OPPOSITION No B 3 034 595

Liwe Española, S.A., C/Mayor, 140, 30006 Puente Tocinos (Murcia), Spain (opponent), represented by Demarks&Law, Cirilo Amorós 57, 46004 Valencia, Spain (professional representative)

a g a i n s t

Nina Joshi, 27 Old Gloucester Street, WC1N 3AX London, United Kingdom (applicant), represented by IPRIQ LTD, Eteläesplanadi 2, 00130 Helsinki, Finland (professional representative).

On 18/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 034 595 is upheld for all the contested goods.

2. European Union trade mark application No 16 896 201 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 16 896 201 for the word mark ‘Red Inside’. The opposition is based on European Union trade mark registration No 9 489 469 for the word mark ‘INSIDE.’ and European Union trade mark registration No 14 057 137 for the word mark ‘INSIDE’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant states that the opponent does not prove use and actual presence in the majority of the EU market as the evidence only relates to Spain.

The applicant’s statement, if it is to be considered as a request for proof of use, has not been submitted by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR. The opponent was not under any obligation to submit proof that its earlier trade marks had been put to genuine use.

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.

a) The goods

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

EUTM No 9 489 469

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; paste jewellery; jewellery, costume jewellery, precious stones; horological and chronomatic instruments; necklaces; earrings; bracelets; jewellery rings.

Class 25: Clothing, footwear, headgear; belts, handkerchiefs, bandanas (neckerchiefs), bathing suits, underwear; gloves (clothing); ear muffs (clothing); furs (clothing).

EUTM No 14 057 137

Class 18: Leather and imitation leather; goods of leather, namely handbags, casual bags, portfolio bags, shoulder belts, backpacks, carrying cases, purses, valises; animal skins, hides, hands bags, casual bags, backpacks, trunks and travelling bags, carry-on bags, card wallets [leatherware], pocket wallets, satchels and other holders; umbrellas, parasols, canes and walking sticks; whips and saddlery; beach bags; bags for campers; sport bags; shopping bags; handbags; cases, of leather or leatherboard; pouch baby carriers; keycases; slings for carrying infants; valises; suitcases; attache cases; backpacks; moleskin [imitation of leather]; purses; briefbags; garment bags for travel; clothing for pets; leather shoulder belts; walking stick seats; traveling trunks; net bags for shopping; wheeled shopping bags; holdalls.

The contested goods are the following:

Class 14: Precious metals, their alloys, goods made therefrom or goods coated therewith, namely jewellery, clocks, straps for wrist watches, watch strap buckles, medals, badges of office and rank, tie pins; jewels; watches; bracelets; jewellery charms; cuff links; earrings; key rings; chains; scarf pins; ornamental pins; pendants; shoe ornaments made of or coated with precious metals or alloys of such metals; trophies; alarm clocks; buttons for jewellery, clocks, wristwatches, bracelets, clasps, ornamental pendants, cufflinks, earrings and keyrings; straps for wristwatches, clocks, jewellery, medals, badges of office and rank, watch strap buckles, tie clips, tie pins.

Class 18: Leather and imitation leathers, and goods manufactured therefrom, namely travelling bags, luggage bags, bags; travelling bags; luggage; satchels; backpacks; beach bags; wallets; purses; kit bags; umbrellas; bags, handbags, purses, none of the aforesaid containing a red lining; attaché cases; attaché cases; trunks; suitcases; holdalls, duffle bags, sports bags; garment carriers; umbrellas and parasols; none of the aforesaid containing a red lining.

Class 25: Clothing; footwear; hats; tee-shirts; shirts; waistcoats; beachwear; casualwear; briefs; leather jackets; sweaters; casual shirts; gym suits; kerchiefs [clothing]; jackets [clothing]; trousers; shorts; neckties; shawls; loose jackets; suits; gloves [clothing]; clothing for gymnastics; polo shirts; aprons [clothing]; socks; sun visors; caps [headwear]; women’s and girls’ clothing and sportswear, namely t-shirts, shirts, knitted shirts, sleeveless undershirts, sweatshirts, tracksuit trousers, college jackets, yoga trousers, yoga tops, leisure trousers for the home, loungewear, socks, shoes, footwear, sports bras, gym shorts; shaping garments, namely stocking dresses, leggings, supporting underpants, corsets, women’s vests, thigh shapers, waist shaping garments; underwear and accessories, namely women’s underwear, camisoles, nightdresses, gowns, bras; denim jeans; swimming costumes; women’s clothing, namely shirts, dresses, skirts, blouses, camisoles, underpants, trousers; belts [clothing].

