OPPOSITION No B 3 008 250

Mirto Corporación Empresarial, S.L., C/ Emilio Muñoz, 57, 28037, Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010, Madrid, Spain professional representative)

a g a i n s t

Shedinvest S.A., Zone Industrielle, 6468 Echternachn, Luxembourg (applicant).

On 23/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 008 250 is partially upheld, namely for the following contested goods:

Class 3: Soap; Perfumery; Ethereal oils; Cosmetics; Hair lotions.

2. European Union trade mark application No 17 217 514 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 all the goods of European Union trade mark application No 17 217 514 for the figurative trade mark . The opposition is based on four trade mark registrations in relation to which the opponent invoked the grounds of Article 8(1)(b) and (5) EUTMR, namely Spanish trade mark registration No 143 300 for the figurative trade mark , Spanish trade mark registration No 2 581 059 for the figurative trade mark , Spanish trade mark registration No 2 983 724 for the figurative trade mark and European Union trade mark No 1 653 351 for the word mark ‘MIRTO’. The opposition is also based on Spanish trade mark registration No 3 085 199 for the figurative trade mark in relation to which the opponent invoked only the grounds of Article 8(1)(b) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The Opposition Division will first examine the opposition in relation to earlier Spanish trade mark registration No 2 983 724 for which the opponent claimed repute in Spain.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Spain.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 15/09/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 25: Clothing, footwear, headgear.

The opposition is directed against the following goods:

Class 3: Soap; Perfumery; Ethereal oils; Cosmetics; Hair lotions; Dentifrices.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 07/05/2018 the opponent submitted evidence in support of the existence, validity and scope of protection of the earlier marks (Attachment A), as well as the following evidence in support of the claim for reputation:

Attachment B: Copies of decisions/judgments from the Spanish of Patents and Trade Marks Office (SPTO), from a Spanish Court, from the EUIPO and from WIPO’s Arbitration and Mediation Center all recognising the reputation of the ‘MIRTO’ trade mark in Spain.

Attachment C:

- Document 1: Extracts from Wikipedia, from the digital financial newspaper “elEconomista.es” (04/12/2016) and from the opponent’s website. They reveal that the company ‘MIRTO’ was founded in 1956 and that ‘MIRTO’ is its main brand. The opponent is described as one of the leading companies in the fashion sector for men, also marketing an extensive collection for women.

- Document 2 Statement from a member of the Board of Directors of ‘El Corte Inglés’, dated 26/05/2015, in Spanish and translated into English, which indicates that ‘MIRTO’-branded goods have been on sale uninterruptedly in their department stores since 1975 and that some 1.5 million garments have been sold over the five years preceding the date of the statement. The document also specifies that the ‘MIRTO’ goods are sold in all ‘El Corte Inglés’ stores and that the mark enjoys fame and prestige with consumers, who perceive it as a quality brand and that it is one of the most prestigious Spanish trade marks in the sphere of fashion for men’s and women’s shirts and other types of clothing.

- Document 3. Certificate issued by the Managing Director of the Spanish Association of Reputed Brands, dated January 2016, attesting to the continuous presence of the company ‘MIRTO’ in the association since its incorporation in 2004, due to the reputed status of its trade mark ‘MIRTO’. The document clarifies that whether or not a mark is considered to be renowned depends on objective criteria set out by WIPO in accordance with the Spanish trade mark law. A proof of payment of the association’s annual fee from 2013 to 2017 is also submitted as well as the extract from the association’s website, http://www.marcasrenombradas.com/, corresponding to the trade mark MIRTO which is entitled ‘the perfect shirt and which mentions ‘Always round the shirt, the product that has given him fame and recognition among users and distributors, MIRTO has known how to diversify its offer’. Extract from the publication “El atlas de la moda” (the Fashion Atlas), published in 2018 by the Association of Reputed Brands in collaboration with the SPTO, which measures the international impact of the leading Spanish fashion brands in the sector, including the ‘MIRTO’ brand. The document indicates that the brand is present in 20 countries, including Portugal, and the United Kingdom (in ‘corners’ and in multi-brand shops).

- Document 4. Figures reflecting sales of ‘MIRTO’ goods in Spain and in several countries of the EU from 2013 to 2017 (Greece, Finland, Ireland, France, United Kingdom, Italy). The figures of sales in Spain are, for each year, in tens of million Euro. They reach several tens of thousand Euro in France and United Kingdom.

‘

- Document 5. List of trademark registrations for ‘MIRTO’ or other marks including the element ‘MIRTO’, in different countries around the world.

