OPPOSITION No B 2 954 850

Autumnpaper Limited, 5th Floor Rear Suite, Oakfield House, 35 Perrymount Road, RH16 3BW West Sussex, United Kingdom (opponent), represented by Santarelli, 49, avenue des Champs Elysées, 75008 Paris, France (professional representative)

a g a i n s t

Tsz Man Tsang, Room 101, Block 16, Shiguangjiupian, Agile Garden, Nancun Town, Panyu district, Guangzhou City, Guangdong Province, People’s Republic of China (applicant), represented by Colbert Innovation Toulouse, 2Ter Rue Gustave de Clausade BP 30, 81800 Rabastens, France (professional representative).

On 01/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 954 850 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 687 915 . The opposition is based on, inter alia, European Union trade mark registrations No 17 011 231 and No 7 594 955 for the word mark ‘MCQUEEN’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to the earlier European Union trade mark registration No 7 594 955 and international trade mark registrations No 1 273 163 and No 1 273 128 designating the European Union and European Union trade mark registrations No 718 031 and No 5 657 796.

REPUTATION — ARTICLE 8(5) EUTMR

The Opposition Division will examine this ground of the opposition in relation to earlier International trade mark registrations designating the European Union No 1 273 163, No 1 273 128 , European Union trade mark registrations No 7 594 955 ‘MCQUEEN’ and No 565 796 and No 718 031 ‘ALEXANDER McQUEEN’ for which the opponent claimed repute in the EU.

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 above mentioned 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

According to the opponent, the earlier trade marks have a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier marks are known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either

the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 09/05/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

European Union trade mark registration No 7 594 955

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith; semi-precious and precious stones; horological and other chronometric instruments; watches, clocks, jewellery and imitation jewellery; parts and fittings for all the aforesaid goods.

Class 18: Leather and imitations of leather and goods made of these materials and not included in other classes; handbags; travel cases; luggage; holdalls; backpacks; school bags; beach bags; travelling bags; suitcases; trunks; haversacks; bags for campers; fur-skins; collars for animals; covers for animals; boxes of leather or leather board; attaché cases; wallets; school satchels and briefcases; key cases; briefcases; canes; card cases; leather shoulder bags; parasols; purses; pouches; rucksacks; sling bags; shopping bags; tote bags; travelling trunks; valises; vanity cases; umbrellas; umbrella covers; parasols; walking sticks; whips, harness and saddlery; toilet bags; backpacks; bum-bags; sports bags; casual bags; music cases; satchels; beauty cases; carriers for suits, for shirts and for dresses; tie cases; credit card cases and holders; leather belts.

Class 25: Clothing, footwear, headgear; boots; shoes; slippers; sandals; trainers; socks and hosiery; hats; caps; berets; scarves; gloves; mittens; belts (being articles of clothing); shirts; T-shirts; polo shirts; sports shirts; trousers; jeans; shorts; sports shorts; swimwear; underwear; lingerie; tracksuits; articles of outerwear; coats; jackets; ski

jackets; waterproof and weatherproof jackets and coats; ski wear; suits; jumpers and cardigans; knitwear; leggings; neckties; pyjamas; waistcoats; headbands and wristbands; menswear; womenswear; childrenswear; underclothing; clothing for men, women, children and infants; slacks; skirts; wraps; jerseys; blouses; dresses; sleepwear; robes; sweatshirts; bibs; stockings; earmuffs; ties; tuxedos; vests; kilts; shawls; blazers; headbands and wristbands; overalls.

International trade mark registration designating the European Union No 1 273 163 ‘MCQUEEN’:

Class 14: Precious metals, unwrought or semi-wrought; alloys of precious metal; semi-precious stones; precious stones; watches; clocks; jewellery and imitation jewellery; bracelets; brooches; necklaces; earrings; chains; tie pins; cufflinks; diamonds; pearls; cases for jewellery; cases for watches; straps for wristwatches; watch chains.

