OPPOSITION No B 2 958 364

Yours Clothing Limited, Unit B, Finmere Park, Southgate Way, Orton Southgate, PE2 6YG Peterborough, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, CB25 9PD Cambridge, United Kingdom (professional representative)

a g a i n s t

Maglificio BM S.R.L., Via XX Settembre 91, 21010 Cardano al Campo (Varese), Italy (applicant]), represented by Gianluca de Cristofaro, Via della Moscova 18, 20121 Milano (MI), Italy (professional representative).

On 21/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 958 364 is partially upheld, namely for the following contested goods:

Class 18: Casual bags; backpacks; wallets; totebags; leather bags and wallets; travel garment covers; briefcases [leather goods].

Class 25: Waist belts; clothing; shoes; headgear.

2. European Union trade mark application No 16 809 411 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 18: Leather.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 809 411 for the figurative trade mark .

The opposition is based on, inter alia, the following earlier rights:

• European Union trade mark registration No 12 840 922 for the figurative mark , in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

• United Kingdom non-registered trade mark , in relation to which the opponent invoked Article 8(4) 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 registration No 12 840 922 for the figurative mark .

1. The goods and services

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

Class 16: Brochures; posters; plastic carrier bags; labels, tags, swing tags; stickers; writing papers, pens, pencils, cards, notelets, note cards.

Class 25: Articles of clothing, footwear and headgear; articles of outer clothing; articles of under clothing; nightwear; leisurewear; sportswear; bathing costumes; hosiery and socks; neck ties.

Class 35: The bringing together, for the benefit of others, of a variety of clothing, footwear, headgear, cosmetics, toiletries, luggage, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles enabling customers to conveniently view and purchase those goods in a retail store; retail services connected with the sale of clothing, footwear, headgear, cosmetics, toiletries, luggage, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles from an Internet website, through a television shopping channel, or from a mail order catalogue; retail services connected with the sale of clothing, footwear, headgear, belts, hosiery, jewellery, watches, cosmetics, toiletries, luggage, bags, purses, leather goods and textiles; advertising services; direct mail advertising; promotional services relating to the sale or distribution of clothing, footwear, headgear, cosmetics, toiletries, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles; dissemination of advertising material; product information in relation to clothing, footwear, headgear, cosmetics, toiletries, luggage, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles; product price comparison services; trade shows, exhibitions and events.

The contested goods are the following:

Class 18: Casual bags; backpacks; wallets; totebags; leather bags and wallets; travel garment covers; briefcases [leather goods]; leather.

Class 25: Waist belts; clothing; shoes; headgear.

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 18

Clothing, footwear and headgear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion. The contested casual bags; backpacks; wallets; totebags; leather bags and wallets; briefcases [leather goods] in Class 18 are related to the opponent’s articles of clothing, footwear and headgear in Class 25. This is because they are likely to be considered by the consumers as aesthetically complementary accessories to articles of outer clothing, headgear and even footwear because they are usually closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered to be similar.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the contested travel garment covers, which are articles of luggage, are similar to a low degree to the opponent’s retail services connected with the sale of luggage in Class 35.

The contested leather in Class 18 refers to the skins of various kinds of animals. This is a raw material. The fact that one product is used for manufacturing another (for example, leather for footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw material in Class 18 is intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s clothing, footwear and headgear goods in Class 25. Therefore, these goods are dissimilar.

The contested leather and the opponent’s goods in Class 16, namely brochures; posters; plastic carrier bags; labels, tags, swing tags; stickers; writing papers, pens, pencils, cards, notelets, note cards, are also dissimilar as they differ in their natures, purposes, methods of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kinds of undertakings.

The contested leather and the opponent’s retail services connected with the sale of clothing, footwear, headgear, belts, hosiery, jewellery, watches, cosmetics, toiletries, luggage, bags, purses, leather goods and textiles in Class 35 are also not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are dissimilar. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as the opponent’s retail store services, internet shopping, television shopping channel or mail order catalogue services in Class 35.

The contested leather is also dissimilar to all the remaining opponent’s services in Class 35, namely advertising services; direct mail advertising; promotional services relating to the sale or distribution of clothing, footwear, headgear, cosmetics, toiletries, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles; dissemination of advertising material; product information in relation to clothing, footwear, headgear, cosmetics, toiletries, luggage, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles; product price comparison services; trade shows, exhibitions and events since they do not share any relevant points of contact. They clearly differ in nature, purpose and method of use. Furthermore, they do not coincide in producers, end users or distribution channels and they are not complementary or in competition.

