OPPOSITION No B 2 961 780

G-Star Raw C.V., Joan Muyskenweg 39, 1114 AN, Amsterdam-Duivendrecht, Netherlands (opponent), represented by HGF BV, Gedempt Hamerkanaal 147, 1021 KP, Amsterdam, Netherlands (professional representative)

a g a i n s t

Lee We Hyun, 36 Eoulmadang-ro, Mapo-gu, Seoul, Republic Of Korea, (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20, Malmö, Sweden (professional representative).

On 09/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 961 780 is upheld for all the contested goods.

2. European Union trade mark application No 16 885 097 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 885 097 ‘RAWROW’. The opposition is based on, inter alia, European Union trade mark registrations No 9 914 284 and No 12 849 774 both for the trademark ‘RAW’. The opponent invoked Article 8(1)(b) and (5) EUTMR.

PRELIMINARY REMARK

The earlier European Union trade mark registration No 9 914 284 has pending cancellation proceedings directed against Classes 20 and 24. This earlier mark also covers goods in Classes 9, 14, 16 and 18, on which the opposition is also based. As a consequence, the Opposition Division will proceed with the opposition proceedings based on this earlier European Union trade mark registration No 9 914 284 on the basis of the goods in Classes 9, 14, 16 and 18 which are not concerned by the cancellation proceedings.

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 9 914 284 and No 12 849 774.

1. The goods

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

European Union trade mark registration No 9 914 284:

Class 9: Spectacles; sunglasses, sunglass products, namely, headstraps, sunglass retainers, eyeglass cases, and sunglasses cases.

Class 14: Watches; bijoux and jewellery.

Class 16: Paper, cardboard and goods from these materials, namely wrapping paper, posters, post cards, filter paper, paper labels, table napkins of paper, waxed paper, paper ribbons, paper sheets (stationery), writing paper, envelopes, packaging paper, paper bags and pouches, flags of paper, face towels of paper; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; plastic material for packaging (not included in other classes).

Class 18: Goods made of leather and imitations of leather not included in other classes; trunks and travelling bags, rucksacks, bags, pocket wallets, umbrellas, parasols and walking sticks.

European Union trade mark registration No 12 849 774:

Class 25: Clothing, footwear and headgear for young people and young adults, including jeans, clothing made of denim, urban wear and street wear.

The contested goods are the following:

Class 16: Paper shopping bags.

Class 18: Leather straps; Leather bags; Briefcases (leather goods); Shopping bags made of skin; Bags [envelopes, pouches] of leather, for packaging; Pouches of leather; Leather handbags; Small bags for men; handbags for men; Portmanteaux; Briefcases; Document cases; Handbags for ladies; Leather shopping bags; Hip bags; Hipsacks; Sport bags; Shoulder bags; Wallets; Wallets including card holders; Baby carrying bags; Travelling bags; Travel baggage; Shoe bags for travel; Travelling trunks; Rucksacks; Hiking rucksacks; Belt bags and hip bags; Tote bags; Clutch bags.

Class 25: Shoes; Mountaineering boots; Sports shoes; Rugby shoes; Sandals; Leisure shoes; Aqua shoes; Beach shoes; Women's shoes; Bath slippers; Rain boots; Canvas shoes; Sneakers; Slippers; Boots for motorcycling; Boots; Golf shoes; Leather shoes; Denim jeans; Cardigans; Underwear; Pajamas; Shirts; T-shirts; Polo shirts; Snap crotch shirts for infants and toddlers; Infants' boots; Pants; Short trousers; Drawers (clothing); Coats; Undershirts; Sweat shirts; Sweat pants; Skirts; Gloves including those made of skin, hide or fur; Aprons (clothing); Overcoats; One-piece suits; Jumpers.

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

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

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

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 16

The contested paper shopping bags are included in the broad category of the opponent’s paper bags. Therefore, they are identical.

Contested goods in Class 18

The contested leather bags; shopping bags made of skin; bags [envelopes, pouches] of leather, for packaging; leather handbags; small bags for men; handbags for men; handbags for ladies; leather shopping bags; Portmanteaux; Hipsacks; hip bags; sport bags; shoulder bags; shoe bags for travel; belt bags and hip bags; tote bags; clutch bags; pouches of leather are included in the broad category of the opponent’s bags. Therefore, they are identical.

Travelling bags; travel baggage and rucksacks are identically contained in both lists of goods.

The contested wallets include, as a broader category the opponent’s pocket wallets. 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 wallets including card holders overlap with the opponent’s pocket wallets. Therefore, they are identical.

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

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

The contested briefcases; briefcases (leather goods); document cases are cases used to carry personal effects (i.e. money, keys, toiletries, documents, credit and/or business cards). They are similar to the opponent’s bags because they coincide in the following criteria: all of these goods share the same purpose (they are designed for carrying or storing), may be produced by the same companies and distributed through the same channels. They may also be aimed at the same consumers.

The contested baby carrying bags are similar to a low degree to the opponent’ bags because they can coincide in distribution channels and producer. Furthermore, they may target the same end user.

When comparing the opponent’s goods made of leather and imitations of leather not included in other classes to the contested leather straps, the nature of these products can be considered the same and their purpose may also be the same, as they can be used as parts of clothing or baggage and/or as fasteners to attach or bind items. However, in the absence of an express limitation by the opponent clarifying the vague term, it cannot be assumed that they coincide in other criteria. Therefore, these goods are considered similar to a low degree.

