OPPOSITION No B 2 859 380

Mirto Corporacion Empresarial, S.L., C/ Emilio Muñoz, 57, 28037 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Birgit Faller-Füllgraff, Kreuzmattstrasse 16, 6047 Kastanienbaum, Switzerland (applicant), represented by (F200) ASG Rechtsanwälte GmbH, Friedrichstr. 200, 10117 Berlin, Germany (professional representative).

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

DECISION:

1. Opposition No B 2 859 380 is partially upheld, namely for the following contested goods and services:

Class 25: Clothing; headgear; footwear.

Class 35: Retailing and wholesaling relating to clothing.

2. European Union trade mark application No 16 019 622 is rejected for all the above goods and services. It may proceed for the remaining 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 16 019 622 (figurative). The opposition is based on Spanish trade mark registration No 522 034 for the word mark ‘TRADICION’. 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 mark on which the opposition is based, namely Spanish trade mark No 522 034 for the word mark ‘TRADICION’.

The date of filing of the contested application is 09/11/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 09/11/2011 to 08/11/2016 inclusive.

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

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

Class 25: Clothing and footwear.

According to Article 10(3) EUTMDR, 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 20/12/2017, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 25/02/2018 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended until 25/04/2018 upon the opponent’s request. On 09/04/2018, within the set time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Annex 1: an affidavit signed on 24/02/2018 by the owner of the opponent’s company in which he states that he has used the earlier trade mark in the sense of sales of clothing in the territory of Spain.

Annex B: documents provided by the opponent as proof of use:

Document 1: several catalogues featuring the opponent’s mark ‘TRADICION’ (dated between 2011 and 2016), mainly containing illustrations of men shirts in various models, colours and textiles; some of the catalogues bear in addition the series numbers of particular models of shirts, as well as their price references.

Documents 2-6: a sample of invoices (25 in total) concerning the sales of shirts, issued by the opponent for the time period between 2012 and 2016 and addressed to various clients in Spain, in particular in Almeria, Barcelona, Cordoba, Coruña, Madrid, Salamanca, Seville, Tenerife, etc. The sign ‘TRADICIÓN’ appears on their headers. Furthermore, the documents also contain price catalogues concerning the relevant years, these indicating prices of different lines of clothing, in particular shirts. As additionally explained by the opponent, the series numbers under which the opponent’s products are sold (present both in the invoices and in the price catalogues) may be verified by a simple cross-check.

Document 7: samples of fabric and cardboard labels bearing the opponent’s mark, for instance ; according to the opponent, such labels are affixed to the pieces of clothing (shirts) and, in addition, the mark is featured on the packaging boxes of the products.

Document 8: a sample of invoices (dated between 2009-2013), issued to the opponent by external Spanish companies, namely different suppliers of fabrics that the opponent purchases for the purposes of its manufacturing process.

Document 9: balance sheets of the opponent’s company ‘TRADICION Y FUTURO S.L.U’, concerning the time period 31/12/2011-31/12/2017, and mainly referring to the opponent’s operational business, and particularly sales, in Spain.

Document 10: samples of printed matter (envelopes, invoices and delivery notes) bearing the mark ‘TRADICION’ and used in relation to the office activities of the opponent’s company.

For the sake of completeness, it has to be noted that the materials are in Spanish; however, they are either accompanied by translation (when in the context of a written statement) or are self-explanatory to the extent that they are documents of a common character in the commerce or illustrative materials.

Overall, the documents introduced as evidence of proof of use show that the place of use is Spain. This can be inferred especially from the language of the documents (Spanish) and from some addresses of clients and suppliers in Spain, as referred to above. Therefore, the evidence relates to the relevant territory. Furthermore, the evidence relates to the time frame set above and it shows sales of the opponent, along with other financial information for that period.

Even though not particularly diverse and complete in its character, the submission of the opponent, that is to say, the invoices, seen in conjunction with the price lists and the catalogues, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. It has to be noted that the opponent provided samples of financial information (catalogues- or invoices-wise) concerning each of the years from 2011 to 2016, hence demonstrating a steady and continuous commercial activity throughout the relevant period.

In addition, the catalogues, as well as the samples of packaging/labelling show that the word mark ‘TRADICION’ has been used in accordance with its function and as registered for goods it covers under its scope of protection.

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).

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 covered by the 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: Clothing, namely shirts.

No references or whatsoever have been made with respect to footwear, for which the mark has been also registered. Furthermore, the witness himself states in the affidavit of Annex A that its sales exclusively relate to clothing. Consequently, the Opposition Division will only consider the abovementioned clothing, namely shirts in its further examination.

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: Clothing, namely shirts.

The contested goods and services are the following:

Class 25: Clothing; headgear; footwear.

Class 35: Retailing and wholesaling relating to clothing, footwear, headgear and fashion accessories; presentation of goods and companies; advertising, marketing and promotional services.

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.

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

Contested goods in Class 25

The contested clothing, includes, as a broader category, the opponent’s clothing, namely shirts. 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 headgear; footwear are similar to the opponent’s clothing, namely shirts. These goods may be used in combination with each other to achieve a particular fashion look or maintain a fashion style and, globally, they coincide in their aesthetic purpose. Furthermore, they are often manufactured by the same undertakings and commercialised through the same channels to the same groups of consumers.

Contested services in Class 35

In principle, 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. The same findings apply with respect to the professional wholesale services. Therefore, the contested retail and wholesaling relating to clothing are similar to a low degree to the opponent’s clothing, namely shirts.

