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OPPOSITION DIVISION |
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OPPOSITION No B 2 893 991
Industria De Diseño Textil, S.A. (Inditex, S.A.), Avenida de la Diputación "Edificio Inditex", 15142 Arteixo (A Coruña), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
Skanfriends GmbH, Achtern Diek 2, 24576 Bad Bramstedt, Germany (applicant), represented by Bonsmann · Bonsmann · Frank, Kaldenkirchener Str. 35ª, 41063 Mönchengladbach, Germany (professional representative).
On 28/09/2020, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 893 991 is partially upheld, namely for the following contested goods:
All the goods in Class 21.
2. European Union trade mark application No 16 316 713 is rejected for all the above goods. It may proceed for the remaining services in Class 35.
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 16 316 713, namely against all the goods and services in Classes 21 and 35. The opposition is based on Spanish trade mark registration No 2 957 705 and EUTM registration No 1 977 289, both for the word mark ‘OYSHO’. The opponent invoked Article 8(1)(b) and 8(5) 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, namely for the Spanish trade mark registration No 2 957 705 and EUTM registration No 1 977 289, both for the word mark ‘OYSHO’.
The date of filing of the contested application is 03/02/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain and in the European Union from 03/02/2012 to 02/02/2017 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:
EUTM registration No 1 977 289
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Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; materials for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; works of art, of porcelain, terra-cotta or glass; baby baths (portable); shaving brushes; non-electrical heaters for feeding bottles, shaving-brush holders; shoe-brushes; shoemakers' lasts; shoe-trees (stretchers); shoe horns; shirt stretchers; tie presses; appliances for removing make-up (non-electric); comb cases; gardening gloves; polishing gloves; gloves for household purposes; piggy banks, not of metal; soap dishes; toilet cases, trouser stretchers; trouser presses, perfume sprayers and vaporizers; pegs and drying racks for washing; toilet utensils; toilet paper holders; sponge holders. |
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Class 35: Advertising; business management; business administration; office functions; commercial retailing; management assistance by the issuing and administration of charge cards; organization of exhibitions for commercial or advertising purposes; modelling for advertising or sales promotion; publication of advertising texts; shop-window dressing; commercial management assistance in relation to franchising; demonstration of goods; organization of trade fairs for commercial or advertising purposes; sales promotion (for others); auctioneering.
Spanish trade mark registration 2 957 705
Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; works of art, of porcelain, terra-cotta or glass; baby baths, portable; shaving brushes; heaters for feeding bottles, non-electric, shaving brush stands; brushes for footwear; shoe trees, shoe stretchers; shoe horns; clothes stretchers; tie racks; make-up removing appliances, non-electric; comb cases; gardening gloves; polishing gloves; gloves for household purposes; piggy banks, not of metal; soap holders; toilet cases; trousers hangers; trousers presses; perfume vaporizers; clothes pins, drying racks for washing; utensils for toilet purposes; toilet paper holders; sponge holders; all the aforesaid goods being included in this class.
Class 25: Ladies', men's, and children's ready-made clothing, footwear (non-orthopedic), headgear; motorists' and cyclists' clothing; bibs, not of paper; headbands (clothing); dressing gowns; bathing suits, swimsuits; bathing caps and sandals; boas (necklets); underwear; babies' pants; scarves; boots for sports and beach shoes; hoods (clothing); shawls; belts (clothing); money belts (clothing); wet suits for water-skiing; neckties; corsets (underclothing); sashes for wear; fur stoles; girdles; foulards; caps (headwear); peaked caps; gloves (clothing); waterproof clothing; underclothing; mantillas; stockings; socks; bandanas (neckerchiefs); babies' napkins of textile; furs (clothing); pyjamas; soles for footwear; heels; veils (clothing); suspenders; dresses of paper; gymnastics and sports suits; layettes (clothing); collars (clothing); singlets; mittens; ear muffs (clothing); inner soles; bow ties; beach wraps; cuffs, wristbands (clothing); dress shields; masquerade costumes; beach clothes; cap peaks; housecoats; pockets for clothing; socks suspenders; stocking suspenders; petticoats; tights and leotards; aprons (clothing); headdress for wear; wooden shoes; frilled caps; garters; coats; esparto shoes or sandals; non-slipping devices for boots and shoes; bath robes; bath slippers; birettas; blouses; teddies (undergarments); berets; footmuffs, not electrically heated; lace boots; boots; boot uppers; studs for football boots; halfboots; fittings of metal for shoes and boots; tips for footwear; welts for boots and shoes; heelpieces for boots and shoes; drawers (clothing), pants; shirts; shirt yokes; shirt fronts; chemisettes (shirt fronts); tee-shirts; bodices (lingerie); vests, waistcoats; jackets (clothing); fishing vests; stuff jackets (clothing); combinations (clothing); slips (undergarments); detachable collars and collars (clothing); clothing of leather; clothing of imitations of leather; shower caps; half socks; skirts; ready-made linings (parts of clothing); overcoats, topcoats; gabardines (clothing); gymnastic shoes; jerseys (clothing); pullovers; sweaters; liveries; muffs (clothing); footwear uppers; trousers; parkas; pelerines; pelisses; gaiters, spats; leggings; knitwear and hosiery (clothing); clothing for gymnastics; outerclothing; sandals; saris; underpants; hats; brassieres; wimples; togas; gaiter straps, trouser straps; suits; turbans; frocks; slippers; sports shoes; all the aforesaid goods being included in this class.
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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 03/05/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent initially until 08/07/2019, which has been extended until 08/09/2019 (Sunday) to submit evidence of use of the earlier trade marks.
A time limit that expires on a day on which the Office is not open for receipt of documents or on which ordinary post is not delivered in the locality in which the Office is located (Saturdays, Sundays and public holidays) is extended to the first working day thereafter. The extension is automatic but it applies only at the end of the time limit (12/05/2011, R 924/2010‑1, whisper power (FIG. MARK) / WHISPER). Therefore, the opponent’s submission was submitted within the time limit.
Consequently, on 09/09/2019, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Attachment
1: A
copy of the EUIPO’s decision of 29 September 2017 in opposition
proceeding No. B2739665, which refused protection for international
mark designating
the EU No. 1268990
(YOSHIYO),
acknowledging the high degree of distinctive
character
of
the
earlier
mark
OYSHO
in
respect of goods in Class 25. Additionally, the opponent submitted a
copy of the EUIPO Opposition Division’s decision of 5 January 2016
in opposition proceeding No. B002511213 against EU trade mark
application No. 13457338 OLISHO, which partially refused the
contested mark in classes 6, 7, 8, 11, 14, 16, 18,
19,
20,
21,
24,
25,
26,
27,
28
and
35
based
on
Articles
8.1b)
and
8.5
of
the
old
CTMR,
also
acknowledging the well-known character of the earlier OYSHO marks
(international marks designating European Union trade mark No.
