OPPOSITION No B 2 883 422

Le Shark Apparel Limited, Unit 14, Park Seventeen, M45 8FJ Whitefield, Manchester, United Kingdom (opponent), represented by Mewburn Ellis LLP, City Tower 40 Basinghall Street, EC2V 5DE London, United Kingdom (professional representative)

a g a i n s t

Pirama Trade Sales Group, S.L., Partida de Martino 50 Polg 2, 03295 Elche – Alicante, Spain (applicant), represented by Alberto Paz Espuche, Agilmark Patentes & Marcas, S.L., Parque Científico de la Universidad Miguel Hernández de Elche, Avda de la Universidad, s/n, Edific Quórum IV, 03202 Elche (Alicante) (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 883 422 is partially upheld, namely for the following contested goods and services

Class 25: Clothing; footwear; headgear.

Class 35: Wholesale services in relation to footwear; wholesale services in relation to clothing; retail services connected with the sale of clothing and clothing accessories; retail store services in the field of clothing; retail services in relation to footwear.

2. European Union trade mark application No 16 181 802 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 16 181 802 . The opposition is based on European Union trade mark registration No 12 684 502  and the United Kingdom non-registered trade mark ‘LE SHARK’. The opponent invoked Article 8(1)(b), (4) and (5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods and services

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

Class 18: Bags, handbags, suitcases, travelling bags; umbrellas, wallets and purses.

Class 25: Clothing, footwear, headgear.

Class 35: Retail, online retail, mail order and wholesale services connected with the sale of clothing, footwear, headgear, belts, tights and hosiery, pyjamas, underwear and underclothing, lingerie, shapewear, scarves, gloves; retail, online retail, mail order and wholesale services connected with the sale of spectacles, sunglasses, jewellery, clocks, watches, watch bands, watch straps, cufflinks, tie pins, bracelets, necklaces, rings, bangles, bags, handbags; retail, online retail, mail order and wholesale services connected with the sale of suitcases, travelling bags, wallets, purses, umbrellas; retail, online retail, mail order and wholesale services connected with the sale of cosmetics, fragrances and perfumery, toiletries and personal care products; retail, online retail, mail order and wholesale services connected with the sale of make-up, sun care and sun tanning preparations, essential oils, artificial nails, adhesives for affixing artificial nails; retail, online retail, mail order and wholesale services connected with the sale of preparations for cleaning cosmetic brushes, make-up removal preparations, artificial eyelashes and eyebrows, adhesives for affixing artificial eyelashes and eyebrows, hair styling appliances, body art tools, emery files, eyelash curlers; retail, online retail, mail order and wholesale services connected with the sale of hair cutting and removal implements, manicure and pedicure tools, manicure and pedicure sets; retail, online retail, mail order and wholesale services connected with the sale of cases and covers for mobile phones, cases and covers for laptops and tablet computers, spectacle cases, cases for sunglasses; retail, online retail, mail order and wholesale services connected with the sale of temporary tattoos, key rings, key charms, mobile phone charms; retail, online retail, mail order and wholesale services connected with the sale of mirrors, make-up mirrors, personal compact mirrors, pocket mirrors; retail, online retail, mail order and wholesale services connected with the sale of cosmetic and toiletry utensils and applicators, cosmetic brushes and sponges, hair brushes and combs, cosmetic powder compacts, portable perfume diffusers, cosmetic bags and wash bags; retail, online retail, mail order and wholesale services connected with the sale of hair ornaments and hair fastening articles, parts and fittings for all of the aforesaid goods; information, advisory and consultancy services relating to all of the aforesaid services.

The contested goods and services are the following:

Class 25: Clothing; footwear; headgear.

Class 35: Wholesale services in relation to footwear; wholesale services in relation to clothing; retail services connected with the sale of clothing and clothing accessories; retail store services in the field of clothing; retail services in relation to footwear; advertising; marketing services; office functions; business administration services for processing sales made on the internet.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 25

The contested clothing; footwear; headgear are identically contained in both lists of goods.

Contested services in Class 35

The contested wholesale services in relation to footwear; wholesale services in relation to clothing; retail services connected with the sale of clothing and clothing accessories; retail store services in the field of clothing; retail services in relation to footwear are identically contained in both lists of services, despite a slight difference in wording.

