OPPOSITION No B 2 987 181

Hope Stockholm AB, Gävlegatan 12 A, 11330, Stockholm, Sweden (opponent), represented by Magnusson Advokatbyrå AB, Hamngatan 15, 103 91, Stockholm, Sweden (professional representative)

a g a i n s t

NM Hope Limited, Stoney Croft, Whitchurch Hill, Whitchurch-on-Thames, Oxfordshire, RG8 7NT, United Kingdom (applicant), represented by Keltie LLP, No. 1 London Bridge, London, SE1 9BA, United Kingdom (professional representative).

On 14/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 987 181 is upheld for all the contested goods.

2. European Union trade mark application No 16 889 115 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 16 889 115 ‘Hope by Nayna McIntosh’, namely against all the goods in Classes 14, 18 and 25. The opposition is based on, inter alia, European Union trade mark registration No 15 848 336 ‘HOPE STOCKHOLM’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

According to Article 2(2)(c) EUTMDR, the notice of opposition must contain the grounds on which the opposition is based by means of a statement to the effect that the requirements under Article 8(1), (3), (4), (5) or (6) of Regulation (EU) 2017/1001 in respect of each of the earlier marks or rights invoked by the opposing party are fulfilled.

In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is checked or if they are indicated in any of its annexes or supporting documents.

According to Article 5(3) EUTMDR, if the notice of opposition does not contain grounds for opposition in accordance with Rule 2(2)(c) EUTMDR, and if those deficiencies have not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

In the present case, the contested EUTM application No 16 889 115 was published on 10/08/2017 and the opposition period expired on 10/11/2017.

The opponent filed its notice of opposition on 03/11/2018 and clearly indicated Article 8(1)(b) EUTMR as the only ground of the opposition for all three of the earlier marks invoked.

However, in its subsequent observations, filed on 24/03/2018, the opponent added a reference to the Swedish registered company names ‘HOPE Production AB’ and ‘Hope Retail AB’ as a further basis of the opposition. Moreover, the opponent claims that the ‘HOPE’ brand/trade marks have a reputation in Scandinavian countries.

The opponent did not make any reference to Article 8(4) or 8(5) EUTMR in the notice of opposition or during the opposition period, namely until 10/11/2017. Consequently, the Office has no reason to consider that the opponent’s intention was to base its claim on Article 8(4) and (5) EUTMR. Since the opponent did not invoke Article 8(4) or (5) EUTMR during the opposition period, its later submissions, insofar as they can be seen as a reference to Article 8(4) and (5) EUTMR in respect of the two registered company names and the reputation of the opponent’s trade marks, cannot be taken into account as further grounds, as they were not invoked within the opposition period.

Consequently, the Office finds that the opposition was duly entered in respect of Article 8(1)(b) EUTMR only and will therefore examine the opposition in respect of this ground only.

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 15 848 336 ‘HOPE STOCKHOLM’.

1. The goods

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

Class 14: Lapel pins [jewellery]; earrings of precious metal; gold earrings; earrings; platinum rings; platinum jewelry; sterling silver jewellery; precious jewellery; gold bracelets; bracelets [jewellery, jewelry (Am)]; bracelets; bracelets of precious metal; bracelets; gold necklaces; necklaces [jewellery, jewelry (Am)]; gold jewellery; gold plated earrings; gold-plated necklaces; necklaces [jewellery, jewelry (Am)]; clips of silver [jewellery]; tie bars; cuff links; cuff links made of gold; cuff links made of imitation gold; cuff links made of silver plate; cuff links and tie clips; earrings; gold rings; rings [jewellery, jewelry (Am)]; silver necklaces; silver earrings; silver bracelets; silver-plated bracelets; silver-plated necklaces; silver-plated earrings; silver-plated rings; silver rings; tie bars; tie clips of precious metal; tie chains of precious metal; tie bars; tie clips of precious metal; tie pins; jewellery made of bronze; gold jewellery; jewellery made from silver; jewellery, including imitation jewellery and plastic jewellery; jewellery made of plastics; alarm clocks; bracelets for watches; wristwatches; women’s watches; electronic alarm clocks; clocks and watches, electric; clocks and watches, electric; pendant watches.

