OPPOSITION No B 3 000 141

Giorgio Armani S.P.A., Via Borgonuovo, 11, 20121 Milano, Italy (opponent), represented by Grünecker Patent- und Rechtsanwälte Partg mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

AX-MEN GmbH, Fabrikstraße 2, 89290 Buch, Germany (applicant), represented by Sabine Schenk, Auf der Wies 18, 87727 Babenhausen, Germany (professional representative).

On 20/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 000 141 is partially upheld, namely for the following contested goods:

Class 25: Clothing, outwear, Underwear, Outdoor clothing, Hunting and forestry clothing, Rainwear; Tee-shirts, Sweaters, Sweat shirts and Socks, Coats, Parkas, Gloves [clothing], Combinations [clothing], Parkas, Footwear, Rainshoes; Goloshes, Headgear; peaked hats, Caps [headwear], Peaked caps; Workwear, namely work boots, work shoes and work gloves, included in class 25; Bathing drawers; Bath sandals; Clothing; Boxer shorts; Insoles; Mittens; Goloshes; Gaiters; Belts [clothing]; Half-boots; Scarves; Gloves [clothing]; Shirts; Trousers; Knee-high stockings; Suspenders; Girdles; Hats; Jackets [clothing]; Jumpers; Skull caps; Hoods [clothing]; Ready-to-wear clothing; Neckties; Short-sleeve shirts; Leather clothing; Leggings [trousers]; Underwear; Coats; Caps [headwear]; Outerclothing; Ear muffs [clothing]; Sweaters; Cyclists' clothing; Rainwear; Sandals; Lace boots; Shoes; Footwear soles; Footwear; Sweat-absorbent underwear; Sweat-absorbent socks; Sweat-absorbent stockings; Sweat-absorbent underwear; Briefs; Socks; Sock suspenders; Athletics shoes; Sports shoes; Singlets; Athletics vests; Boots; Ankle boots; Boot uppers; Headbands [clothing]; Sweaters; Knitwear [clothing]; Tee-shirts; Leotards; Topcoats; Uniforms; Underwear; Underwear; Underwear; Waistcoats; Hosiery.

2. European Union trade mark application No 17 080 623 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 080 623 for the figurative mark , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 15 742 653 of the figurative mark . The opponent invoked Article 8(1)(b) 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.

1. The goods

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

Class 25: Coats; jackets; trousers; skirts; tops; raincoats; overcoats; belts; braces for clothing; suits; stuff jackets; jumpers; jeans; dresses; cloaks; parkas; shirts; T-shirts; sweaters; underwear; baby-dolls being nightwear; bathrobes; bathing costumes; négligée; swim suits; dressing gowns; shawls; neckerchiefs; scarves; ties; neckties; sweat shirts; under shirts; polo shirts; body suits; shorts; combinations [clothing]; wedding dresses; stockings; socks; shoes; slippers; overshoes; galoshes; wooden clog; soles for footwear; footwear upper; boots; ski boots; snow boots; half boots; esparto shoes or sandals; sandals; bath sandals; gloves; mittens; hats and caps; visors (headwear).

The contested goods are the following:

Class 25: Clothing, outwear, Underwear, Outdoor clothing, Hunting and forestry clothing, Rainwear; Tee-shirts, Sweaters, Sweat shirts and Socks, Coats, Parkas, Gloves [clothing], Combinations [clothing], Parkas, Footwear, Rainshoes; Goloshes, Headgear; peaked hats, Caps [headwear], Peaked caps; Workwear, namely work boots, work shoes and work gloves, included in class 25; Bathing drawers; Bath sandals; Clothing; Boxer shorts; Insoles; Mittens; Goloshes; Gaiters; Belts [clothing]; Half-boots; Scarves; Gloves [clothing]; Shirts; Trousers; Knee-high stockings; Suspenders; Girdles; Hats; Jackets [clothing]; Jumpers; Skull caps; Hoods [clothing]; Linings (Ready-made -) [parts of clothing]; Ready-to-wear clothing; Neckties; Short-sleeve shirts; Leather clothing; Leggings [trousers]; Underwear; Coats; Caps [headwear]; Outerclothing; Ear muffs [clothing]; Sweaters; Cyclists' clothing; Rainwear; Sandals; Lace boots; Shoes; Footwear soles; Footwear; Sweat-absorbent underwear; Sweat-absorbent socks; Sweat-absorbent stockings; Sweat-absorbent underwear; Briefs; Socks; Sock suspenders; Athletics shoes; Sports shoes; Singlets; Athletics vests; Boots; Ankle boots; Boot uppers; Headbands [clothing]; Sweaters; Knitwear [clothing]; Tee-shirts; Leotards; Topcoats; Uniforms; Underwear; Underwear; Pockets for clothing; Underwear; Waistcoats; Hosiery.

The comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s references to the actual nature of the parties’ goods are irrelevant. Likewise, the particular circumstances in which the goods in question are marketed and provided cannot be taken into account in the context of opposition proceedings as those circumstances may vary over time and depending on the wishes of the proprietors of the signs at issue (15/03/2007, C 171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; ).

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 clothing, outwear, underwear, outdoor clothing, hunting and forestry clothing, rainwear; tee-shirts, sweaters, sweat shirts and socks, coats, parkas, gloves [clothing], combinations [clothing], parkas, footwear, rainshoes; goloshes, headgear; peaked hats, caps [headwear], peaked caps; workwear, namely work boots, work shoes and work gloves, included in class 25; bathing drawers; bath sandals; clothing; boxer shorts; insoles; mittens; goloshes; gaiters; belts [clothing]; half-boots; scarves; gloves [clothing]; shirts; trousers; knee-high stockings; suspenders; girdles; hats; jackets [clothing]; jumpers; skull caps; hoods [clothing]; ready-to-wear clothing; neckties; short-sleeve shirts; leather clothing; leggings [trousers]; underwear; coats; caps [headwear]; outerclothing; ear muffs [clothing]; sweaters; cyclists' clothing; rainwear; sandals; lace boots; shoes; footwear soles; footwear; sweat-absorbent underwear; sweat-absorbent socks; sweat-absorbent stockings; sweat-absorbent underwear; briefs; socks; sock suspenders; athletics shoes; sports shoes; singlets; athletics vests; boots; ankle boots; boot uppers; headbands [clothing]; sweaters; knitwear [clothing]; tee-shirts; leotards; topcoats; uniforms; underwear; underwear; underwear; waistcoats; hosiery are either identical or at least similar to the opponent’s goods. Identical goods are those that are identically contained in both lists (including synonyms), the contested goods that are broader categories of goods covering various items of the opponent’s goods (e.g. the contested clothing covers various items of clothing enumerated in the opponent’s list) and the contested goods that are included in the opponent’s broader categories of goods (e.g. the contested sports shoes are included in the opponent’s broader category shoes). Similar goods are those more specific ready-to-wear items of clothing, footwear or headgear under comparison that are not identical but, being fashion articles, they have some characteristics in common, namely they have the same purpose (covering and protecting parts of the human body), target the same public and often have the same producers and retail outlets.

However, the contested linings (ready-made -) [parts of clothing] and pockets for clothing are parts to be used in the manufacture of clothing. These goods are dissimilar to the opponent’s goods that are essentially articles of ready-to-wear clothing, footwear and its parts and headgear. The goods under comparison have different natures, they satisfy different needs and they are not in competition. Furthermore, they usually have different producers and distribution channels.

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 relevant public common for the goods found to be identical or at least similar is the public at large.

The degree of attention is considered to be average.

3. The signs

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).

According to the applicant, the word combination ‘AX-MEN’ stands for ‘lumberjack’ and, although it is not common, it is used with this meaning, e.g. as a title of the US-TV series ‘AX-MEN’ about lumberjacks. In support of its argumentation the applicant submitted some Google® search results with references to this TV series. However, this only shows that ‘Ax Men’ is the title of an American television series and not that it is a synonym of ‘lumberjack’, let alone that it is recognised as such by consumers in Europe.

The Opposition Division will make the comparison of the signs taking into account the perception of a majority of the relevant public that will perceive the combination of letters ‘A’ and ‘X’ as a simple combination of letters without any clear and unambiguous meaning. Since this combination of letters has no meaning related to the relevant goods, it is distinctive to a normal degree.

Furthermore, as far as the contested sign is concerned, the part of the public addressed is that which perceives, despite the stylisation, the letters ‘AX’.

The word ‘MEN’, present in the contested sign below the letters ‘AX’, is a basic English word (23/5/2017, R 2257/2016-5, EVELINE COSMETICS X-TREME MEN / XTREME III et al., § 32) likely to be understood throughout the relevant territory as indicating that the relevant goods in Class 25 are intended for male consumers. Therefore, it is non-distinctive and, although it is graphically represented, the letters are fairly standard and do not confer distinctiveness on this element.