The contested advertising; marketing services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc. The contested office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing, administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment. Finally, the contested business administration services for processing sales made on the internet are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. The opponent’s retail and wholesale services include the services rendered around the actual sale of the goods, which are defined in the explanatory note to Class 35 of the Nice Classification by the terms ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’. It is clear that, apart from the above mentioned reasons, that retail and wholesale services of the opponent and the opponents products are dissimilar to the applicant’s services as they have a different nature and purpose than the opponent’s services. They are not normally offered by the same providers and, in addition, the relevant public and distribution channels are different. Therefore, these services are dissimilar.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise in the retail and wholesale services. 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). In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier right is a figurative trade mark in black and white which consists of the two word elements ‘Le Shark’ written in black and mildly stylised, lower case typeface, with the exception of the letters ‘L’ and ‘S’ which are capitalized and there is also a figurative depiction of a shark.

The contested sign also consists of two verbal elements in blue and bold capital characters ‘BLUE SHARK’, and two blue parallel lines above these words. The right line is thinner and shorter than the left line, both are slightly curved, inclined to the left side and are getting thinner towards their top end, due to the word element probably will be perceived as two shark fins by a sizable part of the English-speaking public under analysis. Since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public taken into account in the relevant territory.

The common word ‘SHARK’ is an English word which will be understood as a long-bodied chiefly marine fish with a cartilaginous skeleton, a prominent dorsal fin, and toothlike scales (https://en.oxforddictionaries.com/definition/shark) by the English speaking public of the European Union. However, as the word ‘SHARK’ is not descriptive, allusive, or otherwise weak for the relevant goods and services, it is distinctive for all of the public concerned.

The word ‘Le’ of the earlier mark is widely known by the relevant public as a French definite article and will be understood as such; therefore, it merely introduces the distinctive word ‘Shark’.

The expression ‘BLUE SHARK’ may be perceived to a particular sub-species of shark, namely a long, slender shark with an indigo-blue back and white underpart, found typically in the open sea and it is considered distinctive.

Regarding the figurative elements, they both reinforce the word element ‘shark’, however at this point it should be stressed that 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 and contested sign have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the distinctive word ‘Shark’. However, they differ in the slightly stylisation of the word elements, the words ‘Le’ of the earlier mark and ‘BLUE’ of the contested sign and the figurative elements of each sign which, as referred above reinforce the word elements.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters of the distinctive word ‛shark’, present identically in both signs. The pronunciation differs in the sound of the letters of the words ‛le’ of the earlier mark and ‘blue’ of the contested sign. The figurative elements of the marks are not subject to a phonetic assessment.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Furthermore, the figurative elements of both signs consisting of the image of a shark or a part of it, namely, the fin, will be perceived as such and reinforce the same concept of a shark. Therefore, as the signs will be associated with similar meanings, as both evoke the concept of a ‘shark’, the signs are conceptually similar to 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.

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.

According to the opponent, the earlier trade mark has acquired a high distinctive character, is well known and has a reputation in the European Union in connection with part of the goods on which the opposition is based, namely clothing. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition 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).

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.

On 10/11/2017, within the substantiation period, the opponent submitted the following evidence:

• Annex 1: Witness Statement of the Finance Director of Le Shark Apparel Limited including the following exhibits which explain the adoption and use of ‘LE SHARK’ trade marks in relation to clothing. Third party websites, through which LE SHARK products are sold, or listed and the advertising expenses are mentioned.

• Exhibit AWS1 – Printouts dated 10/2017 from https://trademarks.ipo.gov.uk and https://bases-marques.inpi.fr/ regarding ‘LE SHARK’ trade marks.

• Exhibit AWS2 – Article from http://www.manchestereveningnews.co.uk/ titled “Menswear firm SRG hopes new HQ will suit it to a Tee” dated 6/02/2014. It is mentioned that SRG has recently acquired ‘Le Shark’, a brand which was popular in the 80s, which SRG plans to revive (in relation to menswear).

