OPPOSITION No B 2 916 842

WE Brand S.à.r.l., 31-33 Avenue Pasteur, 2311, Luxembourg, (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX, Weesp, Netherlands (professional representative)

a g a i n s t

Arnatrade Group OÜ, Katusepapi tn 6, 11412, Tallinn, Estonia (applicant), represented by Patendibüroo Käosaar OÜ, Tähe 94, 50107, Tartu, Estonia (professional representative).

On 05/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 916 842 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 406 621 (fig. mark). The opposition is based on international trade mark registration No 1 223 927 ‘WE FASHION’ (word mark) designating the European Union and the European Union trade mark registration No 7 209 571 ‘WE’ (word mark). The opponent invoked Article 8(1)(b) 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:

International trade mark registration ‘WE’

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes, namely, leather handbags, wallets, purses and briefcases; umbrellas and parasols; trunks and traveling bags; bags not included in other classes.

Class 25: Clothing, footwear, headgear, namely bonnets, hats and caps.

Class 35: Advertising; business management; business administration; administrative services; retail business services relating to, and the bringing together (excluding transport) of products made of leather, clothing, clothing accessories, footwear and headgear for third parties in order to enable consumers to view and buy these products; sales promotion; business mediation in the purchase and sale of products; mediation in commercial matters in the marketing of products in the context of the services of wholesalers; administrative services in connection with preparing and concluding of franchise agreements relating to the aforesaid services; the aforesaid services also provided via electronic channels, including the internet.

European Union trade mark registration ‘WE FASHION’

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; umbrellas and parasols; trunks and travelling bags; bags not included in other classes.

Class 25: Clothing, footwear, headgear.

Class 35: Business mediation in the purchase and sale, including within the framework of retailing, of soaps, perfumery, essential oils, cosmetics, hair lotion, eyewear, including sunglasses, optical frames, cases and containers for spectacles, precious metals and their alloys and products made from the aforesaid materials or coated therewith, jewellery, costume jewellery, precious stones, clocks and chronometrical instruments, including watches, leather and imitation leather and products made from the aforesaid materials, umbrellas and parasols, trunks and suitcases, bags, clothing, footwear, headgear; the aforesaid services also offered via electronic channels, including the internet.

The contested goods and services are the following:

Class 10: Orthopedic articles; Orthotic footwear.

Class 25: Footwear; Footwear; Sandals.

Class 35: Retail and wholeship distributorship services of footwear, shoes, sandals, orthopedic articles and orthopedic goods.

As a preliminary remark, it should be observed that the English wording Footwear; Footwear; Sandals in Class 25 of the contested mark in question consists of an imprecise translation of the Estonian wording ‘Jalatsid; kingad; sandaalid’, meaning ‘Footwear; Shoes; Sandals’. Therefore, since Estonian was the filing language of this EUTM, the aforementioned entry ‘kingad’ should be interpreted as ‘shoes’ in English.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

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 10

The contested orthotic footwear in Class 10 is lowly similar to the opponent’s footwear in Class 25 of the earlier trade marks. The goods have the same nature, they usually also coincide in relevant public and in the method of use.

The contested orthopaedic articles are a broad category of goods that include, among other things, orthopaedic footwear such as orthopaedic sandals and orthopaedic slippers. Therefore, the contested orthopaedic articles are lowly similar to the earlier footwear included in Class 25 of both earlier trade marks. The goods coincide in their nature. They may be, distributed through the same channels and they target the same end users.

Contested goods in Class 25

The contested footwear is identically contained in all lists of goods.

The contested shoes, sandals are included in the broad category of the opponent’s footwear. Therefore, the goods are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods (judgment of 05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category. Therefore, in the present case the contested retail and wholeship distributorship services of footwear, shoes, sandals are lowly similar to the opponent’s footwear of the earlier trade marks.