Contested goods in Class 25

The contested shoes; mountaineering boots; sports shoes; rugby shoes; sandals; leisure shoes; aqua shoes; beach shoes; women's shoes; bath slippers; rain boots; canvas shoes; sneakers; slippers; boots for motorcycling; boots; golf shoes; leather shoes overlap with the opponent’s footwear for young people and young adults. Therefore, they are identical.

The contested denim jeans; cardigans; underwear; pajamas; shirts; t-shirts; polo shirts; snap crotch shirts for infants and toddlers; infants' boots; pants; short trousers; drawers (clothing); coats; undershirts; sweat shirts; sweat pants; skirts; gloves including those made of skin, hide or fur; aprons (clothing); overcoats; one-piece suits; jumpers overlap with the opponent’s clothing for young people and young adults. Therefore, they are 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 different degrees are directed at the public at large. The degree of attention is considered to be average.

3. The signs

RAW	RAWROW
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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

The 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 element ‘RAW’, which the signs have in common, is meaningful for the English speaking part of the public. As it will influence the concepts conveyed by the marks at issue, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public.

For the relevant part of the public, the term ‘RAW’ is fanciful, and is, therefore distinctive.

As regards the word ‘RAWROW’ of the contested mark, it has no meaning for the relevant public and is therefore also distinctive.

The contested mark does not have any element that is more distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the word ‘RAW’, which is the sole component of the earlier mark and the first three letters of the contested sign, where, as mentioned above, the consumer normally focuses more. The signs differ in the letters ‘ROW’ in the contested sign, which have no counterpart in the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 marks have been extensively used and enjoy 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 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 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 in conflict have been found to be partly identical and partly similar to different degrees. The average degree of visual and aural similarity between the signs results from the common element ‘RAW’, which also constitutes the entirety of the earlier mark and the first three letters of the contested sign. Moreover, as explained above, the element that the signs have in common has an average degree of distinctiveness in relation to the relevant goods.

From a conceptual point of view, a conceptual comparison is not possible since neither of the signs have a meaning.

Serious consideration has to be given to the fact that the earlier sign is entirely incorporated in the contested mark. Contrary to what the applicant argues in its observations, the differing letters ‘ROW’ present in the contested mark are not sufficient to outweigh the visual and aural similarities arising from the remaining common parts of the signs. In principle, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In this regard, the applicant argues that the fact that there is some coincidence between the signs does not lead to a finding of similarity, and makes reference to the Judgement of the Court of First Instance of 13/10/2009, T-146-08, REDROCK EU:T:2009:398. However, in said case, the common element of the signs was considered to have a rather limited distinctive character, which among other factors led to the finding of dissimilarity of the signs.

Moreover, it follows from the cited case-law hereafter that the marks containing or reproducing an element of the other may be considered, at least to that extent, similar (03/07/2003, T-129/01, Budmen, EU:T:2003:184, § 47 to 50; 04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 40; 18/02/2004, T-10/03, Conforflex, EU:T:2004:46, § 59 onwards; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 46 onwards; 06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 54 to 57; 04/05/2005, T-359/02, Star TV, EU:T:2005:156; 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 49 onwards; 25/05/2005, T-352/02, PC Works, EU:T:2005:176, § 34 onwards; 25/05/2005, T-288/03, Teletech Global Ventures, EU:T:2005:177, § 86 onwards; 22/03/2007, T-322/05, Terranus, EU:T:2007:94, § 35 onwards; 08/09/2010, T-152/08, Scorpionexo, EU:T:2010:357, § 66 onwards; 08/09/2010, T-369/09, Porto Alegre, EU:T:2010:362, § 26 onwards; 20/09/2011, T-1/09, Meta, EU:T:2011:495; 28/09/2011, T-356/10, Victory Red, EU:T:2011:543, § 26 onwards; 23/05/2007, T-342/05, Cor, EU:T:2007:152; 10/11/2011, T-313/10, Ayuuri Natural, EU:T:2011:653; and 15/11/2011, T-434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 55 onwards). The Opposition Division cannot simply ignore such an extensive precedent in case-law that clearly arises here.

Moreover, it should be recalled that conflicting trade marks have to be compared via a global appreciation of the visual, aural or conceptual similarities between them bearing in mind, in particular, their distinctive and dominant components (22/06/1999 C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25). In accordance with the same line of case law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 30).

In addition, 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). 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/services covered are from the same or economically linked undertakings.

Therefore, the likelihood of confusion will depend to a great extent on the overall impressions that the signs create and whether or not the public will be able to safely distinguish the signs on the basis of the differences between them.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that it is descriptive of the characteristics of the relevant goods, as being fresh and unfinished goods, and therefore that this common element has only limited relevance in the perception of the signs. In support of its argument the applicant refers to the case of the Board of Appeal R 1306/2009-4, CINETAIN.

The Opposition Division notes that the relevant public in this case is the part of the public for which the element ‘RAW’ is fanciful and therefore distinctive, namely, the non-English speaking public. As a consequence, and considering that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, this argument of the applicant must be set aside.

The applicant also argues that its EUTM has a reputation and makes reference to a particular website to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 9 914 284 and No 12 849 774. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 9 914 284 and No 12 849 774. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registrations No 9 914 284 and No 12 849 774 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is 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 marks due to its reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Nicole CLARKE

Cristina CRESPO MOLTO

Erkki MÜNTER

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.