• Exhibit AWS3 – Printouts of the articles ‘Le Shark –Menswear Brand Relaunch’, dated 12/03/2015, written by Tokyo Laundry and ‘Le Shark 2015 Collection’ in relation to casualwear. It is possible to distinguish the logo of the shark on some of the items on sale. The price appears in pounds. A LinkedIn post entitled ‘Win some Le Shark goodies’, in order to celebrate the launch of the new brand Le Shark’. The post includes a picture of a window with the sign and menswear with the logo of the shark. Dated 12/03/2015.

• Exhibit AWS4 – Screenshots, undated, from www.srgplc.com and www.tokyolaundry.com according to the opponent from 05/10/2017. ‘Le shark’ appears below the items and the clothing items show the logo of the Shark. The price appears in pounds.

• Exhibit AWS5 – Selection of historical printouts showing for sale of LE SHARK products (clothing) on www.tokyolaundry.com for the period 2015-2017. The price is in pounds.

• Exhibit AWS6 – Design documents showing some of the ways in which the LE SHARK trade marks are used on products, swing tickets and packaging. LE SHARK Logo is featured prominently on labels inside some clothing items, such as t-shirts, shirts, hoodies, cardigans, jumpers, jackets, and jeans, for example positioned on the inner part of the garment around the neck line. The trade mark ‘ ’ appears on men’s underwear, too and on its packaging in the following way ‘ ’.

• Exhibit AWS7 – Printouts dated 26/10/2017 from www.tkmaxx.com. The trade mark ‘LE SHARK’ appears in connexion to men’s clothing, including details about its price in pounds. The last page corresponds to the sale of Calvin Klein men’s underwear in pounds.

• Exhibit AWS8 – Selection of printouts from third party websites, for example Amazon, all dated in 2017. The trade mark ‘LE SHARK’ and the logo of the shark appear in connection with men’s clothing. At the bottom of one of the pages appear the following trade marks: .

• Exhibit AWS9 – A printout from the DV8 Fashion website dated 2015-2017. ‘Le shark’ appears as well-known for quality and innovation product development. The trade mark ‘LE SHARK’ appears below each product‘, namely stylish polo shirts along with details about product’s sizes, categories and prices in pounds. Some of them bear the logo of the shark.

• Exhibit AWS10 – Printouts from www.asos.com dated 18/08/2017. The trade mark ‘LE SHARK’ appears in the document in connexion with men’s clothing. The logo of the shark appears in the majority of the items.

• Exhibit AWS11 – A selection of invoices issue to clients in Finland, France, Greece, The Netherlands, Poland, Portugal and the Republic of Ireland from 2015 to 2017 followed by documents including catalogue codes related to those invoices of men’s clothing with details about the material from which they are manufactured, sizes and colour. The trade mark ‘ ’ appears on the tops of these documents the trade mark appears on the top of the page, although it doesn’t seem to appear on the clothes themselves. The prices are in Euros and pounds depending on the country.

• Exhibit AWS12 – A selection of invoices issued to clients in the United Kingdom from 2014 to 2017, followed by documents including catalogue codes related to those invoices of men’s clothing with details about the material from which they are manufactured, sizes and colour. The trade mark ‘ ’ appears on the top of these documents and the logo of the shark in some pictures of the items. The prices are in Euros and pounds depending on the country.

• Exhibit AWS13 – Undated document including photographs of paper bags, folders etc. including ‘ ’, ‘ ’.

• Exhibit AWS14 – Invoice relating to the expenses of the attendance at Panorama in Berlin from 19 to 21/01/2016. The brand ‘Le Shark’ appears in the document.

• Exhibit AWS15 – A photograph of stand at Panorama fair in Berlin from 19 to 21/01/2016. The trade mark ‘ ’ appears in a stand that appears to sell or exhibit clothing.

• Annex 2: Printout from Burton Menswear website, dated 11/07/2017, showing the trade mark ‘LE SHARK’ in connection with men’s clothing for sale. The prices of the items are in pounds.

• Annex 3: Printout from TJ Hughes website, dated 2017, showing the trade mark ‘LE SHARK’ in connection with men’s clothing for sale. The prices of the items are in pounds.

• Annex 4: Screenshot from the DV8 website dated 16/03/2015 including the image but the logo of the shark is not distinguishable in the pictures of the items.

• Annex 5: Printout from the Ethical Sourcing page of the S.R.G. website which is undated. The earlier mark does not appear in the document.

• Annex 6: Extracts from Kerly's Law of Trade Marks and Trade Names, 15th Edition.