Regarding the above-mentioned comparisons of the contested leather and the opponent’s goods and services, for the sake of good order, the Opposition Division notes that there are no arguments on file to the contrary, since the opponent only refers in general terms to the similarity between the contested goods in Class 18 and the opponent’s goods in Class 25 and retail services in Class 35, but there are no specific claims regarding this particular item that is not a fashion accessory, as explained above.

Contested goods in Class 25

The contested waist belts are included in the broad category of the opponent’s articles of clothing and the contested shoes are included in the broad category of the opponent’s articles of footwear. Therefore, they are identical.

Clothing; headgear are contained in both lists of goods despite the slight different wording (listed as articles of clothing and headgear in the opponent’s list of goods). They are, therefore, identical.

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 found to be identical or similar to varying degrees are directed at the public at large.

The degree of attention is considered to be average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘Yours’ is meaningful in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public since, from this public´s perspective, the signs bear additional conceptual coincidences, as will be explained in detail below. It is, therefore, considered that focusing the comparison of signs on this part of the public constitutes the best-case scenario for a likelihood of confusion to occur.

This common element will be understood by the relevant public as a ‘possessive pronoun used to refer to a thing or things belonging to or associated with the person or people that the speaker is addressing’ (information extracted from Oxford Living Dictionaries on 11/09/2018 at www.oxforddictionaries.com). This word is not related to the relevant goods and services in a way that it would undermine its distinctiveness and is, therefore, considered to be distinctive to an average degree.

The figurative element contained in the earlier mark consisting of a representation of a heart is a commonplace element that refers to the idea that the consumer will love the goods and services. It will be, therefore, perceived as a promotional message, evocative of a positive experience of purchase. Consequently, this figurative element has little capacity to indicate commercial origin and has a low distinctive character.

The big letter ‘y’ depicted on top of the contested sign, being the initial of the verbal element ‘Yours’, only reinforces this element, while its circular background is of a purely decorative nature and possesses, therefore, less distinctive character.

Furthermore, in the present case, the typeface in which the verbal elements of the signs are written is fairly standard in the earlier mark and only slightly stylised in the contested sign, and will not lead the consumer’s attention away from the verbal elements it embellishes.

Neither sign has any element that could be considered clearly more dominant than other elements. Even considering the size of the letter ‘y’ depicted on a circular background in the contested sign, the word element ‘yours’ is longer and occupies almost the same space as this element and, therefore, the figurative element does not overshadow the verbal element.

Visually, the signs coincide in the distinctive word ‘yours’ and, therefore, the verbal element of the earlier mark is wholly included in the contested sign. The signs only differ in the figurative element representing a heart in the earlier mark, in the additional letter ‘y’ of the contested mark depicted on a decorative circular background, as well as in the typeface in which the marks are written, differences that have, however, a lower impact as explained before.

Indeed, as regards the typeface, when comparing signs in terms of their word elements, the Office considers signs similar insofar as they share a significant number of letters in the same position and when they are not highly stylised or when they are stylised in the same or a similar manner. Similarity may be found despite the fact that the letters are graphically portrayed in different typefaces, in italics or bold, in upper or lower case or in colour (judgments of 18/06/2009, T-418/07, LiBRO, EU:T:2009:208; 15/11/2011, T-434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663; C-42/12 P, Alpine Pro Sportswear & Equipment, EU:C:2012:765, appeal dismissed). In the present case, the signs share the word and its typeface is deemed not to be highly stylised, even though in one case it is written in rather standard capital letters and in the other one in slightly stylised title case.

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

Aurally, the pronunciation of the signs coincides in the syllable ‛yours’, present identically in both signs as the whole distinctive element of the earlier mark and the contested sign. The pronunciation differs in the sound of the additional letter ‘y’ of the contested mark, which has no counterpart in the earlier sign. In this scenario, the signs are aurally highly similar.

However, considering that the letter ‘y’ merely reinforces the element ‘Yours’, it is likely that it will not be pronounced by at least part of the public. In this scenario, the signs will be aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the meaning of the distinctive element ‘yours’ and the additional differing concepts are of a low distinctive character, the signs are conceptually highly similar.

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

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an element of low distinctive character in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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

It has been established in the previous sections of this decision that the contested goods are partly identical or similar to varying degrees to the goods and services on which the opposition is based and partly dissimilar. They are directed at the public at large and the degree of attention is average. The earlier mark has an average degree of distinctiveness for all the relevant goods and services.