1070527 and No. 9170527 and European Union trade mark No. 1977289
OYSHO) in relation to lingerie. a
copy of the decision of the EUIPO’s Second Board of Appeal of 29
May 2015 in case R 864/2014-2. In said decision the Board
acknowledges the repute and well-known character of the OYSHO mark in
relation to goods in Class 25 and refuses the contested trade mark
No. 9419102 OOYO (fig) for Classes 18, 24, 25, 35, and partially in
respect of class 38, pursuant to the provisions of Articles 8.1b) and
8.5 EUTMR. The earlier mark whose well-known character and repute
were expressly acknowledged in the European Union is EU trade mark
no. 1977289 OYSHO, on which the instant opposition is based, although
the acknowledgement, as such, also extends to the rest of the
opposing OYSHO marks. The same Attachment also refers to the SPTO
decisions in which the well- known character and repute of the OYSHO
marks has also been confirmed. Copies
of favourable decisions against Spanish trade mark application no.
3048699/8 “Aisha Sensual Boutique”, Spanish trade mark
application no. 3017853/3 “Aisha”, and finally against Spanish
trade mark application no. 2660378/0 “Oashi Sophisticate”, have
been submitted with their respective translations.
Attachment 2 contains information on the OYSHO marks taken from the opponent’s website regarding the brand itself. This material shows that the mark was created in 2001 and that there are over 600 OYSHO stores operating in over 65 markets. It also includes screenshots from the website of OYSHO, www.oysho.es, showing that the mark is used for clothing, in particular, lingerie, various fragrance diffusers and cosmetics.
Attachment 3 contains a sworn declaration signed by Antonio Abril Abadín, General Counsel and Secretary of the Board of INDUSTRIA DE DISEÑO TEXTIL, S.A. (INDITEX S.A.), in which he declares that the OYSHO mark has been subject to continuous use for all of the goods and services in classes 21, 25 and 35 of the Nice International Classification in, among others, the territory of the European Union and Spain, from 2001 up to the present. It is therefore a trademark that has been present in the national and international market for more than 19 years. Furthermore, this attachment contains information about Inditex group, Information about OYSHO and the number of hits when searching OYSHO (Google results – 13 000 000) and delivery notes issued by the opponent to various clients (stores) based in various EU Member States, in particular France, Italy, Portugal during the period 2014 – 2017 in relation to various items of clothing (panties, T-shirts, trousers, socks, leggings). At the bottom of the delivery notes there are single items (2, 3, or 4) enumerated in relation to glass/metal bottles. In this attachment, the opponent included photos of stores located at airports or in commercial galleries in order to prove the use of the earlier marks in relation to services in Class 35. Furthermore, the opponent submitted an OYSHO Brand Book containing information regarding sales in shops and online sales in relation to the goods in Class 25, press notes, mainly from 2015 regarding OYSHO online retailing services, all photos refer to various goods in Class 25 but also numerous invoices and delivery notes referring to the relevant period in relation to the goods in Class 25 in Spain, Portugal, Italy, France, Greece, Romania, Poland; photos showing the earlier marks in relation to clothing items published in editions 2015 of magazines, such as ‘Woman’, ‘Vogue’, ‘Telva’.
Attachment 4: contains a table showing a list of the locations of all the OYSHO stores in the European Union, where it can be seen that they total more than 300.
Attachments 5 – 6 include an extract from a study Leading Brands of Spain Forum, issued by ICEX España Exportación e Inversiones (Spanish Institute for Foreign Trade, a Spanish government agency that promotes Spanish exports and investment in Spain) “El Atlas de la Moda” (Atlas of Fashion) 2000-2016, they provide a broad overview of the international impact of Spanish fashion, with information on eighty of the biggest brands in the sector, including Inditex’s OYSHO brand. Furthermore, the Asociación Nacional para la Defensa de la Marca (ANDEMA) (National Brand Defence Association) issued a certificate on 21 July 2014 to the effect that the OYSHO mark may be considered well-known in Spain. Another Certificate was issued on 21 March 2018 by ANDEMA stating that the OYSHO trade mark should be regarded as a well-known mark within the meaning of Article 8.2 of the Spanish Trade Mark Act No. 17/2001 of 7 December 2001 and a reputed trade mark within the meaning of Article 9.2.c) of Regulation 2017/1001 on the European Union Trade Mark. Attachment 6 consists of a copy of those certificates and a translation of the same.
Attachment 7: shows the vast number of hits for OYSHO marks appearing together with various items of clothing (mainly pyjamas, lingerie) on social networks in 2018. There are over 3 million followers (“Me gusta” in Spanish) on Facebook, 1.7 million followers (“Seguidores”) on Instagram, 115,000 followers (“Seguidores”) on Twitter and more than 17,000 followers (“Seguidores”) on Pinterest.
Attachment 8: Extract from the Annual Report for the year 2014. This document shows the results achieved by Inditex in the 2014 fiscal year. The sales represented by important numbers show that the figure of 575 OYSHO stores in 40 different markets was reached.
Attachment 9: Extract from the Annual Report for the year 2015. This document shows the results achieved by Inditex in the 2015 fiscal year which represent considerable amounts.
Attachment 10: Extract from the Annual Report for the year 2016. This document shows the results achieved by Inditex in the 2016 fiscal year which represent the figure of 636 OYSHO stores in 42 different markets and was reached.
Attachment 11: Extract from the Annual Report of the year 2017. The report shows the results of Inditex group: 25,336 million euros (page 8 of the report). OYSHOS’s results in the same period are 570 million euros (page 21 of the report). The document reflects that the year ended with a total of 456 OYSHO stores opened in 39 markets in Europe alone (page 13 of the report), a total of 670 stores in around 65 markets around the world and 33 online markets (page 21 of the report).
Attachment 12: Extract from the Annual Report of the year 2018. The report shows the results of Inditex group: 26.145 million euros (page 20 of the report). OYSHOS’s results in the same period are 570 million euros (page 18 of the report). The document reflects that the year ended with a total of 678 OYSHO stores opened in 55 markets (page 13 of the report), a total of 670 stores in around 65 markets around the world and 34 online markets (page 18 of the report).
Attachment 13: Inditex Press kit for the year 2018. It refers to important Inditex data, such as number of stores - 7,475 stores in 96 markets and in 47 online markets (page 2 of the Dossier). Regarding the OYSHO marks in relation to clothing, it is shown that it operates in 65 countries and in 33 online markets with sales reaching 570 million (page 4 of the dossier).
Attachment 14: contains information from the oysho website on the celebration of the Vogue Fashion Night Out in Madrid, on the opening of a store in Athens, on the “Carrera de la Mujer” running race event in Barcelona and Madrid (with OYSHO as official sponsor of such event, handling the design of the corresponding merchandising goods and of the official vest, providing race registration facilities at Oysho stores and organizing the training sessions on the Friday before the race), on the cooperation with the company Mr. Wonderful and on the Free yoga classes in Madrid, (6th edition), Barcelona (7th edition) and Milan (1st edition), likewise sponsored by OYSHO.