On the other hand, the contested retail and wholeship distributorship services of orthopedic articles and orthopedic goods are considered to be similar to opponent's retail business services relating to, and the bringing together (excluding transport) of footwear and headgear for third parties in order to enable consumers to view and buy these products; the aforesaid services also provided via electronic channels, including the internet. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

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 or similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price (i.e. for the goods in Class 10, the level of attention might be higher than average because of a possible impact on one’s health).

3. The signs

WE WE FASHION
Earlier trade marks	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The word ‘WE’ included in all of the signs refers to the first person plural pronoun in English and will be understood at least by the English speaking public. However, since it has no meaning in relation to the relevant goods and services, it is distinctive to an average degree.

The element ‘FASHION’ of the earlier mark 2) will be perceived as the English word referring to a popular way of dressing during a particular time or among a particular group of people or the business of creating and selling clothes in new styles. Considering that this word is widely used in the market sector in question, it is reasonable to assume that it will be generally understood in all Member States of the European Union. It is, therefore, non-distinctive or at least weak for the goods and services at issue.

The element ‘&’ in the contested mark is the ampersand symbol meaning ‘and’. As the ampersand only serves to connect two words, it is considered less distinctive than the components it connects.

The word ‘TWO’ of the contested sign will be perceived as being one more than one in number from the perspective of the English public. This word will be understood by part of the relevant public having a basic knowledge of English throughout the European Union. Since it does not describe or allude to the characteristics of the goods and services, it is distinctive.

The additional verbal elements ‘fashion technology footwear’ which appear in much smaller typeface below the elements ‘TWO&We’ may, for the English-speaking part of the public, be perceived as a slogan that merely conveys that an enterprise is using fashion technology in the production of footwear. For the public that understands this expression, it is considered of limited distinctiveness in relation to all the contested goods and services, as it directly refers to the nature of the producer’s company, as well as to the purpose and application of the goods and services in question. Other parts of the public will most probably perceive the words ‘FASHION’ (with the meaning exampled above) and ‘TECHNOLOGY’ (denoting, in particular, ‘the application of practical sciences to industry or commerce – this word exists in similar forms in several European languages) only. However, these two words will have little impact on the way the contested mark is perceived by the relevant public because of their weak distinctive character in respect of the goods and services at issue. As far as the word ‘footwear’ of the contested mark is concerned, it will be understood by the English-speaking part of the public and for this part of the public it is considered to be non-distinctive in relation to the relevant goods and services at hand. For the remaining part of the public this word is meaningless and therefore distinctive.

The earlier marks are word marks and have therefore no element that could be considered clearly more dominant than other elements. The element ‘TWO&We’ in the contested sign is the dominant element as it is the most eye-catching. Consequently, the expression ‘fashion technology footwear’ will attract less attention from consumers.

As far as the earlier mark 1) is concerned, it should be noted that the length of the signs may influence the effect of the differences between them. In the present case, the earlier mark is a short sign, consisting of only two letters. The shorter a sign, the more easily the public is able to perceive all of its single elements. Consumers are likely to immediately notice the differences in the lengths of the signs.

Visually, when compared the earlier mark 1) and the contested sign, they coincide in the word ‘WE’. However, they differ in the words ‘TWO&’ and ‘fashion technology footwear’ of the contested mark.

Taking into account the fact that the element ‘WE’ of the earlier mark 1) is short, it is considered that the differences between the signs introduced by the additional words of the contested sign and their different lengths will not go unnoticed by the relevant consumers when they perceive the marks visually. Therefore, the signs are visually similar to a low degree.

In case of the earlier mark 2) the signs coincide in the word ‘WE’ and inn 'FASHION', which however is much smaller and it is also in a secondary position in case of the contested mark. The marks differ in the element ‘technology footwear’ of the contested mark. The common word ‘WE’ is placed at the beginning of the earlier mark, while in the contested mark it appears at the end. Moreover, the contested mark contains an additional element ‘technology footwear’ which, despite being non-distinctive in relation to the relevant goods and services at hand, will not go completely unnoticed. Since consumers also normally focus on and recall the initial parts of marks (which in this case have nothing in common) the signs are visually similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛WE’, present in all signs. The pronunciation differs in the sound of the letters ‛TWO’, the pronunciation of the ampersand and possibly also in the word ‘FASHION’ of the earlier mark 2) since the wording ‘fashion technology footwear’ of the contested mark may not be pronounced because of its position and also the size of the letters. Moreover, this wording is non-distinctive for a part of the relevant public which understands it (i.e. for the English part of the public. For the remaining part of the public at least the part ‘fashion technology’ is considered to be weak).