It has also been concluded that the signs are visually similar to an average degree, aurally highly similar or even identical, and conceptually highly similar, as far as they coincide in the distinctive element ‘yours’, as explained in detail above. The whole verbal element of the earlier mark is fully reproduced in the contested sign and the differences between the signs are of low distinctiveness or have a lower impact, as explained before.

Furthermore, account should be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

It is true that regarding clothing products and fashion accessories, the choice of the item is generally made visually, so the visual aspect plays a greater role in the global assessment. In the present case, the signs are visually similar to an average degree and the figurative components of the marks are not specially distinctive or striking. Moreover, oral communication in respect of clothing products and the trade mark is not excluded. Finally, it must be taken into account that the signs are aurally and conceptually highly similar (or even aurally identical).

It should also be borne in mind that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods and services covered are from the same or economically linked undertakings. Indeed, as claimed by the opponent, it is common in the clothing/fashion sector for the same mark to be constructed in various different ways according to the type of products that it relates to or to use sub-brands in order to distinguish various clothing lines. Therefore, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical and similar goods, even those being similar to a low degree. Therefore, on account of the principle of imperfect recollection, the relevant public may believe that these goods come from the same undertaking or, at least, economically-linked undertakings, particularly in the belief that the contested mark is a mere sub-brand of the earlier sign.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

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

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As far as based on Article 8(1)(b) EUTMR, the opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 12 142 949 for the word mark ‘YOURS LONDON’, in Classes 16, 25 and 35;

• UK trade mark registration No 2 379 826 for the word mark ‘YOURS’, in Classes 16, 25 and 35;

• UK trade mark registration No 2 606 313  for the word mark ‘YOURS’, in Class 35;

• UK trade mark registration No 2 634 921 for the word mark ‘YOURS CLOTHING’, in Classes 16, 25 and 35.

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The Opposition Division will continue the examination of the opposition regarding the remaining contested goods first in relation to Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 12 840 922 for the figurative mark , for which the opponent claimed repute in the EU and, particularly, in the UK.

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 above-mentioned 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.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union and, particularly, in the UK.

Reputation implies a knowledge threshold that is reached only when the earlier mark is 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 07/06/2017. Therefore, the opponent was required to prove that the trade mark 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 (according to the notice of opposition), namely:

Class 16: Brochures; posters; plastic carrier bags; labels, tags, swing tags; stickers; writing papers, pens, pencils, cards, notelets, note cards.

Class 25: Articles of clothing, footwear and headgear; articles of outer clothing; articles of under clothing; nightwear; leisurewear; sportswear; bathing costumes; hosiery and socks; neck ties.

Class 35: The bringing together, for the benefit of others, of a variety of clothing, footwear, headgear, cosmetics, toiletries, luggage, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles enabling customers to conveniently view and purchase those goods in a retail store; retail services connected with the sale of clothing, footwear, headgear, cosmetics, toiletries, luggage, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles from an Internet website, through a television shopping channel, or from a mail order catalogue; retail services connected with the sale of clothing, footwear, headgear, belts, hosiery, jewellery, watches, cosmetics, toiletries, luggage, bags, purses, leather goods and textiles; advertising services; direct mail advertising; promotional services relating to the sale or distribution of clothing, footwear, headgear, cosmetics, toiletries, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles; dissemination of advertising material; product information in relation to clothing, footwear, headgear, cosmetics, toiletries, luggage, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles; product price comparison services; trade shows, exhibitions and events.

However, in its further observations, the opponent only refers to the reputation in relation to the manufacture and retail of clothing, footwear, headgear and associated fashion accessories. Indeed, the opponent explains that, since the first use in 1997, the mark has been used continuously and that it currently has 130 clothing and fashion accessories stores located throughout the UK, all bearing the mark ‘YOURS’, and that it also began trading these goods online in 2007, both in the UK and internationally.

The opposition is directed against the following goods:

Class 18: Leather.

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 26/03/2018, the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following relevant documents:

• Annex 3: copy of five printouts from the website ‘www.yoursclothing.co.uk’, dating 01/12/2011, 23/03/2012, 15/08/2013, 27/02/2014 and 08/02/2015, taken from ‘Screenshots.com’, a website that allows users to view screenshots of what a website looks like now and throughout its history. The copy website pages show various ‘YOURS’ figurative trade marks (‘YOURS’ and heart device) in relation to clothing (nightwear, swimwear, leisurewear, party clothes) and footwear, together with jewellery and fashion accessories and their sale.