In addition to these promotional activities and examples of event sponsorship, OYSHO has recently conducted other promotional and sponsorship activities: The Oysho Yoga Tour 2017 further established its credentials as the benchmark international yoga event, bringing together over 30,000 yoga lovers since it was first held in Barcelona in 2012. The tour visited Barcelona, Madrid, Milan, Doha, Moscow, Paris, Tunisia, Istanbul, Dubai and Bali in 2017, perfectly complemented by the Gymwear Yoga line; The Oysho Surf’s Up Tour was held during the months of May and June 2017 in Barcelona, Lisbon, Paris and Athens and was attended by four surfing professionals from around the world: Lucía Martiño, Teresa Almeida, Victoria Vergara and Evaggelia Tsiorlida; Oysho Sport Hub: A pop up gym concept designed to provide free and interactive fitness training, which was organised for the first time in 2018. It is a temporary gym installation, which has visited Barcelona, Moscow, Madrid, Istanbul and Milan.
Attachment 15 contains various press clippings from the EU in which reference is made to the OYSHO mark:
- Inditex eleva el beneficio al 28% en los nueve primeros meses’ dated 06/06/2013 ‘El Pais’ the mark ‘OYSHO’ has been mentioned among Zara, Massimo Dutti, Pull & Bear, Bershka;
- ‘Inditex supera a H&M y se convierte en la segunda firma textil del mundo. ‘El Mundo’ 2013;
- ‘Inditex incrementa su beneficio un 10% respecto al año pasado’, dated 24/04/2014 in Diario de Cadiz, online versión;
- Further articles referring to the commercial success of the opponent´s company ‘Inditex’;
- ‘Looks otoño 2016’, en Mujer activa dated 05/06/2013 – Web de la Moda;
- ‘Pull & Bear, Massimo Dutti, Bershka, Stradivarius y Oysho también vendrán online’ dated 24/042012 in Europa Press online;
- ‘Oysho: llega el verano con Clean Collection 2012’, dated 20/03/2012 in Ella hoy’, online versión, in relation to lingerie and beach clothing;
- ‘La moda que nos viste en casa’, dated 31/03/2012 in Lne.es, online, OYSHO trade mark shown in relation to lingerie, casual clothing and ‘relax’ clothing;
- ‘Oysho’ esta dedidacdo en 100% a satisfacer la demanda de ropa interior, ropa casual y prendas diferentes para acompañarte en momentos de relax y ocio;
- ‘Oysho (Inditex) apuesta por potenciar su línea deportiva con la gama Mountain’, dated 13/11/2014 in Europa Press, Economia, online versión;
- ‘Oysho’ (Inditex) abrirá su tienda efímera en Tarifa este verano’, dated 13/11/2014 in Europa Press, Economia, online versión;
- ‘Oysho’ (Inditex) amplía su gama de productos con una línea dedicada a mujeres embarazadas’, dated 13/11/2014 in Europa Press, Economia, online versión;
- ‘Equipate para la nieve con la nueva colección ski de Oysho’, dated 06/11/2018 in ‘El Pais’, moda section, online versión;
- ‘Oysho se alia con el gigante Everlast para entrar en boxeo’, dated 10/09/2018, colleciones para el ski, el surf, el yoga, fitness ballet in modaes.es;
- ‘Oysho: la Moda al servizio dello Yoga’, dated 09/09/2014 on www.smartweek.it;
- Article in Greek regarding ‘Oysho’ mark, without translation, dated 17/07/2015 published in ‘Business News’;
- ‘Moda Beachwear 2015: I bikini delle collezioni Desigual e Oysho, dated 13/07/2015 on www-contattonews.it;
- ‘Oysho aposta na cultura’, dated 25/06/2015 on www.activa.sapo.pt;
- ‘Lato w Oysho w gorącym, zmysłowym wydaniu’, dated 05/07/2015 on http: www.zeberka.pl;
- ‘Inditex fait entrer Oysho et Pull & Bear sur Lamoda pour toucher la Russie, dated 24/10/2018 on http://fr.fashionnetwork.com.
Attachment 16: contains a copy of the Brand Finance annual report, dated April 2018, on the most valuable Spanish brands worldwide. The OYSHO brand is ranked as the 51st in 2018 and 54 in 2017, thereby highlighting, once again, its degree of recognition at the national level.
Attachment 17: ‘Looks tendencia para ir al Gym de la mano de Oysho’, dated 05/03/2017, the earlier marks appear in relation to sport clothing. There is one photo showing a crystal bottle under the earlier marks.
Assessment of the evidence
Place of use
Trade marks must be used in the territory where they are protected (European Union for EUTMs, the territory of the Member State for national marks or Benelux for Benelux marks and the territories of the relevant countries for international registrations). As the Court held in ‘Leno Merken’ ‘the territorial scope of the use is only one of several factors to be taken into account in the determination of whether that use is genuine or not’ (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 30).
If the earlier mark is a European Union mark or international registration designating the European Union, it must be used ‘in the Union’ (Articles 18(1) and 47(2) EUTMR). Following ‘Leno Merken’, Article 18(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the Union (paragraph 44). In territorial terms and in view of the unitary character of the EUTM, the appropriate approach is not that of political boundaries but of market(s). Moreover, one of the aims here pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.
As the Court indicated in ‘Leno Merken’, it is impossible to determine a priori and in abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (paragraph 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (paragraph 58).
Therefore, applying the argumentum a minori ad maius, the material filed by the opponent, in particular, numerous invoices, delivery notes and various press articles dated within the relevant period and addressed to clients based mainly in Spain, Portugal, Italy, France and press articles show that the place of use of the earlier trade marks are these countries, in particular Spain, and considering the size of market and the widespread use shown, this is indeed sufficient to show also use in the European Union.
Time of use
The evidence filed by the opponent refers mostly to the use of the earlier marks made during the relevant period.
Extent of use
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa.
In this regard, it has to be evaluated whether, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market. The trade mark has to be used for goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37). This does not mean that the opponent has to reveal the total volume of sales or turnover figures.
Use does not have to be made during a minimum period of time to qualify as ‘genuine’. In particular, use does not have to be continuous during the relevant period of five years. It is sufficient if the use had been made at the very beginning or end of the period, provided that this use was genuine (16/12/2008, T-86/07, Deitech, EU:T:2008:577).
The exact decisive threshold proving genuine use cannot be defined out of context. The turnover and volume of sales of the product must always be assessed in relation to all the other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. Use need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).
In the opinion of the Opposition Division, the evidence mentioned above, in particular, numerous invoices, sale orders issued regularly in relation to clothing items within the relevant period as well as numerous press articles published regularly in popular magazines and newspapers in relation to the abovementioned goods show convincingly that the opponent continuously invested in, promoted and further expanded a relevant market share of clothing for women.
Nature of use
The Opposition Division observes from the material filed by the opponent that the earlier marks are referred to in the evidence in the form in which they are registered.
There is no doubt that the earlier trade marks were used at least for some of the goods at hand in line with the essential function of the trade mark, namely to indicate the commercial origin of these goods.
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.
Whereas, in general, classification does not serve more than administrative purposes, it is relevant, in order to assess the nature of the use, to establish whether the goods for which a mark has been used fall under the general indication.