- Document 6. Extracts from Press Books for the period 2011-2017. This includes countless publications in a lot of different magazines such as ‘Hola’, ‘Marca’, ‘Luomo’, ‘DT’, ‘Vanity Fair’, ‘Man’, ‘Best Fashion’, ‘Actualidad Económica’, ‘Magazine El Mundo’, ‘Esquire’, ‘Telva’, ‘Vogue’, ‘GQ’, ‘Mía’, ‘Forbes’ and many others, all in Spanish. The trade mark ‘MIRTO’ is mentioned in all of them in relation to a broad range of items of clothing such as shirts, jackets, T-shirts, belts, cloaks, suits, for men and for women.

Many articles feature Spanish personalities coming from different backgrounds such as actors, the members of the Spanish Royal family, football or basketball players, TV journalists, singers. Others refer to the opponent’s wardrobe collaboration with theatre plays or television programmes.

- Document 7: Photographs showing famous TV programme presenters who wear ‘MIRTO’ clothing.

- Document 8: Profile of the opponent on Instagram (which shows about 10,200 followers), on Twitter (with 1940 followers and 9091 ‘likes’) and on Facebook (6141 followers and 3208 ‘likes’).

- Document 9: Report issued by the auditors and consultants Audijuris, certifying the business turnover and advertising expenditure relating to the ‘MIRTO’ trademark. The sales figures shown are above EUR 14 million in 2013, 2014, 2015 and above EUR 20 million in 2016 and 2017. The advertising expenses vary between EUR 460 000 and EUR 640 000 in the same period.

- Document 10: Photographs of Spanish personalities wearing ‘MIRTO’ clothing, printed from the website https://esp.mirto.com/friends/ on 05/02/2018. Many photographs bear the date of 2016.

- Document 11: Article from www.fueradeserie.expansion.com dated 10/06/2014, reporting that the company ‘Mirto’ has been distinguished with the National Award for Small- and Medium-sized Enterprises in the Fashion Industry. Extract from the opponent’s website reporting on that prize. Press publications echoing the news in the newspaper EXPANSION.

- Document 12: Photographs of stands with the sign ‘MIRTO’, in which clothing is exhibited, which according to the opponent reflect its participation in trade fairs. They are not dated and the place is not indicated.

- Document 13: Extracts from the 2014, 2015, 2016 and 2017 ‘MIRTO’ catalogues.

It is clear from the evidence that the earlier trade mark has been subject to intensive use in Spain since at least 2011 and until at least the filing of the contested trade mark, as has been attested by the very high number of magazines in which MIRTO-branded items of clothing have been advertised as well as by the important sales figures and advertising expenses certified by an independent company and which the declaration by the Director of El Cortes Inglés also corroborates. These are strong indications that the trade mark enjoys recognition among the Spanish public.

Furthermore, the opponent has submitted copies of several decisions from the SPTO and from a Spanish court which all acknowledge the reputation of the earlier trade mark. Finally, the fact that the earlier mark has been qualifying for many years as a reputed trade mark according to the standards of the Spanish Association of Reputed trade marks also argues strongly in favour of reputation under Article 8(5) EUTMR.

On the basis of the above the Opposition Division concludes that the evidence proves that the earlier trade mark enjoys reputation in Spain at the relevant date.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to a broad number of items of clothing for men and women, whereas there is no reference to the remaining footwear and headgear.

Therefore, the Opposition Division concludes that the earlier trade mark enjoys reputation in the European Union, for clothing.

b) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier figurative trade mark contains the verbal element ‘MIRTO’ depicted in white, slightly stylised letters and placed in a rectangle with a white border. Those elements are set on a black rectangular background.

The word ‘MIRTO’ exists in Spanish. It refers to an evergreen shrub with fragrant flowers and black berries. However, it is a specialised term in the field of botany which the vast majority of the Spanish public is not likely to recognise, also bearing in mind that it is less frequently used than another existing Spanish word with the same meaning (‘arrayán’). In the decision of 04/07/2016, R 1871/2015-4 mirrio/MIRTO, § 25, which related to an opposition based on one of the opponent’s ‘MIRTO’ trade marks, the Boards of Appeal have established that, in the absence of any reference to a plant, for example a depiction of a plant, the vast majority of the Spanish public would not attribute a meaning to the word.

As the word ‘MIRTO’ does not indicate or suggest the goods at issue or any of their characteristics, it is distinctive to a normal degree.

The contested sign contains the verbal element ‘Miro’, depicted in white in slightly stylised letters, placed in a black circular background. The verbal elements ‘SPIRITED-ARTFUL-IMPRESSIVE’ are depicted in much smaller, grey letters below the circle.