Class 18: Handbags; backpacks; travelling bags; suitcases; trunks; haversacks; fur; fur-skins; collars for animals; covers for animals; boxes of leather or leather board; wallets; key cases; briefcases; card cases; vanity cases, not fitted; parasols; purses; umbrellas; walking sticks; whips; leather pouches; leather leads; furniture coverings of leather.

Class 25: Clothing; footwear; headgear; boots; shoes; heels; slippers; bath slippers; sandals; sports shoes; socks; hosiery; tights; hats; caps (headwear); berets; scarves; gloves (clothing); mittens; belts (being articles of clothing); T-shirts; shirts; trousers; bathing trunks; bathing suits; underwear; bodices (lingerie); bath robes; outerclothing; coats; jackets; parkas; waterproof clothing; suits; jumpers; knitwear; leggings; neckties; pyjamas; waistcoats; headbands (clothing); wristbands; skirts; jerseys; dresses; stockings; vests; shawls; overalls; sleep masks; cuffs; fur stoles.

International trade mark registration designating the European Union No 1 273 128

Class 14: Precious metals, unwrought or semi-wrought; alloys of precious metal; semi-precious stones; precious stones; watches; clocks; jewellery and imitation jewellery; bracelets; brooches; necklaces; earrings; chains; tie pins; cufflinks; diamonds; pearls; cases for jewellery; cases for watches; straps for wristwatches; watch chains.

Class 18: Handbags; backpacks; travelling bags; suitcases; trunks; haversacks; fur; fur-skins; collars for animals; covers for animals; boxes of leather or leather board; wallets; key cases; briefcases; card cases; vanity cases, not fitted; parasols; purses; umbrellas; walking sticks; whips; leather pouches; leather leads; furniture coverings of leather.

Class 25: Clothing; footwear; headgear; boots; shoes; heels; slippers; bath slippers; sandals; sports shoes; socks; hosiery; tights; hats; caps (headwear); berets; scarves; gloves (clothing); mittens; belts (being articles of clothing); T-shirts; shirts; trousers; bathing trunks; bathing suits; underwear; bodices (lingerie); bath robes; outerclothing; coats; jackets; parkas; waterproof clothing; suits; jumpers; knitwear; leggings; neckties; pyjamas; waistcoats; headbands (clothing); wristbands; skirts; jerseys; dresses; stockings; vests; shawls; overalls; sleep masks; cuffs; fur stoles.

European Union trade mark registration No 565 796 ‘ALEXANDER McQUEEN’

Class 18: Articles of leather and imitations of leather; trunks and travelling bags; travel cases; luggage; suitcases; holdalls; port manteaux; valises; bags; handbags; shoulder bags; toilet bags; carrier bags; rucksacks; backpacks; bumbags; sports bags; casual bags; briefcases; attaché cases; music cases; satchels; beauty cases; carriers for suits, for shirts and for dresses; tie cases; credit card cases and holders; wallets; purses; umbrellas; parasols; walking sticks; shooting sticks; belts; parts and fittings for all the aforesaid goods.

European Union trade mark registration No 718 031 ‘ALEXANDER McQUEEN’

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith; semi-precious and precious stones; horological and other chronometric instruments; watches, clocks, jewellery and imitation jewellery; parts and fittings for all the aforesaid goods.

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 02/02/2018 the opponent submitted the following evidence:

• Extract from Wikipedia, dated 20/01/2018, with information regarding the brand Alexander McQueen, namely, the history of the brand, the ownerships, the retail stores in the word and the number of McQueen collections among others.

• Copies of articles or covers of several magazines, namely:

• The Sunday Times Style, Grazia, the Observer Magazine OM, the Times Magazine, the Financial Times Suppl Weekend, Elle, Hello, IPC Media Look, Hearst Magazine International-Harper´s Bazaar, Vogue Kate Middleton is seen wearing an Alexander McQueen dress for an event and in her wedding. Moreover, there is also a photo of the celebrity Ashley Olsen, among other celebrities, also wearing an ALEXANDER McQUEEN’ dress and several fashion ‘McQueen’, items. All the documents are dated from 2006 to 2014, and are from the United Kingdom.