Neither of the signs has any element that could be considered clearly more visually dominant (eye-catching) than other elements.

Visually, the signs coincide in the combination of letters ‘AX’, an element that has a normal degree of distinctiveness and will attract the consumers’ attention most. The signs differ in the graphical representation of the letters ‘AX’ and in that there is a vertical line between them in the earlier mark, while, in the contested sign, the word ‘MEN’ lies underneath them. However, the word ‘MEN’ of the contested sign is non-distinctive and has less impact despite being clearly visible. Furthermore, when a sign consists of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In addition, the graphical presentation of letters and the figurative element in the form of a vertical line of the earlier mark are rather of a decorative nature with limited impact.

Therefore, the signs are visually similar to 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 combination of letters ‛AX’, the only verbal element of the earlier mark and the distinctive element of the contested sign. The pronunciation differs in the sound of the word ‘MEN’ of the contested sign. However, consumers tend to abbreviate a mark comprising a number of words to make it easier to pronounce. Taking into account the non-distinctive character and position of the word ‘MEN’ of the contested sign, the relevant public may even not pronounce this element (30/11/2006, T 43/05, Brothers by Camper, EU:T:2006:370, § 75; 03/07/2013, T 206/12, LIBERTE American blend, EU:T:2013:342, § 43-44; 03/07/2013, T 243/12, Aloha 100% natural, EU:T:2013:344, § 34).

Therefore, the signs are aurally at least highly similar.

Conceptually, neither of the signs has a meaning as a whole. Although the additional word, ‘MEN’, of the contested sign will evoke a concept, it is not sufficient to establish any conceptual difference, as this element is non-distinctive and cannot indicate the commercial origin. 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 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.

5. Global assessment, other arguments and conclusion

The goods are partially identical or at least similar and partially dissimilar. The signs are visually similar to an average degree, aurally at least highly similar and the conceptual comparison is neutral. The consumers’ level of attention is average. The earlier mark is distinctive to a normal degree.

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 view of the above, there is a likelihood of confusion on the part of the public because the coinciding element is composed of the only letters of the earlier mark and plays an independent distinctive role in the contested sign.

In its observations, the applicant argues that it owns:

• German trade mark No 302 010 031 464, , filled on 01/07/2010 and registered on 05/01/2011;

• German trade mark No 3 020 100 314 621, , filled on 01/07/2010 and registered on 05/01/2011 and

• IR No 1 070 177, designating Austria and Switzerland, registered on 16/12/2010.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

In support of its argumentation the applicant submitted evidence. The evidence is in German. It transpires from the applicant’s observations that the evidence consists of copies of documents concerning the supply of protective clothing for forestry offices in Germany, invoices concerning Austria, Italy, Switzerland, Sweden, Norway, France, Netherlands and Germany, screenshots of the internet archive waybackmachine.org and pages with catalogues from 2011, 2013/14, 2014/15 and 2016. There are also some pictures of protective clothing and of men working in them.

In this respect it should be noted that the applicant refers to coexistence with German marks and IR designating Austria and Switzerland while the relevant territory in the present case is the territory of the European Union. The evidence concerning the use of the marks in other territories is not relevant. Furthermore, even if the evidence concerns some countries of the European Union, it does not show coexistence in the entire EU. Furthermore, it can be concluded from the applicant’s observations and pictures that the evidence concerns protective clothing which is classified in Class 9 of the Nice Classification while the marks at issue cover goods in Class 25. The applicant also presented Google® search results including the opponent’s and the applicant’s marks, depending on the wording used for search. However, it does not demonstrate to what extent and in which territory the consumers were confronted with the marks.

In view of this, the arguments and evidence of the applicant are not convincing that the conditions for coexistence are persuasive of the absence of a risk of confusion. Therefore, this argument of the applicant must be rejected as unfounded.

The applicant argues that its EUTM is very well known and filed various items of evidence to substantiate this claim.

The right to a 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.

The judgements referred to by the applicant are not relevant to the present case as they concern different signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion at least on the part of the public that reads the letters ‘AX’ in the contested sign and for which this combination of letters has no meaning. Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 15 742 653. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or at least similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

Since the opposition is partially 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 extensive use as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Michele M. BENEDETTI - ALOISI

Justyna GBYL

Keeva DOHERTY

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.