• Annex 7: Copy of the decision T-303/08 Tresplain Investments Ltd v OHIM, ECLI:EU:T:2010:505.

• Annex 8: Copy of the decision of IPEC in Bocacina Ltd v Boca Cafes Ltd [2013] EWHC 3090.

• Annex 9: A printout of a search of ‘LE SHARK’ on www.pinterest.co.uk, a web and mobile application social network including a small selection of images of men’s clothing items some of them bearing the logo of the shark which the opponent claims have been “pinned” by UK users of Pinterest but with no further proof to show who actually pinned these posts. The date of the document is 11/08/2017.

Later on in the proceedings, on 05/06/2017 i.e. within the time limit in which to submit observations in reply, and outside the substantiation period, the opponent submitted the following additional evidence:

• Annex A: Copy of submissions filed by the applicant, dated 11/12/2017 in Opposition B 2 882 077 by Nautica Apparel, Inc. to EUTM application 16 181 802 ‘BLUE SHARK’.

• Annex B: Article from www.srg-plc.com detailing how the opponent sponsored the athlete Don Whiley in the Triathlon World Championships in September 2015. The trade mark apperars on the photos.

• Annex C: Article from The Bolton News dated 6/10/2015. Page 2 of 5 states that Whiley managed to get some sponsorship for Bolton Tri Club and local firms Champion Mouldings in Radcliffe and SRG Imports (Le Shark) in Whitefield (http://www.tokyolaundry.com/mens/collections/le-shark to make the trip. There is no reference to the products covered by the earlier mark.

• Annex D: Extract from the 6th Edition of Which PLM, published in 2016. The trade mark ‘LE SHARK’ appears as one of RG’s own brands in relation to fashion in the world of clothing.

• Annex E: Extract from The Sunday Times HSBC International Track 200 in which states the following: “this Manchester firm now produces clothing for UK retailers such as Next, River Island and Tesco. It also sells its own brands, including Tokyo Laundry, Le Shark and Dissident, to wholesalers and high-street retailers in Europe, Australia and the US, generating exports of £22.3m in 2015”.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Even assessed in combination, despite showing a certain use of the trade mark in relation to some of the goods in Class 25 for which it is registered (namely men’s clothing), the documents do not provide the Opposition Division with sufficient information concerning the mark's recognition on the market. A witness statement including information about the company, some articles recognising that the brand was very popular in the eighties, printouts of Pinterest, third party web site sales and invoices are insufficient to indicate, the market share of the trade mark or the extent to which the trade mark has been promoted or the awareness of the mark. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. The opponent could have filed more supporting documentation, for example, declarations made by independent parties attesting to the reputation of the mark, verified or verifiable data as to the market share held, opinion polls and market surveys, certifications and awards, and other commercial documents, audits and inspections, etc. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has an enhanced degree of distinctiveness through 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 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

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, §22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are identical and the services are partly identical and partly dissimilar. The degree of attention of the relevant public, composed of the public at large and business customers is average. The distinctiveness of the earlier mark is normal.

The signs have the word ‘SHARK’ in common, which is the most distinctive element of the signs. The signs differ in the verbal element ‘LE’ of the earlier mark which is less distinctive than the element ‘SHARK’ and ‘BLUE’ of the contested mark, as well as the figurative elements, colours and slight stylisation of the word elements of the signs.

Although more attention is usually paid to the beginning of a trade mark, in the present case, the conceptual similarity is decisive, as the marks refer to the same (and normally distinctive) concept of a shark, and the first element of the earlier mark is merely a determiner that precedes a noun and in the contested sign specifies the characteristic of the particular shark or of a sub-species, a blue shark. On account of this conceptual link, it could be assumed that the marks simply identify different type of sharks.

Furthermore, 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).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the word shark. In support of its argument the applicant has attached a list of several trade mark registrations in the European Union and the United Kingdom, such as ‘ISHARK’, ‘SHARK FASHION’, ‘SHARK ZONE’ or ‘SHARK ONE’.

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 on 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 the widespread use of, and have become accustomed to, trade marks that include the word shark. 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 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 to those of the earlier trade mark.

The rest of the contested services are dissimilar. As the similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services, cannot be successful.