• Vogue, Marie Claire, Elle, Marie Claire, Madame Figaro, Express Roularta, Grazia, l`Officiel Hommes Collections, l´Officiel Voyage, in which Kate Middleton, Amal Clooney, Jessica Chastain can be seen wearing an Alexander McQueen dress, and several fashion ‘McQueen’, items. All the documents are dated from 2006 to 2014, and are from France.

• Elle, Flair, Vogue, in which several fashion ‘McQueen’, items can be seen. All the documents are dated from 2015 to 2016, and issue from Germany.

• Elle, Grazia, RollingStone, Vanity Faire, Vogue, in which several fashion ‘McQueen’, items are visible. All the documents are dated from 2006 to 2008, and issue from Italy.

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

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods and services it covers.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

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 documents submitted by the opponent indicate that the earlier marks have been used in the relevant market for fashion items. These documents, on their own, do not demonstrate that the earlier marks enjoy a reputation because they do not contain any reference to market knowledge or actual trade mark awareness.

In the present case, the fashion market of the European Union is a large market in terms of population, with a large number of potential purchasers for the goods in question and with many competitors. The opponent did not provide any information referring to its position in this market or to the overall size of it and, therefore, the Opposition Division cannot draw solid conclusions as to the presence of the earlier marks on the market or not.

The advertising and promotional material, that is to say the press cuttings, promotional articles and product catalogues, cannot be conclusive of reputation on their own, due to the fact that they cannot give much information about actual trade mark awareness. In some articles issued in the United Kingdom, the earlier trademarks are associated with renowned persons or celebrities. However, a sign does not enjoy any reputation simply because it is associated with famous people, but rather only for the goods and services it designates and as a consequence of the use made of it. However, these documents do not refer to the public recognition of the mark.

Without providing any information from independent sources such as opinion polls and market surveys to demonstrate knowledge of the marks, the evidence submitted by the opponent is not particularly convincing, as it does not prove that the investment made by the opponent has succeeded in building the well-known character of the earlier marks. These documents are more appropriate for giving indications about the geographical extent or the promotional side of the opponent’s activities, than for measuring the success of the marks in the market and thus may only serve as indirect indications of reputation.

This evidence is relevant insofar as it shows use of the earlier marks in connection with some of the goods for which they are registered and that the opponent’s products have been promoted to some degree in UK, Italian, French and German magazines, i.e. within the relevant territory. However, this evidence does not provide enough information on the frequency and extent of such use and does not allow a coherent conclusion to be drawn on the recognition of the marks on the part of the relevant consumers in the European Union.

The opponent could have proven, for example by conducting a survey, the percentage of consumers who are capable of identifying the goods in question by virtue of the earlier marks, or should have provided information relating to the actual volume of sales and presence on the market of the earlier marks. The mere fact that the earlier marks may appear in different magazines is not enough to demonstrate acquired distinctive character in the European Union

Despite showing some use of the ‘ALEXANDER MCQUEEN’ or ‘MCQUEEN’ trade marks (word and figurative marks), the material submitted does not provide any clear indication regarding the extent of use of the trade marks among the relevant public.

The opponent should have submitted evidence enabling the Office to reach a positive finding that their earlier marks have acquired the status of well-known marks in the relevant territory. The evidence should be clear and convincing, establishing all the facts necessary to safely conclude that the marks are well known by a significant part of the public. The well-known character of the earlier marks must be established to the satisfaction of the Office and not merely assumed.

Furthermore, no figures have been provided that could suggest that a considerable number of products have been sold (volume of sales) and significant expenditure on advertising has been made. Moreover, taking into account the characteristics of most of the goods for which the marks are registered, the opponent should have easily been able to produce more evidence of commercial transactions. While the proprietor has a free choice as to the means of proving extent of use (see judgment of 08/07/2004, T‑203/02, ‘VITAFRUIT’, paragraph 37), it nonetheless has to show the reality of the commercial use of the marks at least sufficiently to dispel any possible concern that this use might be merely internal, sporadic or token.

