European Union exclusively relates to various types of footwear, and there is no or little reference to any of the remaining goods in Classes 18 and 25. This is clear, for example, from the invoices, advertising materials and sales figures mentioned in the witness statement, in which only the former goods are mentioned.

In the light of all the foregoing, the Opposition Division concludes that the earlier trade mark, EUTM No 14 466 131, has a reputation in the EU for footwear.

b) 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 verbal component ‘sketch’ and ‘SKECHERS’ are meaningful for the English-speaking part of the public in the relevant territory. To take into account the semantic content of these elements in the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public (i.e. consumers in the United Kingdom, Ireland and Malta, as well as consumers who have sufficient knowledge of English as a foreign language), which would understand ‘sketch’ as a ‘drawing that is done quickly without a lot of details’ and ‘sketchers’ as the plural of ‘sketcher’, namely ‘someone who makes sketches (i.e. drawings)’. Spelling this word without the letter ‘T’ in the earlier mark does not alter the meaning, as it will either not be perceived or be perceived as a misspelling of ‘sketchers’; therefore, in either event it refers to the same word and concept.

As the semantic content does not convey any specific information about their objective characteristics, the meanings of the verbal elements ‘sketch’ and ‘SKECHERS’ do not diminish their distinctiveness. Rather, the relevant public will perceive these elements as fanciful.

The earlier mark is a figurative mark consisting of the verbal element ‘SKECHERS’, depicted in a slightly stylised black typeface. For reasons detailed above, this verbal element is meaningful and of average distinctiveness. The minimal stylisation of the letters is secondary and will be perceived as decorative; therefore, its impact on consumers will be very limited.

The contested sign is also a figurative sign, consisting of the verbal element ‘sketch’, which, as seen above, is arbitrary for the relevant public and thus of average distinctiveness. This verbal element is depicted in a fairly standard black typeface and set against a square yellow background, which will be perceived as decorative and of very limited impact.

Therefore, in both signs, it is the verbal component that will have the most impact on consumers, who will certainly refer to the signs by their (sole) verbal elements.

This means that, both visually and aurally, the signs are similar to at least an average degree, since the relevant consumer will notice the commonality in the signs’ distinctive verbal elements, in the letters ‘SKE(T)CH’ — which also constitute the beginning of the earlier mark and the whole verbal element in the contested sign — more than the additional ending, ‘ERS’, of the earlier mark or the signs’ figurative aspects, which have, at best, very limited impact.

Furthermore, as detailed above, the coinciding verbal distinctive element is fanciful for the goods at issue, and differences in longer words are less striking than they may appear to be in shorter (e.g. three-letter) words. Consequently, the relevant public will not notice whether there is an additional letter ‘T’ or not in the middle of the signs, and the main difference lies in the ending, ‘ERS’, of the earlier mark.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the earlier mark will be perceived as ‘persons drawing sketches’, both signs still refer to the same arbitrary concept of a ‘sketch’. Therefore, they are conceptually similar to a high degree. Account must be taken of the fact that the additional figurative aspects in the signs are secondary and that the contested sign’s purely decorative frame is incapable of introducing any relevant conceptual difference.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark has a reputation and the signs are similar to the extent that their sole verbal (and most distinctive) element, which has the most impact, either starts with or consists in the letters ‘ske(t)ch’. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51 and 52.)

In the present case, the signs under comparison are similar to the extent that the contested sign’s sole verbal (and arbitrary) element, ‘sketch’, is almost (i.e. with the exception of the letter ‘t’ in its middle) entirely included at the beginning of the earlier mark, ‘SKECHERS’. The earlier mark is inherently distinctive for the relevant goods and, moreover, enjoys an undeniable reputation for some of the goods (footwear), as specified above.

The conflicting goods are partly identical, partly similar and partly dissimilar to the opponent’s footwear in Class 25.

As regards the contested goods in Class 18, namely:

Class 18: Articles made from leather or imitation leather, namely handbags and travelling bags; handbags, purses and wallets; umbrellas; wheeled shopping bags; bags; travelling bags; handbags; briefcases; vanity cases; travelling sets and key cases made of leather; umbrella covers, rucksacks; purses, not of precious metal; music cases; school satchels; garment bags for travel;

an interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. In particular, the term ‘namely’, used, inter alia, in the applicant’s list of goods in Class 18 to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

The opponent’s goods footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

Goods such as the contested handbags, purses, etc. in Class 18 are related to articles of footwear in Class 25. This is because they are likely to be considered by the consumers as aesthetically complementary accessories to articles of clothing and footwear because they are closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for footwear manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered to be similar.