The addition of the letters ‘TWO’, the symbol & as well as the expression ‘fashion technology footwear’ (if pronounced) to a short sign ‘WE’ creates a noticeable aural difference between the earlier mark 1) and the contested sign. Consequently, the marks are considered aurally similar to a low degree.

This is equally valid in the case of earlier mark 2) which contains an additional word ‘FASHION’. Although this element is considered to be non-distinctive, it still does play a minor role in the mark. Consequently, the marks are considered aurally similar to a low degree.

Conceptually, the signs will be associated with a similar meaning at least for the English-speaking part of the public, to the extent that they all refer to the pronoun ‘WE’, a word used by the speaker to refer to himself and one or more other persons, and also the concept of ‘fashion’ (in case of the earlier mark 2).

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

According to the opponent, the earlier ‘WE’ trade marks enjoy a high degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with clothing, bags and accessories. 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 the following evidence:

• Exhibit 5: Witness Statement of 23/11/2015 signed by the Chief Financial Officer of the WE Fashion Group. The document contains information regarding the company marketing and media expenditure for the period 2010 until 2014.

• Exhibit 6: Documents showing sales information for the company WE Europe from 2012 until 2015 in the Netherlands, Germany, France, Luxembourg.

• Exhibit 7: A document referring to the advertising expenditure of seven clothing companies, among them also the company WE from 2011 until 2013.

• Exhibit 8-10: Press clippings for the years 2013, 2014, 2015 published in the Netherlands (i.e. in the magazines Elle, Linda, Jackie, Flair, Cosmopolitan, Men’s Health, Glamour, etc.) for clothing under a trade mark ‘WE’. Part of the evidence also contains articles referring to the earlier marks ‘WE’ and ‘WE FASHION’, however none of the articles is translated into the language of the proceedings.

• Exhibit 11: A copy and translation of a decision of the Court of Appeal in Brussels of 19/02/2018 in case between WE Netherlands B.V. and Famco N.V./Dor 1 N.V. and the decision of the Opposition Division No B 1457656 of 13/08/2010, concluding that the word mark ‘WE’ has gained a high level of distinctive character.

With regard to the documents submitted in languages different from the language of the proceedings (the articles in Dutch in Exhibits 8-10), it is noted that, pursuant to Rule 19(2)(c), Rule 19(3) and Rule 98 EUTMIR (in the version in force at the time of commencement of the adversarial part), the evidence that the earlier right has a reputation must be filed in the language of the proceedings or accompanied by a translation within the time limit for substantiation of the earlier right on which the opposition is based. In the case at issue, the deadline for the opponents to substantiate its earlier rights (to submit further facts and evidence in support of the opposition) was 09/11/2017. The opponents did not submit a translation of the documents in question.

According to Rule 19(4) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Therefore, the Opposition Division will take into account only the parts of the evidence that are filed in the language of proceedings (e.g. parts of the text or references in English) or are at least self-explanatory (e.g. images, representations of the mark, publication and printing dates, etc.).

Even though it appears (from the submitted press clips) that products (clothing), have been advertised and promoted, these pieces of evidence are insufficient to conclude how the advertising activity has affected the perception of the relevant consumer regarding the sign in question. They do not contribute to assessing the sign’s degree of recognition in the mind of the relevant consumer, as there is no information provided about circulation figures these advertisements (magazines) have been circulated to. Without any further data showing how this advertising activity has affected the awareness of the relevant public regarding the earlier signs with respect to the relevant goods and services, it cannot be concluded that the earlier marks have acquired enhanced distinctiveness. In general, press clippings cannot be conclusive of enhanced distinctiveness on its own, due to the fact that it cannot give much information about actual trade mark awareness.