Therefore, in the view of the above, the Opposition Division considers that, taking into account the evidence in its entirety, the documents submitted by the opponent are sufficient to prove genuine use of the earlier marks in question during the relevant period in Spain and in the European Union for various clothing items for women (lingerie, sport clothing, casual clothing) which fall under the general category of the opponent´s Ready-made clothing for women in Class 25 in case of the EUTM registration and Ladies' ready-made clothing in Class 25, in case of the Spanish registration. The evidence submitted by the opponent does not show that the earlier marks have been genuinely used for the remaining goods in Class 25.
The Opposition Division notes that single items of crystal/metal bottles mentioned in the delivery notes (2, 3, or 4 items) and singles photos of these goods published on the opponent´s website are not enough to demonstrate that the earlier marks have been genuinely used in relation to them. The same conclusion applies to the photos of single items of fragrance diffusers and cosmetics published on the opponent´s website. Therefore, taking into account the evidence as a whole, the Opposition Division considers that the opponent did not prove the use of its marks for any of the goods in Class 21.
As to the services in Class 35, the opponent only submitted photos of ‘Oysho’ stores located in various commercial galleries or airports in Spain. In this regard, the Opposition Division notes that the opponent did not submit any business documentation that might show that the opponent was indeed seriously involved in providing the services in question for the third parties. The photos referred to above merely show that the opponent opened new stores in places of greater attendance of people such as commercial galleries or airports in order to promote sales of its own products. The same conclusion must be drawn in relation to organisation of promotional events such as yoga seances in various European cities, as mentioned in the evidence presented above.
Consequently, the Opposition Division will only consider the abovementioned goods registered in the further examination of the opposition, namely Ready-made clothing for women in Class 25 in case of the EUTM registration and Ladies' ready-made clothing in Class 25, in case of the Spanish registration.
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 and for which the opponent has proven genuine use are the following:
Spanish trade mark registration:
Class 25: Ladies' ready-made clothing.
EUTM registration:
Class 25: Ready-made clothing for women.
The contested goods and services are the following:
Class 21: Aquarium hoods; Refuse containers; Litter scoops for use with pet animals; Draining trays; Dish drying racks; Squeegees for dishes; Aerosol dispensers, not for medical purposes; Foil food containers; Aluminium moulds [kitchen utensils]; Aluminum water bottles, empty; Fitted holders for wiping, drying, polishing and cleaning paper; Fitted dispensers for wiping, drying, polishing and cleaning paper; Toilet paper dispensers; Cases adapted for toilet utensils; Cosmetic bags [fitted]; Anti-static cloths for household use; Apple corers; Apothecary jars; Electric make-up removing appliances; Non-electric make-up removing appliances; Applicator sticks for applying makeup; Eye make-up applicators; Applicators for cosmetics; Applicators for applying eye make-up; Aquaria and vivaria; Oil burners (aromatherapy); Dental cleaning articles; Glass storage jars; Storage jars; Ramekins; Eyebrow brushes; Fitted picnic baskets; Pouring spouts; Cookie [biscuit] cutters; Baby bath tubs; Baking containers made of glass; Cookie sheets; Paper baking cups; Baking utensils; Bakeware; Pastry brushes; Baking dishes; Bath brushes; Bath sponges; Bathroom pails; Fruit muddlers; Battery operated lint removers; Battery-powered dental flossers; Modified sheet glass [not for building]; Tumblers; Cup holders; Mug trees; Basins [receptacles]; Containers for flowers; Household containers; Food containers for pet animals; Beverageware; Bins for household refuse; Containers for household or kitchen use; Containers for bird food; Containers for dentifrices; Canister sets; Repotting containers for plants; Painted glassware; Watering devices; Laminated flat glass [not for building]; Brooms; Broom handles; Knife rests for the table; Cutlery trays; Beer glasses; Holders for flowers; Window-boxes; Flower baskets; Flower bowls; Flower syringes; Flower pots; Flower pot holders; Saucers for flower pots; Holders for flowers and plants [flower arranging]; Flower vases; Floor brushes; Non-electric floor polishers; Cloth for washing floors; Scrubbing brushes; Candy boxes; Bowls for candy; Bulb basters; Roasting dishes; Frying pans; Frying pan lids; Cooking skewers; Eyeglass cleaning cloths; Bread boards; Lunch boxes; Bread bins; Bread baskets for household purposes; Bread tongs; Ironing boards; Ironing board covers, shaped; Flat-iron stands; Ironing cloths; Brushes; Brushes and other articles for cleaning, brush-making materials; Brushes for household purposes; Brushes for pets; Make-up brushes; Heads for electric toothbrushes; Dishwashing brushes; Busts of porcelain, ceramic, earthenware or glass; Butter dishes; Butter-dish covers; Butter coolers; Cupcake molds; Food steamers, non-electric; Double boilers; Hot pots, not electrically heated; Steamer baskets; Double heat insulated containers for food; Boxes of earthenware; Wired plate glass, not for building; Wire baskets [cooking utensils]; Pomanders [containers]; Tealight burners; Fragrant oil burners; Nozzles for watering hose; Nozzles for hosepipes; Egg cups; Egg separators, non-electric, for household purposes; Buckets; Glass jars [carboys]; Seed tray inserts; Disposable paperboard bakeware; Disposable lids for household containers; Disposable table plates; Containers for ice; Ice cream scoops; Ice buckets; Ice scoops [barware]; Ice cube molds for refrigerators; Non-electric ice crushers; Electric lint removers; Electric apparatus for killing insects; Electric hair combs; Electric combs; Periodontal irrigators [electric] for personal use; Lint removers, electric or non-electric; Electric rotating hair brushes; Bottle openers, electric and non-electric; Corkscrews, electric and non-electric; Toothbrushes, electric; Electronic pet feeders; Plug-in diffusers for mosquito repellents; Enamel boxes; Enamelled jars; Enamelled glass; Enamelled glass, not for building; Strawberry hullers; Coffee pots; Porcelain ware; Vinegar cruets; Cruets; Cruet sets for oil and vinegar; Chopsticks; Japanese style personal dining trays or stands (zen); Chopstick cases; Cases adapted for cosmetic utensils; Fibreglass thread, not for textile use; Colored sheet glass [not for building]; File brushes; Hip flasks; Chamois leather for cleaning; Dripping pans; Fireproof dishes; Figurines [statuettes] of porcelain, ceramic, earthenware or glass; Strainers for household purposes; Finger bowls; Fish scoops; Sheets of glass, other than for building; Flasks; Bottles; Plastic bottles; Bottle brushes; Bottle stands; Bottle buckets; Bottle coolers; Bottle openers incorporating knives; Tenderizers [kitchen utensils]; Meat tongs; Lint brushes; Dispensers for liquids for use with