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

The term ‘namely’, used in the applicant’s and the opponent’s lists 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.

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

Contested goods in Class 14

The contested precious metals, their alloys; bracelets; earrings are identically contained in the opponent’s list of goods.

The contested goods made therefrom or goods coated therewith (from/with precious metals, their alloys), namely jewellery, tie pins; jewellery charms; cuff links; chains; scarf pins; ornamental pins; pendants are included in the broad category of, or overlap with, the opponent’s jewellery. Therefore, they are identical.

The contested goods made therefrom or goods coated therewith (from/with precious metals, their alloys), namely clocks; watches; alarm clocks are included in the broad category of the opponent’s horological and chronomatic instruments. Therefore, they are identical.

The contested jewels can refer both to precious or semiprecious stones, gems, and to pieces of jewellery. Consequently, these contested goods are either considered synonyms of the opponent’s jewellery or are the same as or include the opponent’s precious stones and are, in any case, identical to the opponent’s goods.

The contested goods made therefrom or goods coated therewith (from/with precious metals, their alloys), namely straps for wrist watches, watch strap buckles; straps for wristwatches, clocks, watch strap buckles and the opponent’s horological and chronomatic instruments (which include wrist watches) are similar as they usually coincide in their producers, relevant public and distribution channels. Furthermore, they are complementary.

The contested goods made therefrom or goods coated therewith (from/with precious metals, their alloys), namely medals, badges of office and rank are at least similar to the opponent’s horological and chronomatic instruments (which include e.g. wrist and pocket watches), as these articles may be regarded as items of value or interest to a collector and may be found in the same outlets (e.g. jewellery or antique shops), they have the same producers and target the same relevant public.

The contested shoe ornaments made of or coated with precious metals or alloys of such metals and the opponent’s jewellery are decorative items, and so they can have the same purpose. These goods may coincide in their producers and distribution channels. Therefore, they are similar.

The contested key rings and the opponent’s jewellery are similar to a low degree since they usually coincide in their producers, relevant public and distribution channels.

The contested straps for jewellery, medals, badges of office and rank, tie clips, tie pins and the opponent’s jewellery are also similar to a low degree, as they also may coincide in their producers, relevant public and distribution channels.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), ‘goods in precious metals or coated therewith, not included in other classes’ does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, and not what the goods are. It covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different sales channels and therefore relate to different market sectors.

When comparing the remaining contested trophies; buttons for jewellery, clocks, wristwatches, bracelets, clasps, ornamental pendants, cufflinks, earrings and keyrings with the opponent’s vague term goods in precious metals or coated therewith, not included in other classes without further examples or an express limitation by the opponent clarifying the term, it cannot be assumed that they have the same purpose, that their methods of use coincide or that they share the same distribution channels, or whether they are in competition or complementary. However, their nature can be considered the same as they are, or can be, goods in precious metals or coated therewith and it is reasonable to assume that the goods may be produced by the same companies, given that the required know-how and machinery may also be the same. Therefore, these goods can only be found similar to a low degree.

Contested goods in Class 18

The contested leather and imitation leathers; satchels; backpacks; beach bags; purses; umbrellas; handbags, purses, none of the aforesaid containing a red lining; attaché cases; attaché cases; trunks; suitcases; holdalls, sports bags; umbrellas and parasols; none of the aforesaid containing a red lining are included in the respective broad categories of the opponent’s leather and imitation leather; satchels; backpacks; beach bags; purses; umbrellas; handbags; purses; attache cases; trunks; suitcases; holdalls; sport bags; parasols. Therefore, these contested goods are identical to the opponent’s goods.

The contested goods manufactured therefrom (from leather and imitation leathers), namely travelling bags, luggage bags, bags; travelling bags; luggage; none of the aforesaid containing a red lining are included in the broad category of, or overlap with, the opponent’s travelling bags. Therefore, they are identical.

