OPPOSITION No B 3 007 377

Next Retail Limited, Desford Road, Enderby, Leicester LE19 4AT, United Kingdom (opponent), represented by Marks & Clerk LLP, 90 Long Acre, London WC2E 9RA, United Kingdom (professional representative)

a g a i n s t

HNE-Trading - Ulrich Rühle, Hofheimer Straße 47, 61350 Bad Homburg, Germany (applicant).

On 21/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 007 377 is upheld for all the contested goods.

2. European Union trade mark application No 17 192 006 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 17 192 006 for the word mark ‘nex|trip’, namely against all the goods in Class 18. The opposition is based on, inter alia, European trade mark registration No 17 607 474 for the figurative mark , which is a result of the division of European Union trade mark No 15 568 876 on which the opposition was initially based. The opponent invoked Article 8(1)(b) and Article 8(5) 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.

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 aforementioned European trade mark registration. At this point, the Opposition Division deems it necessary to clarify that the European trade mark registration No 17 607 474 is not a subject to proof of use because it was registered on 04/01/2018 (filed on 22/06/2016) whereas the date of filing of the contested trade mark is 10/09/2017. Therefore and without any further assessment of the applicant’s request for proof of use, it considered inadmissible.

a) The goods

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

Class 18: Leather and imitations of leather; leather, un-worked or semi-worked; processed or unprocessed leather and hides, artificial leather, cowhide, lining leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; shooting sticks; whips, harness and saddlery; bags; handbags; shoulder bags; cases; suitcases; briefcases; rucksacks; belts; bags; purses; travelling cases; backpacks; duffel bags; bags for campers; shopping bags; carrier bags; furniture covering of leather; leather straps (not for clothing); pocket wallets; toilet bags; accessories for clothing and fashion, namely, purses, handbags, wallets, clutch bags, tote bags; key cases; pocket wallet holders (in the nature of wallets) for credit cards or visiting cards, toilet bags (not fitted), travelling bags; leather bags, bags of synthetic materials; wallets; attaché cases; music cases; satchels; diaper bags; beach bags; bumbags; sports bags; casual bags; beauty cases; carriers for suits, for shirts and for dresses; tie cases; notecases; credit card cases and holders; tool bags; messenger bags; document bags; business card cases; collars for animals; hat boxes of leather; luggage tags; sling bags for carrying infants; vanity cases; leather placemats.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; Umbrellas and parasols; Saddlery, whips and apparel for animals; Walking sticks; Sheets of imitation leather for use in manufacture; Worked or semi-worked hides and other leather; Harness fittings; Chamois leather, other than for cleaning purposes; Kid; Boxes of leather or leatherboard; Labels of leather; Casings, of leather, for springs; Furs sold in bulk; Leather luggage straps; Goldbeaters' skin; Imitation leather hat boxes; Cattle skins; Rawhide chews for dogs; Chin straps, of leather; Faux fur; Sheets of leather for use in manufacture; Boxes made of leather; Leather sold in bulk; Leather and imitations of leather; Leather for shoes; Leather for furniture; Reins for guiding children; Leather cloth; Cases of leather or leatherboard; Straps made of imitation leather; Leather, unworked or semi-worked; Butts [parts of hides]; Straps for skates; Shoulder belts; Shoulder belts [straps] of leather; Tefillin [phylacteries]; Semi-worked fur; Leather twist; Girths of leather; Imitation leather; Imitation leather sold in bulk; Studs of leather; Leatherboard; Leather straps; Leather laces; Valves of leather; Straps for soldiers' equipment; Toiletry bags sold empty; Moleskin [imitation of leather]; Trimmings of leather for furniture; Furniture coverings of leather; Fur; Leather for harnesses; Polyurethane leather; Curried skins; Industrial packaging containers of leather; Shoulder straps; Animal skins.

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.

Bags, wallets; umbrellas and parasols; saddlery, whips; walking sticks; toiletry bags sold empty; worked or semi-worked hides and other leather; furniture coverings of leather; leather, unworked or semi-worked; leather and imitations of leather; animal skins; leather straps; imitation leather are identically contained in both lists of goods (including synonyms).