Moreover, although it can be seen from the evidence that the opponent’s goods have been well advertised and articles have been written about them in many famous magazines, these facts are not sufficient on their own to establish that the earlier marks have indeed acquired a reputation. It is difficult to prove knowledge amongst a significant part of the public exclusively by reference to promotion or advertising of a new product, as the actual impact of publicity on the perception of the public will be difficult to measure without reference to sales. In such situations, the only means of evidence available to the opponent are opinion polls and similar instruments, the probative value of which may vary depending of the reliability of the method used, the size of the statistical sample, etc.

Consequently, although the documents are acceptable means of providing evidence, they are not sufficient, on their own, to lead to the conclusion that the earlier marks have a reputation, since they do not provide the Opposition Division with information, supported by the other items of evidence, about the degree of recognition of the marks among the relevant public, which is, in the present case, the public at large.

Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that its trade marks have acquired a reputation or a high degree of distinctiveness, for the above reasons.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it was based on Article 8(5) EUTMR. It is now necessary to examine the remaining ground of the opposition, namely 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 17 011 231 and No 7 594 955.

1. The goods and services

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

European Union trade mark registration No 17 011 231

Class 35: Advertising; business management; business administration; office functions; retail services connected with the sale of: candles; scented candles, wicks for lighting; tableware, cutlery; forks; knives; spoons; tongs; can openers; cleavers; ice picks; nail files; scissors; gardening tools; cutting tools (hand tools); eyelash curlers; hair clippers for personal use, electric and non-electric; fingernail polishers, electric or non-electric; tweezers; manicure sets; razor blades; razors, electric or non-electric; shaving cases; paper and cardboard; printed matter; bookbinding material; stationery and office requisites, except furniture; adhesives for stationery or household purposes; artists' and drawing materials; paintbrushes; plastic sheets, films and bags for wrapping and packaging; printers' type, printing blocks; greetings cards; packaging; wrapping paper; packing paper; paper or plastic bags; sachets and packing foils; catalogues; posters; books; periodicals; booklets; paper gift; stationery; tablecloths and paper napkins; calendars; pens; pencils and other writing materials; folders; notebooks; repertories; inkstands; writing pads; pencil boxes; cabinets for stationery (office requisites); engravings; lithographic works of art; paintings (pictures) framed or unframed; photographs; instructional and teaching materials; holders for check books; paper-clips; passport holders; scrapbooks; handkerchiefs; table linen of paper; envelopes and containers for packaging; statues, figurines and works of art of paper or cardboard; coasters of paper; desk mats, furniture; mirrors; picture frames; containers, not of metal, for storage or transport; unworked or semi-worked bone, horn, whalebone or mother-of-pearl; shells; meerschaum; yellow amber; baskets; bottle, jar and magazine racks; coat hangers and coat stands; clothing covers (wardrobes); cushions and pillows; wall plaques; statuettes and wickerwork; armchairs; bassinets; beds; bedding; bedsteads of wood; benches; bottle racks; chairs; chest of drawers; chests; coat stands; crates; deck chairs; desks; dinner wagons; divans; dressing tables; easy chairs; fans for personal use; foot stools; frames; furniture; hampers; hat stands; magazine racks; mannequins; mattresses (spring); mirror tiles; newspaper display stands; pedestals; pillows; plaques; rattan; settees; showcases; sideboards; sleeping bags for camping; sofas; statues of wood, wax, plaster or plastic; statuettes of wood, wax, plaster or plastic; tables; tea carts; tea trolleys; trays; umbrella stands; wickerwork; wind chimes; works of art of wood, plaster or plastic, vases; ceramics; glassware; porcelain and earthenware; domestic, bathroom or household or kitchen utensils and containers; combs and sponges; brushes; brush-making materials; unworked or semi-worked glass, except building glass; glassware, porcelain and earthenware; articles for cleaning purposes; basins; bowls; receptacles; pitchers; bottles; plates; cups; mugs; saucers; jars; pots; pans; dishes; bins; boxes; ironing boards; bread boards and cutting boards; beaters; blenders; bristles; buckets; candlesticks; candle rings; candle extinguishers; coffee grinders; percolators; filters; cooking utensils; cruets and cruet stands; soap and towel holders and dispensers; dustbins and wastebins; waste baskets; egg cups; flower pots; graters; griddles and grills; sieves; shakers; sprinklers; strainers; whisks; napkin rings; ice buckets; ice cube molds; kettles; salt, pepper and spice mills; picnic hampers; picnic baskets, textiles and substitutes for textiles; household linen; curtains of textile or plastic; textile articles; upholstery (fabrics); textile piece goods; bed covers; table covers; linen cloth; bed linen; bath linen; table linen; table cloths; pillow shams; pillow cases; sheets; towels; eiderdowns; duvets; covers for eiderdown and duvets; table runners; table mats; napery; napkins; table mats (not of paper); face towels; flannels; tissues (textile); traced cloth for embroidery; tapestry (wall hangings) of textile; furniture coverings of plastic; fabrics for textile use; blankets; coasters; eider downs; furniture coverings; mattress covers; place mats (textile); quilts; serviettes (textile), lace and embroidery; lace for edgings; passementerie; embroidery; ribbons; braids; buttons; hooks; eyelets for clothing; needles; pins; artificial flowers; hair pins; hair bands; hair decorations; false hair; shoe laces; shoe buckles; zippers, carpets; rugs; mats and matting; floor coverings; wall hangings (non-textile); wallpaper; textile wallpaper.