The verbal element ‘MIRO’ will be perceived by the Spanish public as the verb ‘mirar’ (to watch) conjugated in the present tense, first person singular (‘I watch’) or, despite a small misspelling consisting in a missing accent on the last letter, as the family name of the Spanish painter Joan Miró. The use of title case propitiates that the word may be perceived as a name. Those meanings are not related to the goods at issue in Class 3 and the element ‘Miro’ is, therefore, distinctive to a normal degree.

The remaining verbal elements of the contested sign are English words which have no meaning in Spanish hence they are distinctive to a normal degree.

Owing to its size and its position, the element formed by the black circle and the word ‘Miro’ is the visually dominant element of the contested mark. However, the three words in the lower part of the mark remain clearly legible and sufficiently visible not to be considered as negligible elements of the sign.

In both signs, the figurative elements, which are just frames or backgrounds, will be perceived as essentially decorative elements which have reduced distinctive character.

Visually, the signs share the initial three letters ‘MIR’ and the final letter ‘O’ of their verbal elements whereas their differ in the additional letter ‘T’ of the earlier mark’s verbal element.

The figurative elements of both signs, despite their reduced distinctive character, and the additional verbal elements of the contested sign, despite their non-dominant character, are not negligible and are able to add further differences between the signs. Those differences are immediately perceptible. The difference in the shape of the frames/backgrounds is obvious.

In view of the above, the signs are visually similar to a low degree.

Aurally, the signs will be referred to as /mir-to/ and /mi-ro/. It has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words. Therefore, the additional elements of the contested sign are not likely to be pronounced.

Both signs are made up of two syllables and share their first three sounds and their last sounds. However, they do not coincide fully in either of these two syllables and the additional sound ‘T’ in the earlier mark is particularly audible as it is the first sound of the second syllable.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As only the contested sign conveys a meaning, the signs are not conceptually similar.

As the signs are similar, the examination proceeds with the examination of the requirement of the ‘link’.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As seen above, the earlier mark enjoys reputation for clothing. Clothing is intended for the same public as the contested goods in Class 3. Furthermore, the signs are visually similar to a low degree and aurally similar to an average degree.

The contested soap, perfumery, cosmetics, hair lotions, ethereal oils are related to personal image, attractiveness and beauty. These notions bear links with the field of fashion to which the opponent’s clothing belongs and it is not excluded that these goods may be marketed in the same shops.

On the basis of the above, and notwithstanding the conceptual difference, the Opposition Division is of the view that it cannot be excluded that, when encountering the contested mark in relation to the abovementioned contested goods, the relevant consumers may associate it with the earlier sign, that is to say, may establish a mental ‘link’ between those signs.

In contrast, consumers are not likely to make any connection with the earlier mark on seeing dentifrices which are marketed under the contested sign. There are no points of contact between clothing and dentifrices. In particular, these goods markedly differ in their natures. Therefore, despite the fact that their consumers are the same, those goods are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public

As regards dentifrices, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected for these contested goods.

As regards the remaining contested goods, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that the public will transfer the positive values of impeccable quality, design, prestige and exclusiveness conveyed by the earlier mark to the trade mark applied for, and that, accordingly, the applicant will unduly benefit from the opponent’s know-how, hard work, and financial investments.

It also mentions that the image of the earlier trade mark could be harmed by the commercial policy, aesthetic aspects or insufficient quality of the contested goods and that the use of the contested sign would dilute the distinctive character of the earlier mark, by paving the way for an increase in trade marks displaying similar features in the same fashion sector.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

In support of its claim, the opponent puts forward the close similarity between the signs, the reputation of the earlier mark and the fact that the target public is the same, which will inevitably lead to an association between the two marks in the consumer’s minds.

The opponent also refers to its financial investments in particular for promoting the trade mark.

Finally, and importantly, the opponent argues that, on the one hand, perfumes, cosmetics and other fashion accessories and, on the other hand, clothing, are fashion related goods which are marketed in the same points of sale and distributed through the same channels, which reinforces the likelihood that the positive image of the reputed earlier mark be transferred to the contested trade mark.

The contested perfumery and cosmetics, including hair lotions, may indeed be sold through the same wholesale and retail channels as the opponent’s clothing and they may be produced by the same undertakings such as successful clothes designers. Like clothing, these goods are closely related to the field of fashion in the sense that the colours and textures used in make-up and the types of hairstyles or fragrances are subject to changes in trends/fashion. The points of contact are less straightforward as regards the contested soap, ethereal oils but the field of fashion, to which clothing belongs, and the field of beauty/personal care, to which those contested goods belong, have the broad purpose of enhancing the attractiveness of persons, with the consequence that the image of luxury and prestige conveyed by the opponent’s trade mark reputed for clothing is easily transferrable to, and may stimulate the sales of, all of the abovementioned contested goods.