bottles; Dispensers for liquid soap; Moulds [kitchen utensils]; Cookery molds [moulds]; Ice cube molds [moulds]; Plastic ice cube moulds; Chip pan baskets; Deep fryers, non-electric; Fruit presses, non-electric, for household purposes; Fruit cups; Lint rollers; Litter trays for birds; Gardening gloves; Garden syringes; Cookie jars; Confectioners' molds; Utensil jars; Vegetable corers; Vegetable dishes; Vegetable mashers; Stamped glass; Pressed glass; Household or kitchen utensils; Tableware, cookware and containers; Stands for dishes; Drinks containers; Beverage coolers [containers]; Beverage stirrers; Spice racks; Spice jars; Spice grinders (Non-electric -); Shakers for spices; Watering cans; Nozzles for watering cans; Glass cups; Glasses [receptacles]; Glasses, drinking vessels and barware; Glass decanters; Glass jars; Works of art made of glass; Glass pans; Glass plates; Sculptures made from glass; Glass stoppers for bottles; Glassware for household purposes; Grilling planks of wood; Barbecue forks; Oven mitts; Non-electric griddles; Grills [cooking utensils]; Grill supports; Barbecue tongs; Plungers for clearing blocked drains; Squeegees [for household use]; Cutting boards for the kitchen; Towel racks; Bottle openers [hand-operated]; Hand operated sushi makers; Coffee grinders, hand-operated; Garlic presses (Hand-operated -); Hand-operated food grinders; Noodle machines, hand-operated; Cleaning instruments, hand-operated; Salad drainers (Hand-operated -); Mills for household purposes, hand-operated; Pepper mills, hand-operated; Hand cut crystal glassware; Towel rails and rings; Tempered glass [not for building]; Utensils for household purposes; Gloves for household purposes; Thermally insulated flasks for household use; Meal trays; Shirt stretchers; Mess-tins; Oven heat resistant pads; Heat protective glass (Semi-worked -); Skewers of wood; Honey servers; Trouser presses; Trouser stretchers; Heat-insulated containers; Thermal insulated bags for food or beverages; Japanese cast iron kettles, non-electric (tetsubin); Japanese rice bowls not of precious metal (chawan); Japanese rice bowls [chawan]; Japanese rice bowls of precious metal (chawan); Japanese nests of food boxes [jubako]; Japanese style soup serving bowls (wan); Japanese style tea-serving pots (kyusu); Japanese style tea-serving pots of precious metal (kyusu); Japanese nests of food boxes [jubako]; Coffee mugs; Coffee filters, non-electric; Coffee scoops; Coffee grinders; Fireplace brushes; Non-electric candelabra; Jugs; Decanters; Decanter tags; Coasters, not of paper or textile; Potato ricers; Cheese boards; Cheese-dish covers; Rotary cheese graters; Casseroles [dishes]; Saucepan lids; Boxes for dispensing paper serviettes; Dust-pans; Goblets; Ceramics for household purposes; Ceramic hollowware; Candle extinguishers; Candelabra [candlesticks]; Candle rings; Candle rings, not of precious metal; Candle rings of precious metal; Cherry pitters; Clothes brushes; Clothing stretchers; Ornamental sculptures made of porcelain; Garlic cellars; Cooking pot sets; Cooking pots; Cooking pots and pans [non-electric]; Cooking utensils, non-electric; Combined lids for kitchen containers; Preserve glasses; Baskets for household purposes; Demijohns; Corkscrews with knives; Tie presses; Crystal [glassware]; Jars; Crumb brushes; Crumb trays; Crumb collecting instruments [non-electric]; Cake tins; Cake trays; Cake molds [moulds]; Kitchen containers; Kitchen utensils; Cake brushes; Basting brushes; Cake servers; Graters for kitchen use; Kitchen paper holders; Kitchen sponges; Cooking strainers; Scrapers (kitchen implements); Cake stands of non-metallic materials; Cooking funnels; Melon ballers; Food cooling devices, containing heat exchange fluids, for household purposes; Coolers [non-electric containers]; Wine buckets; Refrigerating bottles; Isothermic bags; Works of art of porcelain, ceramic, earthenware or glass; Plastic bowls [household containers]; Schnapps glasses; Liqueur flasks; Cordial glasses; Air fragrancing apparatus; Corn cob holders; Flower-pot covers, not of paper; Manual toothbrushes; Jam pots; Beer mugs; Medicated dental floss; Flour sifters; Reusable stainless steel water bottles; Reusable stainless steel water bottles sold empty; Reusable plastic water bottles sold empty; Knife rests; Knife blocks; Knife boards; Milk churns; Milk pans; Cocktail shakers; Blenders for food [non-electric]; Blenders, non-electric, for household purposes; Mixing spoons [kitchen utensils]; Furniture dusters; Mop pails; Mortars for kitchen use; Muffin tins; Dustbins; Water apparatus for cleaning teeth and gums; Refillable coffee capsules; Refillable tea capsules; Place mats, not of paper or textile; Tablemats, not of paper or textile; Unworked glass; Dusting apparatus, non-electric; Heaters for feeding bottles, non-electric; Autoclaves, non-electric, for cooking; Non-electric egg crackers for household use; Non-electric canners [pressure cookers]; Non-electric bottle openers; Non-electric meat grinders; Non-electric lint removers; Traps (Non-electric -) for insects; Non-electric coffee frothers; Coffeepots, non-electric; Non-electric coffee drippers for brewing coffee; Non-electrical coffee grinders; Coffee makers, non-electric; Non-electric garlic peelers; Cooking utensils for use with domestic barbecues; Non-electric food mixers; Non-electric milk frothers; Kitchen grinders, non-electric; Grinders (Non-electric -); Periodontal irrigators [non-electric] for personal use; Non-electric pasta makers for domestic use; Apparatus for wax-polishing, non-electric; Polishing apparatus and machines, for household purposes, non-electric; Beaters, non-electric; Whisks, non-electric, for household purposes; Wax-polishing appliances, non-electric, for shoes; Hurricane lamps (non-electrical); Carpet sweepers (Non-electric -); Portable cool boxes, non-electric; Waffle irons, non-electric; Non-electric wall sconces [candle holders]; Kettles, non-electric; Crushers for kitchen use, non-electric; Lemon squeezers; Hand towel dispensers, other than fixed; Rolling pins, domestic; Nutcrackers; Nutcrackers not of precious metal; Fruit bowls; Sonic oscillating brushes for skincare; Boxes for dispensing paper towels; Waste paper baskets; Cups of paper or plastic; Paper plates; Paper cups; Perfume sprayers [sold empty]; Personal dispensers for pills or capsules for domestic use; Skillets; Spatulas; Pepper pots; Whistling kettles; Plant syringes; Plant baskets; Picnic boxes; Picnic crockery; Fitted picnic baskets, including dishes; Pill boxes for personal use; Pizza peels; Cups made of plastics; Plastic ice pop forms; Plastic funnels; Plastic water bottles [empty]; Dinner mats of plastics material; Vinyl place mats; Polishing materials for making shiny, except preparations, paper and stone; Polishing cloths; Serving scoops [household or kitchen utensil]; Boxes of porcelain; Porcelain mugs; Works of art made of porcelain; Porcelain articles for decorative purposes; Pudding moulds; Mop pails incorporating mop wringers; Cleaning articles; Frames for drying and maintaining the shape of clothing items; Lawn sprinklers; Incense burners [domestic]; Incense stick holders; Smoke absorbers for household purposes; Graters; Reamers for fruit juice; Scouring sponges; Rags [cloth] for cleaning; Rice cooking pots [non-electric]; Japanese style cooked rice scoops [shamoji]; Glass, unworked or semi-worked, except building glass; Sushi rolling mats; Mixing bowls; Cream jugs; Siphons for cream; Sake cups; Salad spinners; Salad bowls; Salad tongs; Salt mills; Salt cellars; Collector plates; Sandwich boxes; Gravy boats; Scrapers for household purposes; Brushes for cleaning tanks and containers; Bowls [basins]; Scoops for household purposes; Slotted spoons; Abrasive instruments for kitchen [cleaning] purposes; Abrasive pads; Whisks; Carving boards; Pressure cookers; Chocolate molds; Basting spoons [cooking utensils]; Hard brooms; Shoe horns; Shoe cloths; Shoe scrapers incorporating brushes; Shoe trees [stretchers]; Boot stretchers of wood; Dish covers; Dishes; Dishes [household utensils]; Plastic bowls [basins]; Sponges for household purposes; Soap containers; Soap brackets; Sieves [household utensils]; Champagne buckets; Cocktail stirrers; Serving spoons; Table plates; Serving pots; Serving tongs; Table napkin holders; Dispensers for serviettes; Japanese style cooked rice scoops [shamoji]; Sifters [household utensils]; Siphon bottles for carbonated water; Syrup jugs; Soufflé dishes; Spaghetti measurers; Spaghetti tongs; Coin banks; Spatulas for kitchen use; Non-electric ice cream makers; Vessels of metal for making ices and iced drinks; Menu card holders; Dispensers for cling film [other than fixed]; Paper towel dispensers; Dispensers for paper wipes [other than fixed]; Dispensers for detergents; Soap dispensers; Straw dispensers; Dispensers for cellulose wipes, for household use; Skewers (cooking utensil); Confectioners' decorating bags [pastry bags]; Rinsing pails; Dishcloths for washing dishes; Rinsing tubs; Mug racks; Teapot stands; Holders for tumblers; Statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; Dusting cloths [rags]; Steak weight; Steak weights; Pizza stones; Stew-pans; Pestles for kitchen use; Pot plant support sticks; Soup bowls; Japanese style earthenware mortars [suribachi]; Tableware, other than knives, forks and spoons; Services [dishes]; Cups; Tea caddies; Tea infusers; Teapots; Tealight holders; Tea cosies; Tea services not of precious metal; Tea services of precious metal; Tea services [tableware]; Tea strainers; Drip mats for tea; Pastry boards; Pastry cutters; Pot lids; Pots; Scouring pads; Potholders; Scourers for saucepans; Pan scrapers; Pot stands; Pie pans; Cake domes; Pie servers; Cake rings; Cake stands; All-purpose portable household containers; Portable pots and pans for camping; Portable beverage coolers; Portable beverage container holders; Carving forks; Funnels; Drinking vessels; Drinking glasses; Drinking glass holders; Straws for drinking; Tankards; Dryer balls; Feeding troughs; Drip preventers for bottles; Coasters (tableware); Saucers; Unworked and semi-worked glass, not specified for use; Vacuum jars; Vacuum pumps for wine bottles; Vases; Nebulizers for household use; Containers for ice, for household purposes; Food storage containers; Mop wringers; Heat insulated domestic vessels of glass; Heat insulated domestic vessels of porcelain; Heat insulated domestic vessels of earthenware; Laundry baskets; Clothes-pegs; Laundry baskets for household purposes; Laundry sorters for household use; Rotary washing lines; Drying racks for laundry; Clothes drying hangers; Washtubs; Water bottles; Empty water bottles for bicycles; Water bottles for bicycles; Water syringes for spraying plants; Pet feeding and drinking bowls; Cotton ball jars; Wine aerators; Wine strainers; Wine bottle cradles; Coolers for wine; Wine pourers; Wine glasses; Pipettes [wine-tasters]; Wine jugs; Woks; Zesters; Sushi rolling equipment; Sugar bowls; Sugar scoops; Sugar tongs.
Class 35: Updating of advertising material; Preparation of advertisements; Preparation of publicity publications; Advertising services provided via the internet; Marketing; Online advertisements; Publication of advertising literature; Publication of publicity materials; Advertising; Advertising, including on-line advertising on a computer network; Advertising in periodicals, brochures and newspapers; Demonstration of goods; Import-export agency services; Retail services in relation to cookware; Wholesale services in relation to cookware; Retail services in relation to metal hardware; Wholesale services in relation to metal hardware; Retail services in relation to furnishings; Wholesale services in relation to furnishings; Retail services in relation to cutlery; Wholesale services in relation to cutlery; Retail services in relation to tableware; Wholesale services in relation to tableware; Retail services in relation to food cooking equipment; Wholesale services in relation to heating equipment; Retail services in relation to cooling equipment; Wholesale services in relation to cooling equipment.
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 21
All the contested goods in this Class mainly include small, hand-operated utensils and apparatus for household and kitchen use, as well as cosmetic and toilet utensils, glassware and certain goods made of porcelain, ceramic, earthenware, terra-cotta or glass. They have nothing in common with the opponent´s items of clothing for women in Class 25. The goods in question have a different nature and intended purpose, are produced by different undertakings and sold through specific distribution channels. Furthermore, they are neither complementary, nor in competition. Therefore, they are considered dissimilar.
Contested services in Class 35
The contested services in this Class aim at supporting or helping other businesses to do or improve business. They are therefore in principle directed at the professional public. They are far removed from the opponent´s goods in Class 25.
The contested advertising 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 enabling them to acquire a 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.
As to the contested publication services, they refer to the activity of making information, literature, music, software and other content available to the public for sale or for free. Traditionally, the term refers to the distribution of printed works, such as books, newspapers, and magazines. With the advent of digital information systems, the scope has expanded to include electronic publishing such as ebooks, academic journals, micropublishing, websites, blogs, video game publishing, and the like.
The contested export-import services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. While these services are aimed at supporting or helping other businesses to do business and are preparatory or ancillary to the commercialisation of goods, they do not relate to the actual retail or wholesale of the goods.
Finally, the contested retail/wholesale of specific goods are dissimilar to other specific goods if the goods in question are dissimilar. This conclusion applies to the present case.
Consequently, the goods for which the opponent has proven use and the contested services in Class 35 have different nature and intended purpose and are delivered by different undertakings through different distribution channels. Furthermore, they are neither complementary, nor in competition. Therefore, they are considered dissimilar
b) Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.