Class 18: Evening handbags; work bags; cross-body bags; shoulder bags; leather shoulder belts; ladies’ handbags; portfolio cases [briefcases]; leather cases; cases of imitation leather; keycases; casual bags; holders in the nature of cases for keys; key bags; wrist mounted purses; handbags made of leather; gentlemen’s handbags; handbags made of leather; handbags made of imitations leather; handbags made of leather; folding briefcases; garment bags for travel made of leather; card cases [notecases]; card wallets [leatherware]; card wallets [leatherware]; cosmetic purses; credit card holders made of leather; credit card holders made of imitation leather; clutch bags; briefcases [leather goods]; leather purses; bags [envelopes, pouches] of leather, for packaging; leather bags and wallets; belt bags and hip bags; coin holders; toiletry bags; wallets; leather wallets; briefcases [leather goods]; leather purses; backpacks; shoe bags; carriers for suits, shirts and dresses; bags made of leather; bags made of imitation leather; business card cases; umbrella covers; umbrellas.

Class 25: Evening coats; evening wear; evening wear; ankle socks; sleeveless jackets; vest tops; sleeveless jerseys; trews; shoulder scarves; shoulder wraps; swimming costumes; bathing costumes for women; robes; ball gowns; belts made from imitation leather; leather belts [clothing]; belts made out of cloth; belts [clothing]; bermuda shorts; bikinis; blouses; shirts and slips; chemisettes; leotards; bodies [clothing]; boleros; bomber jackets; cotton coats; boxer shorts; wedding dresses; wedding dresses; pantsuits; culotte skirts; pants; trousers; trousers of leather; capes; cargo pants; evening wear; pedal pushers; cycling shorts; women’s suits; ladies’ clothing; ladies’ dresses; chemise tops; lingerie; womens’ outerclothing; denims [clothing]; denim jeans; costumes; leather suits; duffel coats; down jackets; down vests; dress pants; gowns (dressing -); fleeces; fleece vests; casual trousers; leisure suits; down jackets; leisurewear; casual shirts; polo shirts; neckerchiefs; mufflers [clothing]; neck scarfs [mufflers]; turtlenecks; gloves [clothing]; gloves including those made of skin, hide or fur; gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; aloha shirts; men’s and women’s jackets, coats, trousers, vests; beach wraps; hoods [clothing]; head scarves; head scarves; weatherproof clothing; jackets [clothing]; leather jackets; sleeved jackets; denim jeans; denims [clothing]; denim jackets; jumpers; sweatpants; sweatpants; jogging sets [clothing]; twin sets; sweaters; coats for women; cashmere scarves; kimonos; skirts; skirt suits; skorts; denims [clothing]; cashmere clothing; leather clothing; clothing of imitations of leather; girls’ clothing; sportswear; sportswear; breeches; boardshorts; trouser socks; cardigans; ready-to-wear clothing; short-sleeved or long-sleeved t-shirts; short overcoat for kimono (haori); car coats; tabards; short petticoats; short-sleeve shirts; short-sleeved t-shirts; short-sleeve shirts; trousers shorts; suits; suit coats; leather belts [clothing]; leather clothing; trousers of leather; leather jackets; long sleeve pullovers; long sleeved vests; slacks; topcoats; waistcoats; leggings [trousers]; linen clothing; chemises; blousons; corduroy trousers; hooded pullovers; blousons; miniskirts; suede jackets; lounging robes; nighties; nightwear; nighties; pop socks; over-trousers; coveralls; coveralls; bathing suit cover-ups; parkas; polo shirts; pirate pants; polar fleece jackets; polo sweaters; turtleneck sweaters; polo shirts; roll necks [clothing]; ponchos; ponchos; sweaters; pyjamas; pyjamas [from tricot only]; waterproof trousers; waterproof capes; raincoats; rainproof clothing; rain ponchos; gabardines [clothing]; rainwear; coats; coats of denim; bushjackets; neck scarves; foulards [clothing articles]; scarves; shorts; short sets [clothing]; silk clothing; silk scarves; swimming costumes; shawls; shawls [from tricot only]; shawls and headscarves; shell jackets; visors [headwear]; pea coats; ski trousers; snow suits; ski jackets; clothing for skiing; leather clothing; shirt-jacs; cloaks; slipovers [clothing]; slipovers; socks; socks and stockings; sunsuits; sundresses; halter tops; loungewear; camisoles; sports jackets; sports caps and hats; sportswear; sports singlets; sports clothing [other than golf gloves]; sports socks; singlets; sports shirts with short sleeves; knit jackets; knitwear [clothing]; polo knit tops; knitted gloves; beach wraps; beach robes; stretch pants; tights; stockings; sweat shirts; hooded sweatshirts; tee-shirts; tee-shirts; salopettes; quilted jackets [clothing]; teddies [undergarments]; teddies [undergarments]; tennis skirts; tennis dresses; tennis shirts; snow pants; heavy jackets; tops [clothing]; hooded tops; clothing for gymnastics; trench coats; trench coats; maillots; maillots [hosiery]; tights; knitwear [clothing]; knitwear [clothing]; crew neck sweaters; knickers; printed t-shirts; tube tops; mittens; tunics; belts [clothing]; fabric belts [clothing]; woollen socks; petticoats; underwear; underwear; long johns; body warmers; v-neck sweaters; weather resistant outer clothing; reversible jackets; mittens; casualwear; waistcoats; thermally insulated clothing; leather waistcoats; cagoules; waterproof trousers; rainproof jackets; weatherproof clothing; waterproof outerclothing; woven clothing; woven shirts; pleated skirts for formal kimonos (hakama); wind pants; wind suits; windshirts; balaclavas; wind vests; windproof clothing; winter gloves; winter coats; neck scarfs [mufflers]; stuff jackets [clothing]; woolen clothing; yoga pants; yoga shirts; outerclothing; womens’ outerclothing; outerclothing for girls; bath sandals; aqua shoes; bath slippers; footwear for women; ladies’ boots; espadrilles; dress shoes; canvas shoes; footwear for women; leisure shoes; wooden shoes; casual footwear; rain boots; gym boots; mules; rain boots; rainshoes; sandals; sandals and beach shoes; sandal-clogs; deck shoes; waders; boots; sneakers; booties; beach shoes; flip-flops; slippers; wooden shoes.