Other goods, such as the contested travelling bags, are considered dissimilar to footwear. Travelling bags are for carrying things when travelling and do not satisfy the same needs as footwear. 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. 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; the nature of these goods is very different from that of footwear in Class 25. They serve very different purposes (protection from rain versus covering/protecting the feet). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are also dissimilar.

Furthermore, as regards the contested goods in Class 25, namely:

Class 25: Men and women clothing; dresses; shirts; T shirts; sweatshirts; tops; jackets; scarves; belts; children clothing; knitwear; bathrobes; bibs, not of paper; headbands (clothing); boas (necklets); mufflers; socks; layettes (clothing); hoods (clothing); shawls; ties; corsets (underclothing); fur stoles; neckerchiefs; bathing caps and sandals; caps (headwear); gloves (clothing); underclothing; sports jerseys; mantillas; stockings; bow ties; pareos; pyjamas; underwear; swimming costumes; gymnastic and sports outfits;

footwear includes, as a broader category, the contested sandals in Class 25 and these goods are therefore considered identical. Furthermore, footwear serves the same purpose as the contested various kinds of clothing articles and headwear listed above: all are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets and target the same public. Consumers looking for clothing or headwear 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, headgear and footwear. Therefore, the goods are considered similar.

In the light of the foregoing, the conflicting goods are mainly similar, while some are identical and some are dissimilar to the opponent’s footwear in Class 25. Even in relation to these dissimilar goods for which there cannot be any likelihood of confusion pursuant to Article 8(1)(b) EUTMR (which was also invoked by the opponent), the relevant section of the public covered by these goods is the same or at least overlaps. Simply put, any of the contested goods may be sold to customers who are also buying the opponent’s footwear.

Considering the above, the degree of similarity established above between the signs for at least part of the relevant public and the overlap in the target public of the goods in question, it is feasible to assume that, when used in relation to the contested goods in Classes 18 and 25, including those held to be dissimilar (umbrellas, travelling bags and the like), it cannot be excluded that the contested sign, ‘sketch’, will bring the earlier mark, ‘SKECHERS’, to the minds of the relevant public. Furthermore, for the sake of completeness, the Opposition Division notes that the applicant did not submit any arguments to prove the contrary.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested sign, the relevant consumers will be likely to associate it with the earlier mark, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events. The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to its distinctive character and repute.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent argues that, in the event of using the contested sign on the goods in Classes 18 (various types of bags and cases mainly made of leather or imitation leather, umbrellas and umbrella covers) and 25 (clothing, headgear and footwear items), the applicant would benefit from the earlier mark’s power of attraction, reputation and prestige, and exploit the marketing effort expended by the opponent to create and maintain the good reputation of its mark. Therefore, there is a risk that the image of the earlier mark, ‘SKECHERS’, which enjoys a reputation for footwear, may be transferred to these contested goods, which are goods that can be bought by the same public and can be used simultaneously, making it far easier for the applicant’s sign to penetrate the market, thanks to its association with the earlier mark.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

To sum up, the earlier mark’s goods with a reputation mostly have a strong or sufficiently close connection with the contested goods. This connection is found to be naturally strong in relation to some of the contested goods in Classes 18 and 25, which are identical (by inclusion) or similar (e.g. sandals in Class 25, or clothing items and handbags in Class 18), whereas it may be considered somewhat less obvious for the remaining goods, which are dissimilar to footwear, such as travelling bags in Class 18 or umbrellas in Class 25.

Nevertheless, in view of the reputation of the earlier mark, and also considering the similarity between the signs, it is considered that the lower degree of connection between the goods with a reputation and some of the applicant’s goods is in any event sufficient to trigger a mental link in consumers’ minds and remind them of the earlier mark.

Therefore, taking into account all the relevant factors listed above, it cannot be ruled out that through the use of the contested sign the applicant may benefit from the attractiveness of the earlier mark: it seems reasonable that the image of the earlier mark and its reputation for footwear, as demonstrated by the evidence submitted, may be transferred to the aforementioned contested goods if they are marketed under the contested sign. In this way, the contested sign would receive an unfair ‘boost’, as a result of its being linked with the opponent’s mark in the minds of consumers, and exploit the marketing effort expended by the opponent without paying any financial compensation.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark in relation to all the contested goods.

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark and to the repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect, it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights (and evidence of their proof of use, where applicable) on which the opposition was based.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Aldo BLASI

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

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.