• Annex 4: screenshots of the opponent’s website dated 26/03/2018, showing that the opponent operates in the UK, Germany, France, Ireland, Poland, the Netherlands and Spain. The opponent further explains that its goods were sold to customers in 81 countries in 2010 and in 182 countries in 2015.

• Annex 5: internal report from the opponent containing information about the sales from 01/11/2010 to 31/12/2015, among other countries in all Member States of the EU, the UK being their largest market.

• Annex 6: screenshots, dated 26/03/2018, of the opponent’s website containing alleged testimonials of customers from Belgium, Latvia, Lithuania, Bulgaria, Malta, Croatia, the Netherlands, Cyprus, Czech Republic, Denmark, Ireland, Estonia, Poland, Portugal, Finland, Romania, France, Germany, Greece, Slovenia, Spain, Hungary, Sweden and Italy, about the design, quality, good price and fast delivery of the goods, although some of them are not in English.

• Annex 7: forty-eight invoices issued by the opponent to various clients in the UK for the delivery of various items of clothing (leisurewear, underwear, scarves, gloves, nightwear, sportswear, hosiery), footwear, bags and handbags, purses, belts, necklaces, rings, bracelets, and fashion accessories such as flower corsages or sunglasses. The products appear with a reference, a description, the size, the price and a picture. The invoices are dated between 02/01/2011 and 02/11/2015, and show the trade mark on the top right corner.

• Annex 8: screenshots, dated 26/03/2018, of the opponent’s website containing alleged testimonials of customers from the UK only, about the design, quality, good price and fast delivery of the goods.

• Annex 9: screenshot of the opponent website showing a UK map with the location of the opponent’s shops in the UK.

• Annex 10: six online articles, dated from 13/12/2011 to 14/12/2017, relating to the activities of the opponent in connection with to its plus-size womenswear UK stores bearing the trade mark ‘YOURS’. One of the articles explains how their clothes and outfits make their clients feel better about themselves. Another one indicates the turnover and pre-tax profit for 2013 and 2014 and mentions that their proposition is based on genuine plus-size clothing, designed and fitted on plus-size models, offering on-trend clothing at the best value. The remaining articles refer to new store openings in England, Wales, Scotland and Ireland in 2014, 2015 and 2017.

• Annex 11: six catalogues dating from 2011 to 2015 showing the trade mark ‘YOURS’ in relation to the sale of clothing (party clothing, leisurewear, scarves, gloves, swimwear, sportswear, nightwear, underwear, hosiery), footwear and headgear, together with fashion accessories such as jewellery, belts, bags, purses, sunglasses. The trademark ‘YOURS’ can be seen on catalogue front pages, in some inside pages, and on the neck labels and sole insert of some items.

• Annex 12: seven extracts of on-line fashion blogs dated between August 2014 and January 2017. The articles mention the opening of new ‘YOURS’ shops and speak about how gorgeous and generous their plus sizes clothes are, about the product range and sizes available for the clothes of the plus sized UK brand or about their newest collections. According to one blogger, in one of the openings a celebrity spoke highly about their clothes, the shop and the brand itself. The ‘YOURS’ trade mark with the heart logotype, , appears at the entrance of the shops, on the walls and, in some of the pictures the ‘YOURS’ trade mark can be seen on the hangers dresses, leisurewear and the price labels of various items of clothing.

• Annex 13: screenshots of the opponent’s social media accounts (facebook, Instagram, twitter, pinterest and youtube).

• Annex 14: screenshots from the opponent’s website mentioning some awards received by it within the fashion industry, namely the ‘Best Plus Size Clothing from Reveal Online Fashion Awards 2014’, the ‘Best Plus Size 2015 at the Now Magazine #feelgoodfashion awards’ and the ‘Best Swimwear Range and Best High Street Retailer at the 2016 British Plus Size Awards’.

The opponent also includes in its observations three links to television advertisements on YouTube dating from 2013 to 2015 allegedly showing use of the ‘YOURS’ trade mark.

As indicated above, reputation requires recognition of the mark by a significant part of the relevant public for the goods or services it covers. In making that assessment, account should be taken, in particular of the market share held by the mark; how intensive, geographically widespread and long-standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

In the present case, having examined the material listed above, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Even though some conclusions may be drawn from the documents submitted, in particular that the opponent is a retailer of own-branded products namely clothing, footwear, headgear and fashion accessories, such as jewellery and leather goods (bags, purses, belts, etc.), a major part of the evidence consists of documents originating from the opponent itself, namely the sales figures, invoices, catalogues, extracts of corporate website or social media accounts of the opponent, etc. Even if these documents present some data regarding the turnover figures generated by the sales of clothing and fashion accessories in several countries of the European Union, the data must be supported by other independent information able to bring some light regarding the knowledge threshold of the public in the relevant territory.