Furthermore, the documents containing tables regarding the claimed advertising expenses are coming from the opponent itself or from an unknown source and are not confirmed by a third party.

The opponents also invoked a decision of the Court in Belgium that has accepted the reputation/enhanced distinctiveness of the earlier mark. Even though national decisions are admissible evidence and may have evidentiary value, especially if they originate from a Member State the territory of which is also relevant for the opposition at hand, they are not binding for the Office, in the sense that it is not mandatory to follow their conclusion. The European Union trade mark system is an autonomous system, consisting of a set of rules and objectives that are specific, and applied independently of any national system.

The probative value of national decisions should be assessed on the basis of their contents and it may vary depending on the case. The probative value of national decisions will be considerably enhanced if the conditions of law and facts on the basis of which they were taken are made abundantly clear. This is because, in the absence of these elements, it will be more difficult both for the applicant to exercise its right of defence and for the Office to assess the decision’s relevance with a reasonable degree of certainty. Similarly, if the decision is not yet final, or if it is outdated due to the time that has elapsed between the two cases, its probative value will be diminished accordingly.

As regards the relevance and probative value of previous Office decisions, the same rules as for national decisions apply. Even where the reference is admissible and the decision is relevant, the Office is not bound to come to the same conclusion and must examine each case on its own merits. The recognition of the reputation/enhanced distinctiveness of an earlier mark cannot depend on the recognition of that distinctiveness in the context of separate proceedings concerning the parties and different legal and factual elements. It is therefore for any party relying on it to claim, in the circumscribed context of each set of proceedings to which it is a party and on the basis of facts, which it considers most appropriate, that that mark has acquired a reputation; it cannot merely claim to adduce that evidence by virtue of the recognition of it, including for the same mark, in a separate administrative procedure (by analogy, judgment 23/10/2015, T-597/13, dadida / CALIDA, EU:T:2015:804, § 43-45). It follows that previous Office decisions only have a relative probative value and should be evaluated in conjunction with the rest of the evidence, especially where the reference of the opponent does not extend to the materials filed in the first case, that is, where the applicant has not had a chance to comment on them, or where the time that has elapsed between the two cases is quite long. The situation may be different if the evidence to which the opponent refers had been submitted in other proceedings taking place between the same parties and the applicant had been aware of the evidence concerning the reputation of an earlier mark (judgment of 22/01/2015, T-322/13, KENZO, EU:T:2015:47, § 18).

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.

Consequently, the assessment of the distinctiveness of the earlier marks 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 marks must be seen as normal (despite the presence of a non‑distinctive element in the earlier mark 2, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services are partially identical and partially similar (to a low degree) and target consumers with a degree of attention which may vary from average to high.

The signs are visually and aurally similar to a low degree on account of the two letters, ‘WE’, that they have in common. Conceptually, the contested sign includes another concept (at least for a part of the public) in an element 'TWO&' that is not weak for the relevant goods and services.

The Opposition Division considers that the additional different elements of the contested mark are sufficient to exclude any likelihood of confusion between them. The visual and aural coincidence in the word ‘WE’, insofar as the earlier mark 1) is concerned, does not constitute a relevant and significant factor in the present case: different elements of the contested mark are much longer and are clearly perceptible. The significance of these differing elements is of particular importance because of the short length of the earlier mark 1), which may influence and enhance the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words such as that of the earlier sign, even small differences frequently lead to a different overall impression. The relevant consumer of the goods in question and services is not likely to recollect the earlier sign when confronted with the contested sign even on identical goods.

The same is valid, when comparing the earlier mark 2) with the contested mark. The additional elements of the contested sign (despite the fact that some of them are non-distinctive, i.e. for a part of the public the slogan in the contested sign) are sufficient to exclude any likelihood of confusion between them.

Considering all the above, there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Keeva DOHERTY

Janja FELC

Claudia ATTINÀ

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.