OPPOSITION No B 2 828 823

Procalçado-Produtora De Componentes Para Calçado, SA, Largo Alminhas das Barrancas, 97, 4415-343 Pedroso, Portugal (opponent), represented by Alvaro Duarte & Associados, Avª Marquês de Tomar, nº 44-6º, 1069-229 Lisbon, Portugal (professional representative)

a g a i n s t

Carmine Rotondaro, 39 Avenue de la Princesse Grace, 98000 Monaco (applicant), represented by Viviana Carini, Corso Cristoforo Colombo 10, 20144 Milan, Italy (professional representative).

On 30/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 828 823 is partially upheld, namely for the following contested goods and services:

Class 25: Heelpieces for footwear; Footwear soles; Insoles; Heels.

Class 35: Retailing and wholesaling, including via the internet, of soles for footwear.

2. European Union trade mark application No 15 735 418 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 opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 735 418 ‘FUREVER’, namely against some of the goods and services in Classes 16, 25 and 35. The opposition is based on European Union trade mark registration No 4 201 778 and European Union trade mark registration No 3 379 013 ‘FOREVER’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(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 opponent submit proof of use of the trade marks on which the opposition is based.

The date of filing of the contested application is 09/08/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 09/08/2011 to 08/08/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

European Union registration No 4 201 778

Class 16: Printed matter, printed advertising material, trade papers and publications.

Class 25: Soles for footwear.

Class 35: Advertising, television and radio advertising, organisation of exhibitions for commercial or advertising purposes, selling to others and retail of soles.

European Union registration No 3 379 013 ‘FOREVER’

Class 16: Printed matter, printed advertising material, trade papers and publications.

Class 35: Advertising, dissemination of advertising material (prospectuses and printed matter) and dissemination of advertising announcements.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 09/11/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 14/01/2018 to submit evidence of use of the earlier trade marks. This deadline was extended until 14/03/2018. On 14/03/2018, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence 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 to be taken into account is the following:

 Invoices (Docs 1 to 5): 61 invoices from 10/01/2013 to 21/03/2017 to clients in Austria, Belgium, France, Germany, Italy, the Netherlands, Slovakia, Spain and the United Kingdom. The invoices are mainly for soles and to a lesser extent for other products such as insoles, shoes, clogs, boots and half boots. On each page, the opponent’s name is visible in the heading, and the sign is clearly visible in the bottom-right corner.

 Samples of packaging (Docs 6 to 10): four pictures of footwear boxes and a sample of commercial paper, all bearing the sign .

 Advertising material (Docs 11 and 12): two catalogues in English, one for soles and insoles, dated 2013, and the other for soles, dated 2017. The sign is clearly visible on several pages.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The invoices show that the goods were sold in several European countries. This can be inferred from the multi-language specification of the products in the invoices, the currency mentioned (euros) and some addresses in, inter alia, Austria, France, Italy, Slovakia and Spain. Therefore, the evidence relates to the relevant territory.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the eight-month period after the end date of some invoices is very close in time to the relevant period and the goods sold in this period were certainly produced during the relevant period.

The invoices, the packaging and the catalogues provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the evidence shows use of the signs , and , which have the same structure and style as the registered sign . Therefore, the Opposition Division considers that the mark as used does not alter the distinctive character of the mark in the form in which it was registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by this earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 25: Soles for footwear.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

The other goods, such as shoes, clogs, boots and half boots, mentioned in some invoices are not covered by the earlier mark and thus cannot be taken as a basis of the opposition.

In relation to the sign ‘FOREVER’, on which the opposition is also based, the evidence furnished by the opponent does not include documents that could demonstrate that the registered goods and services in Classes 16 and 35 were put into use. The opponent did not argue that there were proper reasons for non-use either.

Therefore, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark ‘FOREVER’ was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017) insofar as it is based on European Union trade mark registration No 3 379 013 ‘FOREVER’.

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.

a) The goods and services

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

Class 25: Soles for footwear.

The contested goods and services, after the restriction introduced by the opponent on 14/03/2018, are the following:

Class 16: Packaging of paper and cardboard; envelopes and shopping bags of plastic; packages of plastic; labels of paper; adhesive labels; stationery.

Class 25: Heelpieces for footwear; footwear soles; insoles; heels.

Class 35: Advertising; business management; business organisation and management consultancy; organisation of exhibitions for commercial purposes; marketing services; online marketing; websites for online sale; retailing and wholesaling, including via the internet, of packaging of paper and cardboard, labels of paper, adhesive labels, stationery; heelpieces for footwear, soles for footwear, inner soles, heels.