However, similarity between retail, or wholesale, 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 or wholesale services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case with respect to the remaining retailing and wholesaling relating to footwear, headgear and fashion accessories, since the goods subject to trade are at most similar to the opponent’s goods. These goods and services are, therefore, dissimilar.

Furthermore, the contested presentation of goods and companies; advertising, marketing and promotional services all refer to professional business services provided in the field of marketing and advertising. These services usually consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Consequently, these services are fundamentally different in nature and purpose from the manufacture of goods. The fact that the opponent’s goods may appear in advertisements is insufficient for finding similarity. Therefore, the remaining contested services are also dissimilar to the opponent’s goods.

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 differing degrees) are directed at the public at large, as well as at business customers with specific professional knowledge to the extent that wholesale services are concerned. The degree of attention is average.

c) The signs and distinctiveness of the earlier mark

TRADICION
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Furthermore, the distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

In the present case, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation; therefore, the distinctiveness of the earlier mark has to rely on its distinctiveness per se. However, the applicant contests the earlier mark’s distinctiveness stating that it represents a generic term with a clear advertisement purpose in relation to clothing products, that is to say, it will be seen as an indication of long-lasting tradition of (clothing) manufacturing or a reference to the traditional/classic style of the clothes.

Generally, the element ‘TRADICION’ of the earlier mark will be understood by the relevant public as ‘a custom or belief that has existed for a long time’. Firstly, the Opposition Division notes that the term is used as a noun rather than an adjective (e.g. ‘traditional’); hence, it cannot be deemed an obvious qualifier of a clothing style, or with other words, it does not correspond to the generic role the applicant attributes to that word. Indeed, it cannot be completely ruled out that the word ‘TRADICION’ may bring into mind an association with the other concept outlined above. However, even in that respect the word as such, without any other context provided, touches upon potential nature/characteristics in a very vague manner but does not convey any clear message to consumers what to expect from the goods at issue. Furthermore, it is a burden of the applicant, in cases where it challenges the earlier right, to provide a coherent line of reasoning why and how the distinctiveness of the earlier mark may be affected by the perception of the relevant public. In the present case, the applicant did not provide any evidence that the word ‘tradition’ (in its Spanish version) is a commonplace word or a generic term in the field of clothing manufacturing. Therefore, the Opposition Division does not find any reason to presume so and the applicant’s argument in that respect has to be dismissed. The word ‘TRADICION’, despite its possibly evocative character for some, is not descriptive or in any other way weak and the earlier mark is endowed with a normal degree of distinctiveness.

Due to its high proximity with the Spanish word ‘TRADICION’, the word ‘TRADIZION’ of the contested sign will be understood with the exact same concept discussed above and references regarding its distinctiveness are made to those findings; therefore, it is deemed of a normal distinctiveness for the respective goods and services. In addition, the element above the word resembles the letter ‘Z’ and has no relation to the goods in question either; hence, it is also distinctive. Additionally, the stylisation of ‘TRADIZION’ may be considered plain as a whole. When perceiving the mark, consumers will rather notice that the letter ‘Z’ in this element is a minimised version of the element ‘Z’ above. Consequently, the impact of that element ‘Z’ in the mark, will be slightly reduced, as it will serve to additionally focus the attention of consumers on ‘TRADIZION’.

For the sake of completeness, it has to be noted that the element ‘Z’ is the dominant element of the sign since it occupies a more central position and is of a much bigger size.

Visually, the signs coincide in the letter sequence ‘TRADI*ION’ and only differ in their middle letters, ‘C’/‘Z’, occupying non-prominent positions in the signs. They additionally differ in the element ‘Z’ of the contested sign, which is, however, an enlarged reproduction of the letter ‘z’ in the verbal element. Overall, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of their conflicting verbal elements since the middle-positioned letters ‘C’/‘Z’ will be uttered identically by the Spanish speakers. However, on account of the pronunciation of the differing element ‘Z’ in the contested sign, the signs will be aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning produced by the common concept of the verbal elements, the signs are conceptually highly similar.

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

d) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU: C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services in question are partly identical and similar to different degrees and partly dissimilar. The degree of attention is average and the earlier mark, as established above, has a normal degree of distinctiveness.

The conflicting signs are visually similar to an average degree and aurally and conceptually highly similar to the extent that they share the verbal elements ‘TRADICION’/’TRADIZION’. 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). Moreover, the signs’ verbal elements differ in only one letter, positioned in less eye-catching position, namely in the middle between other identical letters. Consequently, it is reasonable to assume that consumers may not exactly recall the manner in which the signs were depicted, insofar they may have kept only the concept of their verbal elements, namely the meaning of ‘tradition’. In the light of the above established similarities between the signs, even considering that the goods in question are mostly visually consulted before purchase, the further visual differences lying in particular in the additional element of the contested sign, ‘Z’, as well as in its stylisation, are considered of a less impact as to counteract the similar overall impression that the signs produce. As said above, the ‘Z’ of the contested sign rather reinforces the depiction of the same letter within the verbal element.

Given the principle of interdependence, account is taken of the fact that even though a low degree of visual similarity was found between the services in Class 35 and the opponent’s goods, the signs are still sufficiently similar as to trigger an association of economic relation between the signs for these goods and services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to varying degrees) to those of the earlier trade mark.

The rest of the contested 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 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

Inés GARCÍA LLEDÓ

Manuela RUSEVA

Teodora TSENOVA-PETROVA

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.