The contested luggage and other carriers include, as broader categories the opponent’s trunks and travelling bags. 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 harness fittings overlap with the opponent’s harness. Likewise, the contested labels of leather overlap with the opponent’s luggage tags. Therefore, these goods, respectively, are identical.

The contested reins for guiding children and the opponent’s sling bags for carrying infants are similar since they coincide in producer, relevant public and distribution channels.

The contested imitation leather hat boxes; boxes made of leather are at least similar to the opponent’s hat boxes of leather. At the same time the contested boxes of leather or leatherboard; cases of leather or leatherboard are similar to the opponent’s travelling cases as all those goods have the same respective purpose. Furthermore, they usually coincide in producer, relevant public and distribution channels.

The contested casings, of leather, for springs are considered similar to the opponent’s tool bags as they usually coincide in producer, relevant public and distribution channels.

The contested straps for skates; shoulder belts; shoulder belts [straps] of leather; leather laces; straps for soldiers' equipment; shoulder straps; chin straps, of leather; leather luggage straps; straps made of imitation leather; studs of leather; leather twist; girths of leather are at least similar to the opponent’s leather straps (not for clothing) either because the opponent’s goods include as the broader category the contested goods or these goods coincide in producer, relevant public and distribution channels. Furthermore, the contested tefillin [phylacteries] and valves of leather are similar to the aforementioned opponent’s goods since they are all semi-finished or finished leather goods usually coinciding in producer and distribution channels.

The contested apparel for animals; rawhide chews for dogs are similar to the opponent’s collars for animals as they are all animal accessories, that target the same end users, that is owners of pets, can be bought in the same animal shops and may be produced by the same undertakings.

The contested trimmings of leather for furniture are considered similar to the opponent’s coverings for furniture as they usually coincide in producer, relevant public and distribution channels.

The remaining contested goods sheets of imitation leather for use in manufacture; chamois leather, other than for cleaning purposes; kid; furs sold in bulk; goldbeaters' skin; faux fur; sheets of leather for use in manufacture; leather sold in bulk; leather for shoes; leather for furniture; leather cloth; butts [parts of hides]; cattle skins; semi-worked fur; imitation leather sold in bulk; leatherboard; moleskin [imitation of leather]; fur; leather for harnesses; polyurethane leather; curried skins; industrial packaging containers of leather are at least similar to the opponent’s leather and imitations of leather either because they opponent’s goods include as the broader category the contested goods or these goods coincide in producer, relevant public and distribution channels.

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 various degrees) are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	nex|trip
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.

The earlier mark, consisting of a verbal element ‘NEXT’, is meaningful in certain territories, for example in those countries where English is understood and spoken. Furthermore, it can be reasonably assumed that the relevant public will perceive and read the contested mark as ‘next trip’. This is because the vertical line strongly resembles a letter ‘t’ as well as the fact although the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, 'the fact remains that, when perceiving a verbal sign, they will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58, 06/10/2004, T-356/02, Vitakraft, EU:T:2004,ECR II-3445, § 51). Due to the above findings, the similarities between the signs will be higher. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as consumers in the United Kingdom, Ireland and Malta.

The verbal element ‘NEXT’ will be understood as 1) as an adjective: (of a time) coming immediately after the time of writing or speaking; coming immediately after the present one in order, rank, or space; 2) as an adverb: on the first or soonest occasion after the present; immediately afterwards; (with superlative) following in the specified order; 3) as a noun: the next person or thing; 4) as a preposition: (archaic) next to or 4) as a determiner: (a next), West Indian, another (see e.g. https://en.oxforddictionaries.com/definition/next). Since none of those meanings have any immediate conceptual relation to the goods in question, the verbal element ‘NEXT’ is considered, and contrary to the applicant’s claims, distinctive.

The verbal element ‘trip’ has several meanings too but bearing in mind the nature of the goods at issue, it is very likely that relevant public will immediately associate this word with ‘a journey, a going from one place to another’. When used in connection to some of the contested goods it will describe their characteristics, namely that their purpose is to carry one’s things when on a trip respectively it will strongly allude to the fact that the relevant goods could be used when on a trip. Therefore, this element is of a very limited (if any) distinctive character for many of the contested goods, such as luggage, bags, wallets and other carriers; walking sticks. On the other hand this word will be distinctive in relation to goods where the said description/allusion would be too far-fetched, for example, for sheets of imitation leather for use in manufacture; worked or semi-worked hides and other leather.