The contested wallets; none of the aforesaid containing a red lining overlap with the opponent’s pocket wallets. The contested kit bags; duffle bags; none of the aforesaid containing a red lining overlap with the opponent’s sport bags. The contested bags, none of the aforesaid containing a red lining overlap with the opponent’s handbags. The contested garment carriers; none of the aforesaid containing a red lining overlap with the opponent’s garment bags for travel. Therefore, the goods are identical.

Contested goods in Class 25

The contested clothing; footwear are identically contained in the opponent’s list of goods.

The contested hats; sun visors; caps [headwear] are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested women’s and girls’ sportswear, namely shoes, footwear are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested tee-shirts; shirts; waistcoats; beachwear; casualwear; briefs; leather jackets; sweaters; casual shirts; gym suits; kerchiefs [clothing]; jackets [clothing]; trousers; shorts; neckties; shawls; loose jackets; suits; gloves [clothing]; clothing for gymnastics; polo shirts; aprons [clothing]; socks; women’s and girls’ clothing and sportswear, namely t-shirts, shirts, knitted shirts, sleeveless undershirts, sweatshirts, tracksuit trousers, college jackets, yoga trousers, yoga tops, leisure trousers for the home, loungewear, socks, sports bras, gym shorts; shaping garments, namely stocking dresses, leggings, supporting underpants, corsets, women’s vests, thigh shapers, waist shaping garments; underwear and accessories, namely women’s underwear, camisoles, nightdresses, gowns, bras; denim jeans; swimming costumes; women’s clothing, namely shirts, dresses, skirts, blouses, camisoles, underpants, trousers; belts [clothing] are included in the broad category of, or overlap with, the opponent’s clothing. Therefore, they are identical.

b) 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 partly at the public at large and partly at a specialised public with specific professional knowledge or expertise (such as manufacturers of jewellery and other goods of precious metals or manufacturers of leather goods).

The degree of attention will vary from average (e.g. in relation to handbags and purses in Class 18 or clothing in Class 25) to high (e.g. in relation to precious metals and their alloys or jewels in Class 14), depending on the specialised nature of the goods, the frequency of purchase and their price.

Indeed, some of the goods in Class 14 will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed in relation to those goods (09/12/2010, R 900/2010‑1, Leo Marco (FIG. MARK) / LEO, § 22).

c) The signs

1) INSIDE. European Union trade mark No 9 489 469 2) INSIDE European Union trade mark No 14 057 137	Red Inside
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 marks under comparison are word marks. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower- or upper-case letters, or in a combination thereof.

Earlier European Union trade mark No 9 489 469 (earlier mark 1) consists of the verbal element ‘INSIDE’ followed by a dot which has less visual impact than the word.

The word ‘INSIDE’, present in all the marks, will be understood by the English-speaking part of the relevant public as ‘[t]he inner side or surface; that side of anything which is within, or nearer to the centre, or farther from the outer edge or surface’ (information extracted from Oxford English Dictionary online on 04/04/2019 at http://www.oed.com). The rest of the public in the relevant territory will not attribute any meaning to the coinciding element of the marks, ‘INSIDE’. In any case, this word has no connection to any of the characteristics of the relevant goods and is, therefore, of average distinctiveness, regardless of the part of the public taken into account.

The Opposition Division does not agree with the applicant’s statements (which have not been supported by any evidence or more specific arguments) that the word ‘INSIDE’ is a common English word known to the majority of the EU public. Neither has the applicant demonstrated that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘INSIDE’. The applicant’s arguments that consumers can safely distinguish between different brands containing, for example, the word ‘cola’ in relation to beverages are not relevant in the present case, since that example refers to the use of a generic and non-distinctive term used to designate a drink flavoured with cola nuts, whereas in the present case the common element of the marks is fully distinctive, as already explained. Under these circumstances, the applicant’s claims must be set aside.

By contrast, the first word of the contested sign, ‘RED’, will be understood by the English-speaking part of the public as one of the primary colours and is part of the basic English vocabulary that will be understood by a relevant part of the public in other territories of the EU. This word may be perceived as indicative of the colour of most of the relevant goods and, therefore, is not particularly distinctive for the part of the public that understands its meaning.

