OPPOSITION No B 2 971 318

OpCapita Red Bidco S.à.r.l., 5, rue Guillaume Kroll, 1882, Luxembourg, Luxembourg (opponent), represented by Friese Goeden Patentanwälte Partgmbb, Widenmayerstr. 49, 80538, München, Germany (professional representative)

a g a i n s t

Naked GmbH, Egger-Lienz Strasse 10,6020, Innsbruck, Austria (applicant), represented by Hintermayr Burgstaller & Partner, Landstr. 12 / Arkade, 4020, Linz, Austria (professional representative).

On 18/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 971 318 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 936 817 for the word mark ‘NAKED’. The opposition is based on international trade mark registrations No 802 201 and No 1 157 550 designating the European Union for the word marks ‘NKD’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark international trade mark registrations No 802 201 was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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 and services

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

International trade mark registration No 802 201:

Class 18: Leather and imitation leather; animal skins, hides; trunks and suitcases; umbrellas, parasols, walking sticks; whips, saddlery.

Class 24: Fabrics and textiles (included in this class); bed and table covers.

Class 25: Clothing, footwear, headgear.

International trade mark registration No 1 157 550:

Class 35: Retail and wholesale services as well as online or catalog mail order services for the following goods: clothing, footwear, headgear, scarves, textiles and textile goods, bed covers, table covers, leather and imitations of leather, and goods made of these materials, animal skins and hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, paper, cardboard and goods made from these materials, printed matter, bookbinding material, photographs, stationary, adhesives for stationary or household purposes, artists' materials, paint brushes, typewrites and office requisites, instructional and teaching material, plastic materials for packaging, printers' type, printing blocks, bleaching preparations and other substances for laundry use, cleaning, polishing scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, candles and wicks for lighting purposes, hand tools and implements (hand operated), cutlery, forks and spoons, side arms, razors, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission and reproduction of sound and images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment, computers, computer software, fire-extinguishing apparatus, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, musical instruments, toy instruments, rubber, gutta-percha, gum, asbestos, mica and goods made from these materials, plastics in extruded form for use in manufacture, packing, stopping and insulating material, flexible pipes, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic, household or kitchen utensils and containers, combs and sponges, brushes and paint brushes, brush-making materials, articles for cleaning purposes, steel wool, unworked or semi-worked glass, glassware, porcelain and earthenware, ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags, padding and stuffing material, raw fibrous textile materials, yarns and threads, for textile use, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings, games, playthings, gymnastic and sporting articles, decorations for Christmas trees, tobacco, smokers' articles, matches.

The contested goods are the following:

Class 9: Snow goggles; Sunglasses; Cases for sunglasses; Lenses for sunglasses; Spectacles [optics]; Spectacle frames; Optical glasses; Polarizing spectacles; Sports eyewear; Sports eyewear; Parts for spectacles.

Class 25: Clothing; Bottoms [clothing]; Shorts; Belts [clothing]; Headbands [clothing]; Gloves [clothing]; Tee-shirts; Printed t-shirts; Headgear; Skull caps; Caps [headwear]; Sportswear; Ski boots; Snowboard shoes; Trunks; Tank tops; Snow suits.

Class 28: Bags specially adapted for sports equipment; Cases adapted for sporting articles; Covers (Shaped -) for sporting articles; Sporting articles not included in other classes; Bags especially designed for skis and surfboards.

Some of the contested goods are identical to goods and services on which the opposition is based, for example clothing in Class 25 is identically included in both lists of goods and services. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large, such as clothing, and also at a professional public, such as retail of computers.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

NKD	NAKED
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).

In its arguments, the opponent claims that the sequence of letters ‘NKD’ is used in the market as an abbreviation of the English term ‘naked’. In support of the assertion, the opponent has submitted a few hits resulting from a search on ‘nkd naked’. In that regard, the Opposition Division notes that based on those results, ‘NKD’ will indeed be perceived as the abbreviation for ‘NAKED’ because they are used together.