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 16

The contested packaging of paper and cardboard; envelopes and shopping bags of plastic; packages of plastic; labels of paper; adhesive labels; stationery are goods made of paper and cardboard, and stationery and office requisites, while the opponent’s goods are the underside of items of footwear.

These contested goods have nothing in common with the opponent’s goods. They have different natures, intended purposes and methods of use. Their producers, distribution channels and relevant publics are also different. Furthermore, these goods are neither complementary nor in competition. Consequently, they are dissimilar.

Contested goods in Class 25

The contested footwear soles are identically contained in the opponent’s specification, albeit with a slightly different wording, as soles for footwear. Therefore, they are identical.

The contested heelpieces for footwear; insoles; heels are parts of footwear, as are the opponent’s soles for footwear. Therefore, these contested goods have the same nature and intended purpose as the opponent’s soles for footwear. Their producers, distribution channels and points of sale are the same, and they target the same public. These goods are similar to a high degree.

Contested services in Class 35

The contested advertising; business management; business organisation and management consultancy; organisation of exhibitions for commercial purposes; marketing services; online marketing; websites for online sale include services rendered by persons or organisations principally with the object of helping in the management of business affairs, as well as services rendered by advertising establishments primarily undertaking communication to the public. The opponent’s goods are parts of footwear. By their nature, services are generally dissimilar to goods. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, that is, movables or real estate. Services, on the other hand, consist of the provision of intangible activities. The goods and services under comparison have different natures, intended purposes and methods of use. Their producers or providers, distribution channels and relevant publics are also different. Furthermore, they are neither complementary nor in competition. Consequently, they are dissimilar.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the contested retailing and wholesaling, including via the internet of soles for footwear are similar to a low degree to the opponent’s soles for footwear.

However, the contested retailing and wholesaling, including via the internet, of packaging of paper and cardboard, labels of paper, adhesive labels, stationery; heelpieces for footwear, inner soles, heels and the opponent’s soles for footwear are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retailing and wholesaling consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are only similar to a high degree.

b) 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 various degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise. An average degree of attention will be paid during the purchase of the relevant goods and services.

c) The signs

	FUREVER
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 elements ‘FOR EVER’ of the earlier mark are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the public in Italy or Spain, which will be more likely to confuse the signs.

The earlier mark is a figurative sign consisting of the phrase ‘FOR EVER’, depicted in standard italic upper case letters, and a figurative element depicting the letters ‘fe’ in a rectangle at the left of the verbal element.

The element ‘fe’ in the figurative element of the earlier mark is the Spanish word for ‘faith’, but the relevant public, seeing it in combination with the verbal element ‘FOR EVER’, will consider it an acronym and will not attribute any meaning to it.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The earlier mark has no element that could be considered clearly more dominant than other elements.

The contested sign is the single-word mark, ‘FUREVER’.

The verbal components ‘FE’, ‘FOR EVER’ and ‘FUREVER’ in the marks have no meaning for the relevant public and are, therefore, distinctive.

Conceptually, the verbal elements of both signs are meaningless for the relevant public and the figurative element of a rectangle in the earlier mark does not have a semantic content. Therefore, in the absence of any meaningful elements, the conceptual comparison does not influence the assessment of the similarity of the marks.

Visually and aurally, the signs coincide in the letters/sounds ‘F*REVER’. They differ in the additional letters/sounds ‘FE’ of the earlier mark and in their second letters/sounds, ‘O’ versus ‘U’, which, however, are visually and aurally very close.

Considering that the only difference between the element with the strongest impact in the earlier mark and the sole element of the contested sign lies in a single letter/sound, the signs are visually and aurally similar to at least an average degree.

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

d) 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 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.

e) Global assessment, other arguments and conclusion

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).

The goods and services are partly identical or similar to different degrees and partly dissimilar, and target the public at large and professionals; the degree of attention will be average. Furthermore, the earlier mark is of average distinctiveness.

The signs under comparison are visually and aurally similar to at least an average degree and, as a conceptual comparison is not possible, the conceptual aspect has no influence on the assessment of their similarity. Therefore, the signs have no concepts that could serve to deflect consumers’ attention from their visual and aural similarities, arising from the letters that they have in common.

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).

Furthermore, the average consumer normally perceives a trade mark as a whole and does not pay attention to the various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

In his observations, the applicant argues that the earlier trade mark has a low degree of distinctiveness given that many trade marks include ‘FOREVER’. In support of his argument, the applicant refers to several trade mark registrations in registries in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘FOREVER’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, even 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

Claudia ATTINÀ

Loreto URRACA LUQUE

Rasa BARAKAUSKIENE

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.