OPPOSITION No B 2 978 818

Société Nouvelle Chaussures Marco Société par Actions Simplifiée, 17 rue Maurice Delamare, 27340 Pont de L’Arche, France (opponent), represented by Cabinet Chaillot, 16-20, avenue de L’Agent Sarre, 92703 Colombes Cedex, France (professional representative)

a g a i n s t

Fashion Kloth, Corso Stati Uniti 1/48, 35127 Padova, Italy (applicant), represented by Lydia Schiavolin, Via Venezia 28, 35131 Padova, Italy (professional representative).

On 05/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 978 818 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 975 104 . The opposition is based on French trade mark registration No 1 498 650 ‘MARCO’ and on the French company name ‘SOCIETE NOUVELLE CHAUSSURES MARCO’. The opponent invoked Article 8(1)(b) and Article 8(4) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

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

Class 18:	Footwear of all kinds and of all materials and their constituent parts.
Class 24:	Footwear of all kinds and of all materials and their constituent parts.
Class 25:	Footwear of all kinds and of all materials and their constituent parts.
Class 26:	Footwear of all kinds and of all materials and their constituent parts.

The contested services are the following:

Class 35:

Retail services in relation to fashion accessories; online retail services relating to handbags; online retail services relating to luggage; retail store services in the field of clothing; retail services in relation to clothing accessories; online retail store services relating to clothing; wholesale services relating to fake furs.

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.

The contested retail services in relation to fashion accessories; online retail services relating to handbags; online retail services relating to luggage; retail store services in the field of clothing; retail services in relation to clothing accessories; online retail store services relating to clothing; wholesale services relating to fake furs are not similar to the opponent’s footwear of all kinds and of all materials and their constituent parts. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services, wholesale services, internet shopping, catalogue or mail order services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are only similar and not identical. Therefore, all the contested services are dissimilar to the opponent’s goods.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods and services are obviously not identical.

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

The opposition is also based on the French company name ‘Société Nouvelle Chaussures MARCO’, registered for design, manufacture and sale of shoes.

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

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

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

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

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

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

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

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

a) Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 11/07/2017. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in France prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for design, manufacture and sale of shoes.

On 05/03/2018, the opponent filed the following evidence (following the opponent’s naming of annexes):

- Annex B: extract from the French Company Register for the company ‘Société Nouvelle Chaussures MARCO’ and a translation of it in English.

- Annex C: extracts from the opponent’s website and Facebook page, and extracts from websites of other companies that sell shoes manufactured by the opponent.

Two main excerpts from the website www.chaussures-marco.com are shown:

i. Details of company. This screenshot is not dated.

ii. A screenshot of an online shop displaying some shoes manufactured by the company. This screenshot is not dated.

Several screenshots of the Facebook page of the company ‘MARCO’ are shown, containing the following posts or articles:

i. Information about the company and its location, contact details, etc. Not dated.

ii. Three posts, dated 14/05/2014, 13/04/2016 and 27/05/2017, sharing links and information about reports presenting the company on French TV.

iii. Several posts, dated 28/03/2014, 13/11/2014, 21/01/2016, 22/01/2016, 30/04/2016, 14/07/2016 and 21/10/2016, showing some products apparently manufactured by the company, namely shoes, boots and handbags.

iv. Two posts showing photos of a street advertisement indicating that the factory will be open to sell goods on 17-18/06/2016 and on 21-22/10/2016.

v. A post with an image advertising a factory store sale on 24-25/02/2017.

vi. Two posts showing photos of the company’s booth at trade fairs held in Paris, dated 29/03/2015 and 21/11/2015.

vii. One post, dated 14/03/2017, sharing a photo of an article in a French newspaper that seems to describe the company’s activity and some details about tourist visits to the shoe factory.

viii. One post, dated 10/03/2016, sharing a photo of an article in the French newspaper La Dépêche about the company’s manager.

Other undated screenshots are shown from the websites of the following companies that sell shoes manufactured by the company:

i. La Botte Chantilly, showing information about the company MARCO;

ii. La Botte Chantilly, showing information about its points of sale;

iii. Avril Chausseur, showing information about the company MARCO and some products from it;

iv. Avril Chausseur, showing information about its point of sale in Bayonne (France);

v. Dolce.fr, showing information about MARCO and some products originating from this company;

vi. Dolce.fr, showing information about its points of sale.

While the evidence listed above suggests that some use of the sign in question has been made in relation to some of the activities for which it is registered (at least the manufacture of shoes), it does not meet the minimum threshold of extent set out in Article 8(4) EUTMR.

When determining the significance of the use made of a trade sign under Article 8(4) EUTMR, one must consider the territory in which it is used and the length of time and the economic dimension of such use. The rationale of that provision is to restrict the number of conflicts between signs by preventing an earlier sign that is not sufficiently important or significant, from an EU perspective, from challenging either the registration or the validity of a European Union trade mark.

The required level of significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. Account must be taken, first, of the geographical dimension of the sign’s significance, that is to say, of the territory in which it is used to identify its proprietor’s economic activity, as is apparent from a textual interpretation of Article 8(4) EUTMR. Account must be taken, also, of the economic dimension of the sign’s significance, which is assessed in view of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet (24/03/2009, T‑318/06 to T‑321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T‑534/08, Granuflex, EU:T:2010:417, § 19).

It is important to stress that the requirement for use in the course of trade of more than mere local significance is a requirement of EU law and is measured in accordance with EU criteria. Under EU trade mark law, it is clear that if the earlier sign is not used at all, or if the use is not of more than mere local significance, the earlier right invoked cannot be taken into account in accordance with the wording of Article 8(4) EUTMR. The fact that a lower and/or local level of use of the sign would suffice to invoke it against a subsequent trade mark under national law cannot be a reason for ignoring the specific user requirement in Article 8(4) EUTMR. Regardless of what is established under national law, use of the earlier sign must exist, and the use must be of more than mere local significance, in EU terms, according to the wording of Article 8(4) EUTMR. Of course, the rights of owners of earlier rights on a merely local scale are safeguarded under other provisions of the EUTMR, such as Articles 137 and 138 EUTMR.

The evidence submitted is not particularly exhaustive and most of it originates from the opponent’s Facebook page and its own website. The nature of the evidence is limited to screenshots showing some products manufactured by the company and a few occasional sale events that were advertised and took place in the company’s factory. The remaining evidence originates from third-party websites, which merely show a brief description of the opponent’s company and demonstrate that some of the goods manufactured by the opponent are sold online and/or in the physical stores of these third parties (with some details of such locations).

Therefore, the evidence does not provide any clear, objective and substantial proof that permits the Opposition Division to draw any clear conclusions on the use of the earlier sign in the relevant territory to an extent that could be considered of more than local significance. In particular, by no means can the commercial volume or economic dimension of use be assessed, as no invoices, financial statements, affidavits or declarations of the company representatives showing the annual accounts, volume or turnover have been submitted. In the same vein, no proof of the public recognition of the sign in the relevant sector is available either.

Taking into account all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier French company name ‘Société Nouvelle Chaussures MARCO’ was used in the course of trade of more than local significance in France and in connection with the business activities on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

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

Ana MUÑIZ RODRIGUEZ

Fabián GARCIA QUINTO

Loreto URRACA LUQUE

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.