European Union trade mark registration No 7 594 955

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith; semi-precious and precious stones; horological and other chronometric instruments; watches, clocks, jewellery and imitation jewellery; parts and fittings for all the aforesaid goods.

Class 18: Leather and imitations of leather and goods made of these materials and not included in other classes; handbags; travel cases; luggage; holdalls; backpacks; school bags; beach bags; travelling bags; suitcases; trunks; haversacks; bags for campers; fur-skins; collars for animals; covers for animals; boxes of leather or leather board; attaché cases; wallets; school satchels and briefcases; key cases; briefcases; canes; card cases; leather shoulder bags; parasols; purses; pouches; rucksacks; sling bags; shopping bags; tote bags; travelling trunks; valises; vanity cases; umbrellas; umbrella covers; parasols; walking sticks; whips, harness and saddlery; toilet bags; backpacks; bum-bags; sports bags; casual bags; music cases; satchels; beauty cases; carriers for suits, for shirts and for dresses; tie cases; credit card cases and holders; leather belts.

The contested goods and services are the following:

Class 14: Alloys of precious metal; jewelry boxes; bracelets (jewelry); jewelry charms; necklaces (jewelry); jewelry; precious stones; rings (jewelry); earrings; emerald; watches.

Class 18: Animal skins; imitation leather; card cases (notecases); backpacks; pocket wallets; handbags; briefcases; trunks (luggage); vanity cases, not fitted; leather straps.

Class 35: Advertising; presentation of goods on communication media, for retail purposes; organization of trade fairs for commercial or advertising purposes; organization of fashion shows for promotional purposes; organization of exhibitions for commercial or advertising purposes; import-export agency services; sales promotion for others; marketing; compilation of information into computer databases; commercial administration of the licensing of the goods and services of others.

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 14

Alloys of precious metal; jewelry; watches; precious stones are identically contained in both lists of goods.

The contested; bracelets (jewelry); jewelry charms; necklaces(jewelry);

rings (jewelry); earrings are included in the broad category of the opponent’s jewelry

Therefore, they are identical.

The contested emerald are included in the broad category of the opponent’s precious

stones. Therefore, they are identical.

The contested jewelry boxes are similar to jewelry. The goods are produced by the same companies and target the same relevant public. Moreover, they use the same distribution channels and are complementary.

Contested goods in Class 18

Imitation leather; card cases (notecases); backpacks; handbags; briefcases; trunks (luggage) are identically contained in both lists of goods.

The contested pocket wallets are included in the broad category of the opponent’s wallets. Therefore, they are identical.

The contested vanity cases, not fitted are included in the broad category of the opponent’s vanity cases. Therefore, they are identical.