REPUTATION — ARTICLE 8(5) EUTMR
The opponent invoked Article 8(5) EUTMR in relation to all the earlier trade marks on which the opposition was based, namely Spanish trade mark registration No 2 957 705 and earlier European Union trade mark registration No 1 977 289 in relation to all the goods and services in Classes 21, 25 and 35 which were already listed under the chapter ‘Proof of use’ of the present decision. However, as concluded from this part of the decision the opponent has proven a genuine use of its earlier marks in relation to Ready-made clothing for women in Class 25 in case of the EUTM registration and Ladies' ready-made clothing in Class 25, in case of the Spanish registration.
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.
a) Reputation of the earlier trade marks
In the present case, the contested trade mark was filed on 03/02/2017.
Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Spain and in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation. As mentioned above the opponent has proven use of its earlier mark in relation to good in Class 25, namely Ready-made clothing for women in Class 25 in case of the EUTM registration and Ladies' ready-made clothing in Class 25, in case of the Spanish registration.
The opposition is directed against the contested goods and services in Classes 21 and 35, as listed under the chapter ‘Likelihood of confusion’ of the present decision.
In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
On 09/09/2019, within the substantiation period (as explained above), the opponent filed the evidence to prove the reputation of the earlier marks, which has been listed under the chapter ‘proof of use’ of the present decision.
Having examined the material listed above, the Operation Division concludes that it is clear that the earlier marks ‘OYSHO’ have been subject to a long-standing and intensive use and enjoy a high degree of reputation in the relevant market sector of clothing in the Spanish territory, in particular. Although, the opponent submitted some material showing some use of the earlier marks in other countries, the Opposition Division observes that the majority of the relevant documents showing the recognition of the earlier marks in question refer to Spain.
The above mentioned press information, being in the form of articles issued from independent sources and not referring to simple advertising announcements illustrate well the opponent’s expansion in Spain in relation to various items of clothing. This proves that opponent’s commercial activities related to the above-mentioned goods is often recorded by press and in the public interest. These publications refer directly to the opponent’s commercial success and mention the earlier marks in relation to various clothing items, i.e. lingerie, beach clothing, casual clothing, ‘relax’ clothing, mountain/sport clothing. They also play a corroborative role in relation to the important sale results reached within the relevant period and submitted by the opponent in the attachment no 3. Furthermore, the material included in the attachment no. 14 shows intensive and widespread promotion in Spain, including organization of running race events in Barcelona and Madrid (as the official sponsor of the Carrera de la Mujer, OYSHO handles the design of the corresponding merchandising goods) and free yoga sessions organized in Barcelona and Madrid in 2014 and 2017. The earlier mark ‘OYSHO’ is also included as one of the eighty biggest brands in the fashion sector with an international impact as demonstrated in “El Atlas de la Moda” (Atlas of Fashion), a study carried out by the Foro de Marcas Renombradas Españolas (FMRE) (Leading Brands of Spain Forum), ICEX España Exportación e Inversiones (Spanish Institute for Foreign Trade), a Spanish government agency that promotes Spanish exports and investment in Spain. The effects of the opponent’s promotional actions are also reported in the publication Grandes Marcas de España /Leading Brands of Spain and further supported by the certificate, issued by ANDEMA (the National Brand Defense Association of Spain). Finally, the earlier mark in question is featured in 54th place among the most valuable Spanish brands worldwide according to the Brand Finance annual report in 2018.
As to the time references of some material dated after the filing date of the contested sign, it should be mentioned that although the decisive element is whether the earlier marks had acquired a reputation at the time of filing of the contested application, the presence in the market of the earlier mark in question beyond the abovementioned period serves as an indirect indication of a long presence on the market, as it would be unusual for a proprietor of a trade mark to maintain a registered sign for a longer period without any economic interest behind it.
As the Court has made clear ‘it is not necessary for the mark to be known by a given percentage of the public. Although it is not irrelevant this implies that percentages of awareness defined in the abstract may not be appropriate for all cases and that, consequently, it is not possible to fix a priori a generally applicable threshold of recognition beyond which it should be assumed that the mark is reputed (see, to that effect and by analogy, judgments of 04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 24; 16/11/2011, T-500/10, Doorsa, EU:T:2011:679, § 52).
Consequently, the number of articles appearing in numerous important Spanish newspapers in relation to the marks ‘OYSHO’, the widespread promotion activities supported also by active presence of the earlier marks in various social networks and on various websites show that the opponent has undertaken steps to build-up a brand image and enhance trade mark awareness among the public. Therefore, the evidence analysed as a whole show that the earlier marks enjoy a high degree of reputation in relation to the opponent’s clothing for women in Class 25, in particular, among the relevant public in Spain, therefore, within the relevant EU market (06/10/2009, C-301/07, Pago, EU:C:2009:611, § 29 and 30).
b) The signs
OYSHO |
|
Earlier trade marks |
Contested sign |
The relevant territory is the European Union and 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).
The earlier mark is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is represented in upper or lower case characters. Additionally, the word marks have no elements that could be considered more dominant (visually eye-catching) than other elements.
The contested sign is a figurative mark composed of the verbal element ‘oishii’, written in a stylised script. This verbal element partially overlaps with a figurative element representing a bowl of hot food with a characteristic representation of steam above.
The earlier mark and the verbal element of the contested sign are meaningless for the relevant public in the relevant territory. Consequently, they are inherently distinctive in relation to all the relevant goods.
The contested sign has no elements that could be considered more dominant (visually eye-catching) than other elements.
As to the figurative elements of the contested sign, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Furthermore, in the present case, the figurative element of the contested sign will directly refer to part of the goods in Class 21, which include, inter alia, bowls and other hand-operated utensils for household and kitchen use and part of the services in Class 35 referring to Retail services in relation to tableware; Wholesale services in relation to tableware; Retail services in relation to food cooking equipment and therefore, it is weak for them. It is distinctive for the remaining goods and services.
Bearing in mind the abovementioned principles, in relation to the remaining goods and services, the public will attribute more trade mark significance to the verbal element of the contested sign, which will be recognised by the relevant public as a main indicator of commercial origin for the relevant goods and services.
Visually and aurally, the signs coincide in the majority of their letters, including their first letter ‘O’ and the sequence ‘S-H‘. In this regard, it should be noted that consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. From the aural perspective, the coincidence between the signs will be even stronger as the letter ‘Y’ in the earlier mark will be pronounced as ‘I’, present in the contested sign in vast majority of the relevant languages. Furthermore, the signs are composed of the same number of syllables (‘OY-SHO’ and ‘OI-SHII’) and, therefore, their rhythm and intonation will be also very similar. They differ visually in the second letter ‘Y’ of the earlier mark versus ‘I’ of the contested sign and their respective final letters; however these differing letters are placed in the positions which, in general, will catch less attention of the public than their first letter ‘O’. Furthermore, as analysed above, the figurative element of the contested sign is either weak in relation to part of the relevant goods and services or, in any way, it will be less relevant/important than the verbal element ‘oishii’, when attributing a badge of economic origin for the goods and services in question.
Bearing in mind the abovementioned, the signs are visually similar to an average degree and aurally highly similar.