The contested goods are the following:

Class 14: Jewellery, watches, clocks.

Class 18: Bags, handbags, luggage, attaché cases, business card holders of leather, card wallets of leather, key cases of leather, jewellery rolls of leather, leather pouches, wallets, purses, umbrellas.

Class 25: Clothing, headwear, footwear.

Contested goods in Class 14

The contested jewellery includes, as a broader category, the opponent’s rings [jewellery, jewelry (Am)]. 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 watches, clocks include, as broader categories, the opponent’s women’s watches and alarm clocks, respectively. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 18

Card wallets of leather; wallets; umbrellas are identically contained in both lists of goods (including synonyms).

The contested bags, handbags include, as broader categories, the opponent’s bags made of leather and handbags made of leather, respectively. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested luggage includes, as a broader category, the opponent’s bags made of leather. 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 key cases of leather are included in the broad category of the opponent’s keycases and the contested business card holders of leather are included in the broad category of the opponent’s business card cases. Therefore, they are identical.

The contested attaché cases overlap with the opponent’s briefcases [leather goods] and the contested leather pouches overlap with the opponent’s bags [envelopes, pouches] of leather, for packaging. Therefore, they are identical.

The contested purses include, as a broader category, the opponent’s leather purses. 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 jewellery rolls of leather are included in the broad category of the opponent’s leather purses. Therefore, they are identical.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s outerclothing; the contested footwear includes, as a broader category, the opponent’s footwear for women; and the contested headwear includes, as a broader category, the opponent’s visors [headwear]. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, all of the contested goods are considered identical to the opponent’s goods.

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 are directed at the public at large. The degree of attention is considered average for the goods in Classes 18 and 25. However, as far as the goods in Class 14 are concerned, in its decision of 09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. Therefore, a relatively high degree of attention may be paid by the consumer in relation to the goods in Class 14.

3. The signs

HOPE STOCKHOLM	Hope by Nayna McIntosh
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.

Both marks are word marks. In the case of word marks, the words as such are protected, not their written form. Therefore, it is irrelevant whether the marks are in upper or lower case characters.