Furthermore, regarding the catalogues, as well as the YouTube advertisements, the opponent did not submit any information as to the audience rates or circulation figures attained by the relevant publications. The screenshots from the opponent’s websites in various languages do not allow for any conclusions to be drawn on consumer perception. Moreover, the testimonials from customers that appear in its website, the articles in fashion blogs and other publications are habitual means of marketing and do not demonstrate the actual perception of the public. Consequently, the submitted evidence can give little information as to the level of recognition of the earlier mark.

In this regard, despite showing some use of the trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted, since the turnover figures are not put into the context of the market and competitors in question. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public.

Therefore, in the absence of sufficient independent and objective evidence that would enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public, such as a survey on the mark’s recognition, the market share held by the mark and the position it occupies in the market in relation to competitors’ goods and services, opinion polls or other means of evidence such as sworn or affirmed statements, facts and figures originating from independent sources such as auditors or chambers of commerce, decisions of Courts or administrative bodies, bearing in mind the above analysis of the submitted documents as a whole and the probative value of the evidence and information contained therein, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark is known by such a significant part of the relevant public so as to reach the threshold necessary for a finding of reputation.

It must be recalled that, as follows from Article 95(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (06/11/2014, R-0437/2014-1, SALSA/SA SALSA (fig. mark) et al.).

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

The opponent has also based the opposition under Article 8(5) EUTMR on the same additional earlier trade marks listed under Article 8(1)(b) EUTMR, namely the following:

• European Union trade mark registration No 12 142 949 for the word mark ‘YOURS LONDON’, in Classes 16, 25 and 35;

• UK trade mark registration No 2 379 826 for the word mark ‘YOURS’, in Classes 16, 25 and 35;

• UK trade mark registration No 2 606 313  for the word mark ‘YOURS’, in Class 35;

• UK trade mark registration No 2 634 921 for the word mark ‘YOURS CLOTHING’, in Classes 16, 25 and 35.

Since the claim of reputation was made in relation to the same or a narrower scope of goods and services, the outcome cannot be different with respect to the conclusions already reached regarding reputation.

The Opposition Division will continue the examination of the opposition regarding the remaining contested goods in relation to the last remaining ground of opposition, namely Article 8(4) EUTMR.

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

Article 8(4) EUTMR was raised, inter alia, in connection with the non-registered trade mark used in the course of trade in the United Kingdom in relation to (inter alia) the manufacture and retail of bags, leather goods, clothing and clothing accessories.

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

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

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

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

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

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

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

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

For reasons of procedural economy, the Opposition Division will examine first the second requirement.

1. The right under the applicable law (Passing off – non-registered trade mark under the laws of the United Kingdom)

The opposition is based on a non‑registered trade mark used in the United Kingdom. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

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

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (emphasis added).

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

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

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely non-registered trade-mark used in the course of trade in the UK. The opponent only claims in its observations that ‘under the UK law, the owner of an unregistered sign who enjoys goodwill in that sign, may prevent third-party use of similar sign causing a misrepresentation to the relevant public, leading to damage to the owner of the unregistered sign’. However, the opponent does not make any reference to the relevant legal provision and its content (text), or reference to jurisprudence.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

The opponent has also based the opposition under Article 8(4) EUTMR on the following earlier rights:

• Non-registered trade mark ‘YOURS’, used in the course of trade in the UK, in relation to (inter alia) the manufacture and retail of bags, leather goods, clothing and clothing accessories;

• Non-registered trade mark ‘YOURS LONDON’, used in the course of trade in the UK, in relation to (inter alia) the manufacture and retail of bags, leather goods, clothing and clothing accessories;

• Non-registered trade mark ‘YOURS CLOTHING’, used in the course of trade in the UK, in relation to (inter alia) the manufacture and retail of bags, leather goods, clothing and clothing accessories;

The outcome regarding these earlier rights cannot be different with respect to the conclusions already reached regarding the content of the national law.

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

María del Carmen SUCH SÁNCHEZ

Eva Inés PEREZ SANTONJA

Alexandra APOSTOLAKIS

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.