Another part of the public, such as the Spanish-speaking part of the public, will primarily associate the element ‘RED’ with a ‘net’ due to its meaning in Spanish, whereas it cannot be excluded that another part of the public in the EU not familiar with the English word will perceive this word as meaningless. In both cases, the word ‘RED’ is of average distinctiveness for those consumers who will not associate it with a colour.

The applicant argues that the words ‘RED’ and ‘INSIDE’ in the contested sign form a meaningful expression as a whole. It cannot be excluded that the words ‘RED’ and ‘INSIDE’ in the contested sign may be perceived as conceptually related by the English-speaking part of the public, which understands the meanings of both elements, indicating that the object (the product at issue) is of the colour red on the inside. It should be noted that in any event the meaning of the coinciding element ‘INSIDE’ of the marks remains the same in both signs.

The Opposition Division does not, however, share the applicant’s views that the contested trade mark would be understood by the relevant consumers as denoting that ‘we are all red inside’ and as promoting ‘co-existence, fairness, and equality’, since there is no additional context that would prompt consumers to make such an interpretation.

Conceptually, reference is made to the above assertions concerning the semantic content conveyed by the marks.

There is a conceptual link between the signs for the English-speaking part of the relevant public on account of the coinciding element ‘INSIDE’. The marks differ in the additional concept in the contested sign, conveyed by the word ‘RED’, which may, however, be perceived as a less distinctive element in relation to the relevant goods. Therefore, the marks are conceptually similar to at least an average degree for the English-speaking part of the relevant public on account of the distinctive verbal element ‘INSIDE’, which they have in common.

Other parts of the public (such as the Spanish-speaking public or consumers with a basic knowledge of English who will understand only the word ‘RED’) will perceive the meaning of the contested sign’s element ‘RED’, as explained above. However, the earlier marks have no meaning for those parts of the public. Since the earlier marks will not be associated with any meaning, the signs are not conceptually similar for those parts of the public.

Finally, for some consumers none 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 for that part of the relevant public.

Visually, the signs coincide in the word ‘INSIDE’, which constitutes earlier mark 2 in its entirety, is the only verbal element of earlier mark 1, and is included as an identifiable and independent element in the contested sign. They differ in the additional shorter verbal element at the beginning of the contested sign, ‘RED’, and in the dot placed at the end of earlier mark 1, the latter having less visual impact in the sign. Therefore, the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘INSIDE’, constituting the only verbal element of the earlier marks and the second word of the contested sign. The pronunciation differs in the sound of the first word of the contested sign, ‘RED’, which will be pronounced in one syllable and has no counterpart in the earlier marks. Therefore, the signs are aurally similar to at least an average degree.

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

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks 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.

e) Global assessment, other arguments and conclusion

Likelihood of confusion 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).

The goods are partly identical and partly similar to varying degrees. The earlier marks enjoy a normal degree of distinctiveness per se in relation to the relevant goods.

The signs are visually and aurally similar to an average degree, and, for part of the public, conceptually similar to an average degree on account of the distinctive verbal element ‘INSIDE’, the only word of the earlier marks and the second word of the contested sign. The marks differ in the additional first word of the contested sign, ‘RED’, and in the dot at the end of earlier mark 1.

The word ‘RED’ in the contested sign will not go unnoticed by consumers, because it is at the beginning of the mark. However, the element ‘INSIDE’ of that sign, which is identical to the earlier marks’ verbal element, plays an independent role in the contested sign.

According to Article 8(1)(b) EUTMR, upon opposition, an EUTM application will not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. Indeed, the relevant consumers may legitimately believe that the contested trade mark, ‘Red Inside’, is a new version or a brand variation of the earlier marks. Therefore, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, in relation to the identical or similar goods.

This finding is true even for the goods that are similar to only a low degree and/or that attract a high degree of attention on the part of the public, since the similarity between the signs, due to their distinctive coinciding element ‘INSIDE’, outweighs the low degree of similarity between some of the goods.

Therefore, the opposition is well founded under Article 8(1)(b) EUTMR on the basis of the opponent’s European Union trade mark registrations No 9 489 469 and No 14 057 137. 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 marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use and 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, they 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

Catherine MEDINA

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

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.