The contested leather straps include, as a broader category the opponent’s leather belts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested animal skins are similar to the opponent's leather. Leather is tanned animal skin and is therefore similar in nature to animal skins, hides and fur and has a similar purpose, namely the production of leather or fur goods. Despite certain differences in processing, these goods may target the same consumers and have some points in common with regard to their commercial origin.

Contested services in Class 35

The contested advertising; marketing are identically covered by the opponent’s specification.

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 acquiring competitive advantage through publicity. In doing so, many different means and products might be used. These services are provided by specialised companies that research their client’s needs, provide all the necessary information and advice for the marketing of their goods and services, and create a personalised strategy for advertising their goods and services through newspapers, websites, videos, the internet, etc.

Therefore, the contested presentation of goods on communication media, for retail purposes; organization of trade fairs for commercial or advertising purposes; organization of fashion shows for promotional purposes; organization of exhibitions for commercial or advertising purposes; sales promotion for others are included in, or overlap with, the broad category of the opponent’s advertising. Therefore, they are identical.

The contested compilation of information into computer databases is included in the broad category of the opponent’s office functions. Therefore, they are identical.

The contested commercial administration of the licensing of the goods and services of others is included in the broad category of the opponent’s business administration. Therefore, they are identical.

The contested import-export agency services are similar to the opponent’s business management. They have the same providers, distribution channels and target the same public.

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 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 and services, the frequency of their purchase and their price.

3. The signs

MCQUEEN
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier marks are word marks consisting of the element ‘MCQUEEN’. The contested mark is, however, a figurative mark consisting of the letters ‘MY QUEEN INC’, written in black bold stylised and italic letters.

The word ‘MCQUEEN’ in earlier marks will be recognised throughout the European Union as a surname, being therefore distinctive to an average degree in relation to the relevant goods and services.

The word ‘QUEEN’ in the contested sign will, however, be perceived as referring to a female monarch or the wife of a reigning king from the perspective of the English-speaking public in the relevant territory. The verbal elements ‘MY QUEEN’ of the contested mark will therefore be perceived by this public as referring to a personalized (my) queen, and will be seen as laudatory for the relevant goods and services, since they imply that the goods and services are of a better quality or of a higher than usual standard. Consequently, these elements have only a limited impact when assessing the likelihood of confusion between the marks. For the rest of the public, the elements ‘MY QUEEN’ have no meaning, being therefore distinctive to an average degree. As regards to the elements ‘Inc.’ of the contested sign, it will be associated with the abbreviation of a legal corporation, namely ‘incorporated’, by the English speaking public. For this public, as this element merely indicates a type of business, it is considered weak for the goods and services for which registration is sought. For the rest of the public, this element is considered to be distinctive.

For the purposes of this comparison and bearing in mind that similarities between signs are higher where the coincidences reside in distinctive elements, the Opposition Division will assess the signs from this perspective, as this is the most advantageous scenario for the opponent, namely that the above elements are distinctive for all the relevant goods and services. Therefore, the Opposition will focus the comparison of the signs on the non-English speaking part of the public.

The marks have no elements which could be considered clearly more distinctive than other elements.

Visually, the earlier marks and the contested mark are similar to the extent that they coincide in the letters ‘M-*-Q-U-E-E-N’. They differ, however, in the letter ‘C’ of the earlier marks and in the additional letters ‘Y’ and ‘Inc’ of the contested mark. Moreover, they also differ in the figurative aspect of the contested mark, and in the number of word elements, one against three.

Although the beginning of signs is generally a factor that adds a certain weight to the comparison of signs, this is not decisive in this case for finding similarity, as the signs have fairly different structures and lengths. As a result, an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 52). In this sense, the differences in the signs’ overall impression counterbalance the similarities of their beginnings.

Considering the above, the visual impression created by the contested sign has clearly perceptible differences from that created by the earlier marks. Therefore, the signs are visually similar to a low degree only.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of all the marks coincides in the letters ‘M-*-Q-U-E-E-N’, which makes the marks similar aurally. The pronunciation differs in the sound of the letter ‘C’ of the earlier marks and in the letter ‘Y’ of the contested mark. Moreover, it differs in the sound of the additional final letters ‘Inc’of the contested mark.