The examination of the opposition will now proceed further based on the other ground claimed by the opponent, namely Article 8(5) 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.

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 trade mark; 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 abovementioned 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.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

It was concluded that the evidence furnished by the opponent provided no information on the degree of recognition of the earlier mark and therefore the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition on this ground must be rejected.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent also based the present opposition on the earlier non-registered sign ‘LE SHARK’ used in the course of trade in the United Kingdom in respect of clothing, according to its arguments filed in support of the Opposition on 10/11/2017 and as confirmed by the arguments filed on 08/06/2018 (out of the substantiation period).

The Opposition Division shall only examine this earlier right on the grounds of Article 8(4) EUTMR for the services advertising; marketing services; office functions; business administration services for processing sales made on the internet for which the opposition fails on the other grounds invoked.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested sign have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the contested trade mark was filed on 20/12/2016. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for advertising; marketing services; office functions; business administration services for processing sales made on the Internet.

On 10/11/2017, the opponent filed the evidence as already detailed above, in support of the use in the course of trade of its non-registered sign ‘LE SHARK’ in the United Kingdom.

a) The right under the applicable law

As regards the applicable law in the United Kingdom, the Opposition Division notes that the opponent made references to the relevant legal provisions and their content as well as provided some extracts from case law in relation to the tort of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods/services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, that there is misrepresentation by the defendant, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods/services originate from the opponent. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

Misrepresentation

As follows from the Opposition Division’s reasoning regarding the opposition grounds of Article 8(1)(b) and 8(5) EUTMR, the conditions indicated by the opponent itself for the opposition to be successful on the grounds of Article 8(4) EUTMR - and in particular as regards the relevant connection that the consumers will make between the services of the contested sign and the goods and services of the earlier right with a confusion as to the origin of the respective goods and services, or any apparent misrepresentation by the applicant to the public which would be likely to lead the public to believe that services offered by the applicant originate from the opponent -, have not been fulfilled for the above cited contested services.

In the present case, the opponent’s arguments have not convinced the Opposition Division that the opponent is entitled to prohibit the use of the contested sign, according to the relevant national law. In particular, the opponent has not been able to demonstrate that use of the contested mark in relation to advertising; marketing services; office functions; business administration services for processing sales made on the Internet in Class 35 would lead or potentially lead the public to believe in some way that the source of these contested services coincides with that of the opponent’s goods. Such market players operate on a market completely different from the opponent; therefore, they target very different customers, namely the average consumer and business customers in need of advertising, marketing, administration of businesses and office functions. Comparing these two groups of customers with the opponent’s ones, namely the general average public, it is indeed highly unlikely that consumers of these different goods and services would be misled to think that the services at issue to be marketed under the contested sign originate from the opponent. There exists no overlap whatsoever between these markets and, this practically excludes the possibility of any risk of misinterpretation.

It is admitted that the conditions under Article 8(1)(b) and 8(4) are different, reference is made to the judgment of 11/06/2009, LASTMINUTE.COM., T-114/07 and T-115/07, EU:T:2009:196, § 93 where it is expressly put that “a likelihood of confusion is therefore a condition common to Article 8(1)(b) of Regulation No 40/94 and the action for passing off, expressly provided for by the former and inherent in the condition of misrepresentation of the goods and services concerned laid down by the latter”. The said judgment then goes on to conclude, under § 95 that “the examination of the existence of misrepresentation for the purposes of national law is not limited to a comparative examination of the two marks at issue, but extends to consideration of other factors such as, in this case, the circumstances in which the goods/services are offered in the United Kingdom…”. In the present case, the circumstances under which the relevant goods/services are offered to consumers are completely different for the reasons explained above.

Therefore, the opponent’s submissions do not prove, for the purpose of Article 8(4) EUTMR, that the conditions of protection vis-à-vis the contested sign have actually been met.

Consequently, in relation to the remaining contested services, advertising; marketing services; office functions; business administration services for processing sales made on the Internet in Class 35 as there will be no misrepresentation, one of the requirements of passing-off is not fulfilled and, as a result, the opposition must be rejected as unfounded with regard to passing-off in the United Kingdom and under Article 8(4) CTMR.

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

Nicole CLARKE

Maria Clara IBAÑEZ FIORILLO

Edith Elisabeth VAN DEN EEDE

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.