Conceptually, neither of the verbal elements of the signs has a meaning for the public in the relevant territory. Although, the relevant public will perceive a clear concept in the figurative element of the contested sign its impact will be limited as it is weak for part of the goods and services and, in any way, less relevant for the rest of them. The applicant argues that the verbal element ‘oishii’ of the contested sign is a Japanese word that means ‘delicious’ in English. However, the Opposition Division is of the opinion that the substantial part of the relevant public will perceive it as a meaningless element. Consequently, as one of the signs will not be associated with any concept, the signs are conceptually not similar.
Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.
c) The ‘link’ between the signs
As seen above, the earlier mark is reputed and the signs are very similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.
Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):
the degree of similarity between the signs;
the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;
the strength of the earlier mark’s reputation;
the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;
the existence of likelihood of confusion on the part of the public.
This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.
The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.
According to the Court of Justice of the European Union,
It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.
(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)
The Court of Justice has also noted,
… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.
(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)
As mentioned above, the signs are visually similar to an average degree and aurally similar to a high degree. From the conceptual perspective they are not conceptually similar due to the presence of the figurative element of contested sign, which, however, will have a limited impact on the consumers, as analysed above.
As regards the distinctiveness of the earlier marks, the word ‘OYSHO’ is inherently distinctive, in particular, by virtue of the fact that it is a word without any meaning in relation to the goods designated by it. In addition, as already shown above, the earlier marks has been found to enjoy a high degree of reputation in the European Union and in Spain in connection with the goods in Class 25, in particular, clothing for women.
The contested goods and services in Classes 21 and 35 have been listed above, under the chapter ‘Likelihood of confusion’ of the present decision. They mainly include small, hand-operated utensils and apparatus for household and kitchen use, as well as cosmetic and toilet utensils, glassware and certain goods made of porcelain, ceramic, earthenware, terra-cotta or glass (Class 21) and services aimed at supporting or helping other businesses to do or improve business and those referring to the sale of goods (Class 35).
The fact that the goods and services designated by the marks at issue belong to distant sectors of trade is not, in itself, sufficient to exclude the possibility of the existence of a link. The specific reputation of the earlier mark (including qualitative aspects, such as a particular image, lifestyle, or particular circumstances of marketing that have become associated with the reputation of the mark) and the degree of similarity between the marks could make it possible for the image of the reputed mark to be transferred to the contested mark notwithstanding the distance between the relevant market sectors.
It is a well-known fact that nowadays many brands extrapolate their success initially linked to certain group of products to other goods due to increasing synergies between various market sectors. The clothing sector and home utensils sector have an important characteristic in common which refers to their aesthetics and design. The market reality shows that many brands diversify their offer and, in particular, in the sector in question, important fashion brands launch new products that appeal to the same group of consumers, who look for practicality and design. The goods in question are also directed at the same general public. In fact, it is very common for fashion apparel brands to offer in the market home related items.
Consequently, although the goods in question do not belong to the same market the similarity of the signs is of such a nature that it is possible that the relevant general public of the reputed goods in the European Union, in particular, in Spain will make a connection between the reputed earlier goods in Class 25 and the contested goods in Class 21, and therefore, the link with the earlier reputed marks will be established.
The remaining contested services in Class 35 aim at supporting/helping other businesses to do or improve business and refer to the sale of goods. Therefore, they have completely divergent distribution channels, target consumers with different needs and are manufactured/provided by different companies or suppliers. Although the earlier trade marks enjoy a reputation for clothing for women in Class 25, the contested services are so different that the reputed earlier marks are not capable to produce effects beyond the relevant market sector and triggers a link between the signs in a completely different area of the economy, such as the abovementioned services. Therefore, it is unlikely that, when intending to purchase the contested services in Classes 35, mainly directed at professional public, the relevant general public will link these services to trade marks that have a reputation for goods in the sector of clothing. Hence, the goods and services at issue have no points of contact whatsoever and this large gap makes it unlikely that the contested mark would remind the relevant consumer of the earlier reputed marks.
The Opposition Division also observes that the opponent did not submit any pertinent arguments in relation to the necessary link between the signs in dispute, in particular as regards common aspects between clothing for women in Class 25 and the services in Class 35 in order to refute this finding.
Therefore, bearing in mind the above-mentioned and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that it is likely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them in relation to the contested goods in Class 21.
As to the abovementioned services in Class 35 in relation to which there is no possibility for the relevant public to establish a link with the earlier reputed marks, there can be no injury of any type, as covered under Article 8(5) EUTMR, therefore, the Opposition Division will proceed with the assessment of the risk of injury only with regard to the contested goods in Class 21, in relation to which the link with the earlier reputed marks has been established.
d) Risk of injury
Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:
it takes unfair advantage of the distinctive character or the repute of the earlier mark;
it is detrimental to the repute of the earlier mark;
it is detrimental to the distinctive character of the earlier mark.
Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).
It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.
In the present case, the opponent claims, inter alia, that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character of the earlier trade mark.
Unfair advantage (free-riding)
Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).
The opponent bases its claim on the allegation that the contested sign will free-ride on the coat-tails of the trade mark, which has a reputation so that the relevant contested services will be marketed far easier since an association between the reputable mark and the later sign will arise in the mind of the consumer.
Indeed, the opponent argues that ‘there vis a risk that the image or characteristics of the reputed trade mark may be transferred to the goods applied for, resulting in the marketing of the new trade mark being far easier due to its association with the earlier mark’.
According to the Court of Justice of the European Union
… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.
(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)
In view of the link with the earlier reputed marks and the association that it will produce in the minds of consumers in the relevant territory, the contested sign will receive an unfair ‘boost’, because the marketing of the applicant’s goods would be made easier, as they will benefit from the repute of the earlier trade marks. Due to the reputation of the earlier marks and to the aforementioned similarities between the signs the Opposition Division is of the view that the use of the applicant’s mark applied for could encourage the public to buy the applicant’s goods by reason of the association they would be likely to make with the earlier marks and the commercial value attached to its repute and the distinctive character. The Opposition Division notes that the earlier marks may be exploited even outside its natural market sector, for example, by licensing or merchandising.
Consequently, in the present case it is reasonable to assume that if the applicant uses its figurative sign ‘OISHII’, which is composed of a meaningless verbal element displaying important similarities from the visual and aural perspective to the earlier reputed marks ‘OYSHO’, as established above, in relation to the relevant goods in Class 21 it will obviously profit from the earlier marks’ value in these sectors (by analogy to the decision of 16/03/2012, R 1074/2011-5, Twitter (fig.) / TWITTER).
Indeed, the relevant public may assume that the reputed for clothing ‘OYSHO’ marks have entered into a commercial partnership with a home utensils manufacturer due to reasons put forwards above.
Consequently, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier reputed ‘OYSHO’ trade marks.
Other types of injury
The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character of the earlier trade marks.
As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade marks. It follows that there is no need to examine whether other types also apply.
e) Conclusion
Considering all the above, the opposition is partly well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the goods in Class 21.
The opposition based on Article 8(5) EUTM is not successful in relation to the remaining contested services in Class 35.
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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Liliya YORDANOVA |
Monika CISZEWSKA |
Jakub MROZOWSKI |
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.
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