The signs have different structures and lengths, which ultimately results in different rhythms and intonations.

Therefore, they are aurally similar to an average degree.

Conceptually, reference is made to the statements made above regarding the meanings of the signs and their composite elements.

The public in the relevant territory will associate the earlier mark with a surname, whilst, the elements of contested sign lack any meaning. Since the other sign will not be associated with any meaning, the signs are not conceptually similar.

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 marks

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

According to the opponent, the earlier European Union trade mark registrations No 17 011 231 and No 7 594 955 have been extensively used and enjoy an enhanced scope of protection. 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 the likelihood of confusion will be, 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 evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar. The relevant public is the public at large and business customers with specific professional knowledge or expertise. The relevant public’s degree of attention will vary from average to high.

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see judgment of 20/09/1998, C‑39/97, ‘Canon’, paragraph 17 et seq.).

The signs are similar to the extent that the word ‘QUEEN’ appears in the earlier marks and in the contested sign and that the letter ‘M’ is found in all the marks in the same position. However, in the opinion of the Opposition Division, this is not sufficient for a finding of likelihood of confusion, even for those goods that were found to be identical.

The earlier marks and the contested sign differ in the additional letter ‘C’ of the earlier marks, in the letter ‘Y’ and in the element ‘Inc’ of the contested mark and in the figurative aspect of the contested mark. Moreover, conceptually, they are not similar.

These additional and differing elements imply that the signs have different lengths, rhythms and intonations. In fact, the marks create quite different overall impressions, and differences are clearly sufficient to outweigh the similarities between them.

Therefore, in spite of the coincidence in the elements ‘M_QUEEN’, the differing elements in the signs are clearly sufficient to exclude any likelihood of confusion between the marks.

Consequently, there is no likelihood of confusion on the part of the public in the relevant territory for which the contested sign is meaningless, and therefore distinctive, which presents the best scenario for the opponent’s case.

This absence of a likelihood of confusion equally applies to the remaining part of the public in the European Union for which the component elements of the mark have a meaning. Indeed, for this part of the public, the word elements of the contested sign have a meaning and introduce additional concepts which are not present in the other sign or different from those conveyed in the other sign creating a greater conceptual distance between the signs.

Since the remaining part of the public will not perceive the signs as more similar overall than the scenario presented in section c) of this decision, it is unnecessary to proceed to a further assessment of the opposition, because the outcome would be the same.

The opponent has also based its opposition on the following earlier trade marks:

• International trade mark registration designating the European Union No 1 273 163 ‘MCQUEEN’ for goods and services in Classes 14, 18 and 35.

• International trade mark registration designating the European Union No 1 273 128 for goods and services in Classes  14, 18, 25 and 35.

• European Union trade mark registration No 565 796 ‘ALEXANDER McQUEEN’ for goods in Classes 18 and 25.

• European Union trade mark registration No 718 031 ‘ALEXANDER McQUEEN’ for goods in Class 14.

Since the International trade mark registration designating the European Union No 1 273 163 ‘MCQUEEN’ is identical to the marks that have been compared, the outcome cannot be different.

The other earlier marks invoked by the opponent and ‘ALEXANDER McQUEEN’ are less similar to the contested mark. This is because, as regards to the first one, it is a figurative mark and it is depicted in slightly stylised letters. Moreover, it contains the letter ‘C’ inside the letter ‘Q’, and therefore the element ‘QUEEN’ it is not easily perceived. As regards to the other earlier marks ‘ALEXANDER McQUEEN’, they contain the additional element ‘ALEXANDER’ at the beginning, rendering the marks even more different. Therefore, the outcome cannot be different and there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected also on the basis of Article 8(1)(b) CTMR.

COSTS

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

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

Michaela SIMANDLOVA

Cristina CRESPO MOLTO

Francesca DRAGOSTIN

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.