Visually, the signs coincide in their first three letters ‘nex’ placed in the same position. They further coincide in the letter ‘t’, which in the contested mark is placed after the vertical line. The signs differ in the remaining characters of the contested sign and the slight stylisation of the earlier mark.

Bearing in mind the above findings regarding the perception of the element ‘next’ in the contested sign and the fact that the signs have identical beginnings (which is particularly relevant since consumers generally pay more attention to the beginnings of marks rather than the endings (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, §§ 64, 65), the Opposition Division considers the two signs are visually similar to an average degree or even higher than average degree, for the goods for which the distinctiveness of the element ‘trip’ is limited.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‛NEXT’, considering that the first three letters of the contested signs are ‘nex’ followed by a vertical line that bears resemblance to the letter ‘t’ and also by a word which starts with the letter ‘t’. In that regard it is pointed out that even the applicant in his submissions states that ‘perceived as a whole the contested trade mark may be understood as “next trip”’. The pronunciation differs in the sound of the element ‘trip’ of the contested sign, which has no counterpart in the earlier mark. Nevertheless, considering that when pronounced, the beginning of a mark also plays a more essential part in striking the attention of the consumer than the ending, the marks in question are aurally similar to an average degree or even higher than average degree, for the goods for which the distinctiveness of the element ‘trip’ is limited.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As regards to the contested sign as a whole, it may be perceived as referring to a ‘next trip/journey’. Nevertheless, despite the conceptual difference produced by the verbal element ‘trip’, the public will be still aware of the semantic content of the initial part as ‘NEXT’ when perceiving that sign as a whole, as the additional element ‘trip’ does not change its meaning. Moreover, as already stated above, the verbal element ‘trip’ is of a limited (if any) distinctive character for some of the relevant goods and will therefore have a limited impact in the assessment for those goods.

Therefore, the signs are conceptually 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 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.

e) Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16).

Account has to be also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54; (16/07/2014, T-324/13, Femivia, EU:T:2014:672, § 48 and case-law cited).

In the present case, the goods at issue have been found identical or similar (to various degrees) and are directed at the public at large and professionals, whose degree of attention will be from average to high. The distinctiveness of the earlier mark is considered normal.

The earlier trade mark and the contested sign are visually and aurally similar to at least an average degree due to their coincidence in their first three letters ‘NEX’. Moreover, as already established above the first element in the contested mark will be clearly perceived as the word ‘next’ which even the applicant confirms in his submissions. While the remaining characters in the contested sign will not be overlooked, because of the coincidences in the beginnings of the earlier mark and of the contested sign and because of the word ‘next’ is clearly perceptible in the contested sign, due to which the signs transmit a highly similar meaning, the differences between the signs at issue are not sufficient to counteract the visual, aural and conceptual similarity between the two signs, and as such do not allow the consumers, even in case of high level of attention, to distinguish between them safely. Moreover, the additional verbal elements of the contested sign ‘trip’ is either non-distinctive or of a limited distinctive character for a part of the contested goods, and as such will have a minimal impact in the comparison of the sign in relation to those.

In addition, the Opposition Division notes, that it is a common practice for manufacturers/service providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product/service lines, or to endow their trade mark with a new, modernized image.

Accordingly, it is very likely in this case that the relevant consumer may perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (see by analogy 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, the public may attribute the same (or an economically linked) commercial origin not only to the goods that are identical but also to those found similar.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that they are more than 50 trade marks including the element ‘NEXT’ in the EUIPO’s Register.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that even if the applicant would have provided the evidence about the registration of marks including the verbal element ‘NEXT’ such evidence still does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘NEXT’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European trade mark registration No 17 607 474. It follows that the contested trade mark must be rejected for all the contested goods.

As the aforementioned earlier right 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).

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is also no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Besides, 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, 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

Denitza STOYANOVA- VALCHANOVA

Renata COTTRELL

Tu Nhi VAN

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.