However, on seeing the acronym NKD on its own, the public will not relate it to the word ‘NAKED’ because this is not a customary abbreviation of the word. Moreover, the evidence filed does not demonstrate that consumers in the relevant territory have been exposed to widespread use of the expression ‘nkd’ as the English word ‘naked’. Consequently, the opponent’s argument in this respect is to be set aside.

The earlier marks consist of the sequence of letters ‘NKD’ that is meaningless for the relevant public and therefore distinctive to an average degree.

The contested sign is the word ‘NAKED’ that will be understood by the English-speaking part of the public as someone who is not wearing any clothes. For the rest of the public, it is meaningless. In any case, it is considered distinctive to an average degree for the relevant goods, namely eyewear in Class 9, clothing and headgear in Class 25 and bags and cases in Class 28.

Visually, the signs coincide in the letters ‘NKD’ and differ in the letter ‘A’ in second position and in the letter ‘E’ in the fourth position of the contested sign, with no counterpart in the earlier marks.

The earlier mark is considered short and, the shorter a sign, the more easily the public is able to perceive all its single elements. Therefore, the difference in length of the signs is immediately perceptible and the signs are considered similar to a low degree.

Aurally, considering that the earlier mark is a combination of mere consonants, it has to be pronounced by mentioning each letter separately, as an acronym, irrespective of the different pronunciation rules in different parts of the relevant territory, whereas the contested sing is pronounceable as a word owing the two vowels.

The earlier mark is composed by three syllables whilst the contested one is composed by two, so the marks have a different rhythm and intonation. However, it is true that there is a degree of similarity between the signs when they are pronounced, which is not limited to the consonants. The English-speaking public would, for example pronounce the earlier mark as /en-kei-di/ and the contested sign as /neɪ-kɪd/; the Spanish-speaking public as /ene-ka-de/ versus /na-ked/; the German-speaking public as /en-ka-de/ v /na-ked/.

Therefore, the degree of aural similarity is average for at least part of the public such as the English or the German-speaking public.

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

Conceptually, the non-English-speaking part of the public does not perceive any meaning in the word ‘naked’ and therefore 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.

For the English-speaking part of the public, although they will perceive the meaning of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

d) 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.

The opponent claimed that the earlier trade marks enjoy enhanced distinctiveness but did not file any evidence within the time limit for substantiating the opposition in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal

e) 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).

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.

In the present case the contested goods have been assumed to be identical to the opponent’s goods and services. The signs have been found visually similar to a low degree and aurally similar to an average degree at least for part of the public. Conceptually, for the part of the public that does not perceive any meaning in the contested sign, the conceptual aspect does not influence the assessment of the similarity of the signs. For the rest of the public, the signs are not conceptually similar.

Therefore, as the signs at issue are visually similar only to a low degree and since the contested mark has a meaning for part of the public which is not present in the earlier mark or the conceptual aspect does not influence the assessment of similarity, it must be assessed whether a risk of confusion can be found based on the greater degree of phonetic similarity that exists. It is true that the Court of Justice has held that it is possible that mere aural similarity between trade marks may create a likelihood of confusion (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 28). Nevertheless, the degree of aural similarity between the two marks is of less importance in the case of goods or services which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods or services (14/10/2003, T-292/01, BASS, EU:T:2003:264, § 54, 55).

The contested goods which have been assumed identical to the opponent’s goods and services are usually sold in shops where the goods are normally picked up directly by consumers after their visual selection and, if first orally discussed with a specialised shop assistant, will still be visually perceived prior to the purchasing moment.

Since the visual perception of the marks in question will generally take place prior to purchase in relation to the goods in conflict, even if the signs are aurally similar to an average degree, this is not sufficient to counteract their low degree of visual similarity.

Moreover, the earlier marks have three letters; consequently considered short marks and the fact that they differ in two letters with the contested sign is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Catherine MEDINA

Jorge ZARAGOZA GÓMEZ

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.