The coinciding element ‘HOPE’ is meaningful in certain territories, for example in those countries where English is spoken and understood. Moreover, a basic understanding of English on the part of the general public, in any event, in the Scandinavian countries, the Netherlands and Finland must be regarded as a well-known fact (26/11/2008, T‑435/07, New Look, EU:T:2008:534, § 23). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the relevant public in Ireland, Malta and the United Kingdom, as well as the relevant public in Denmark, Finland, Sweden and the Netherlands.

The word ‘HOPE’, present in both marks, will be understood by the relevant public as referring to ‘a feeling of desire for something and confidence in the possibility of its fulfilment’ (information extracted from Collins Dictionary on 25/10/2018 at https://www.collinsdictionary.com). In relation to the relevant goods, this word has an average degree of distinctiveness, since it does not describe or allude to any characteristics of the goods in question.

The word ‘STOCKHOLM’ of the earlier mark will be perceived by the relevant public as referring to the capital of Sweden and so as descriptive of the origin of the goods.

As far as the verbal element ‘Nayna McIntosh’ is concerned, the relevant public will recognise the element ‘Mc’, signifying ‘son of’, as a prefix to many Scottish or Irish family names and will therefore regard this verbal element as a first name and surname of Celtic origin. Together with the preceding word ‘by’, it will be understood merely as referring to the designer or manufacturer of the goods in question. Since the relevant consumers are used to seeing such indications on items of clothing or other fashion items, they will not attribute much trade mark significance to the element ‘by Nayna McIntosh’ of the contested sign. Therefore, the word ‘HOPE’ is the most distinctive element in both signs.

Visually and aurally, the signs coincide in the letters (and the sound of the letters) ‘HOPE’, which constitute the first (and the most distinctive) element in both signs. The signs differ in their remaining elements, namely ‘STOCKHOLM’ of the earlier mark and ‘by Nayna McIntosh’ of the contested sign.

Although the abovementioned differing elements create some visual and aural differences between the signs, considering the weight attributed to these elements (as explained above), the fact that the relevant consumers generally tend to focus on the first element of a sign when being confronted with a trade mark (which, in the present case, is also the most distinctive element) and the fact that this element is identical in both signs, the marks are considered visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The concept of the element ‘HOPE’ will be perceived identically in both signs. Although the elements ‘STOCKHOLM’ of the earlier mark and ‘by Nayna McIntosh’ of the contested sign create some conceptual differences between the marks, bearing in mind that they will be perceived as providing additional information about the goods’ origin or designer, they will be attributed much less importance by the relevant consumers than the identical and most distinctive element ‘HOPE’. Therefore, the signs are considered 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 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 a descriptive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

As concluded above, the contested goods are identical to the opponent’s goods and they target the public at large with an average or relatively high degree of attention, depending on the goods in question. The distinctiveness of the earlier mark is normal.

As detailed in section c), the signs are visually and aurally similar to an average degree and conceptually highly similar, since they coincide in the word ‘HOPE’, which will be attributed the most trade mark significance in both marks. The differences between the signs arise from the descriptive or less significant elements ‘STOCKHOLM’ of the earlier mark and ‘by Nayna McIntosh’ of the contested sign. Although these additional elements create some differences between the signs, bearing in mind that the word ‘STOCKHOLM’ is descriptive and the element ‘by Nayna McIntosh’ will be perceived by the relevant public as a designer’s identifier, indicating the person ‘behind’ the trade mark, consumers are more likely to focus on the element that would be seen as identifying the specific product line, namely ‘HOPE’.

Taking into account the above and the fact that the signs coincide in their first and most significant elements, ‘HOPE’, it is highly conceivable that the relevant consumers will make a connection between the conflicting signs and assume that the goods covered are from the same undertaking or economically linked undertakings. Therefore, it cannot be safely excluded that the relevant consumer will confuse the marks or alternatively perceive the contested sign as a sub-brand or variation of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), especially as the goods are identical.

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 the public in Scandinavian countries. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 848 336. 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 that the contested trade mark must be rejected for all the contested goods.

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 mark due to its extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier European Union trade mark registration No 15 848 336 leads 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Cristina CRESPO MOLTÓ

Rasa BARAKAUSKIENE

Cynthia DEN DEKKER

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.