On the basis of the above, the Opposition Division concludes that the contested trade mark is indeed likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark when the latter is used in relation to perfumery, cosmetics, hair lotions, soap, and ethereal oils.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark in relation to contested soap; perfumery; cosmetics; hair lotions; ethereal oils. It follows that there is no need to examine whether detriment to the repute (or tarnishing) and detriment to the distinctive character (or dilution) of the earlier mark also apply.

Opposition based on Article 8(5) EUTMR and on the other earlier trade marks, in relation to the contested dentifrices

The opposition under Article 8(5) EUTMR is based on other earlier trade marks, namely two Spanish trade mark registrations and one European Union trade mark, as follows:

- Spanish trade mark registration No  143 300 for the figurative trade mark ,

- Spanish trade mark registration No 2 581 059 for the figurative trade mark ,

- European Union trade mark No 1 653 351 for the word mark ‘MIRTO’.

The opponent has claimed reputation of all the above earlier marks for clothing, footwear, headgear. The evidence in support of reputation, and the opponent’s arguments in support of the likelihood of an injury, is the same for all earlier trade marks.

The earlier EUTM, which is a word mark, may be visually slightly more similar to the contested sign than the earlier Spanish trade mark examined and part of the public in the EU may not attribute any meanings to either ‘MIRTO’ or ‘MIRO’. However, even if reputation were considered proven in the European Union, which could only be for clothing, the fact remains that dentifrices are too far apart from clothing for consumers to make a connection between the signs when they see the contested trade mark on dentifrices.

The absence of a link is supported by the fact that the opponent has failed to establish that the use of the contested mark in relation to dentifrices may take unfair advantage of, or tarnish, or dilute, the earlier mark’s repute and/or distinctive character. Indeed the opponent has not even submitted arguments which may apply to dentifrices since it refers only to goods that may relate to fashion, which is obviously not the case of dentifrices.

The opponent’s arguments in support of unfair advantage have already been explained above. They do not apply to dentifrices and there are no indications suggesting that the use of the contested trade mark for dentifrices may take unfair advantage of the distinctive character or the repute of the earlier trade mark.

The opponent’s argument in support the likelihood of detriment to the repute (or tarnishing) and detriment to the distinctive character (or dilution) of the earlier mark are not more convincing for any of the contested goods and in particular, for dentifrices.

As regards tarnishing, the opponent argues that the image of the earlier mark could be harmed if the applicant’s goods were of an inferior quality. It also puts forward that the tarnishing could result from inappropriate aesthetic features or inappropriate marketing of the contested goods.

However, the Opposition Division does not see how the quality or the appearance or the marketing strategy of dentifrices could in any way be detrimental to the image of the earlier mark in relation to clothing.

Additionally, there is no room in the present proceedings for an appraisal and comparison of the quality of goods and services currently marketed by each party under the signs in question. Firstly, such an exercise, apart from being highly subjective, would not be feasible where the goods and services are not identical or where the contested trade mark has not yet been put to use. Secondly, and more importantly, it would be erroneous to assess Article 8(5) EUTMR on the basis of the quality of the goods offered under the subsequent trade mark. Otherwise, the applicant could claim as a valid defence that its goods and services are of equal, or even superior, quality to the opponent’s, where it is clear from the wording of Article 8(5) EUTMR that it is mere use of the contested trade mark that must be detrimental to the repute of the earlier trade mark.

Therefore, in assessing whether use of the contested trade mark is likely to damage the reputation of the earlier trade mark, the Opposition Division can only consider the goods and services as indicated in the list for each trade mark. The harmful effects of use of the contested sign for the goods and services applied for must derive from the nature and usual characteristics of the relevant goods in general.

As regards dilution, the opponent claims that the existence of a similar mark, such as the contested mark, would dilute the distinctive character of the earlier mark and would pave the way for an increase in trade marks displaying similar features in the fashion sector.

This argument is based on conjectures which are not relevant to the specific case, in which only the dilution resulting from the use of contested sign itself is relevant. In any case, dentifrices do not belong to the fashion market.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

The opponent should have submitted evidence, or at least put forward a coherent line of argument. This is confirmed by Article 7(2)(f) EUTMDR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods:

Class 3: Soap; Perfumery; Ethereal oils; Cosmetics; Hair lotions.

The opposition is not successful insofar as the remaining goods, namely dentifrices, are concerned. The opposition must be rejected as not well founded under Article 8(5) EUTMR for these goods.

Therefore, the Opposition Division will now examine the opposition as based on the grounds of Article 8(1)(b) EUTMR in relation to the remaining contested dentifrices.

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:

Spanish trade mark No 3 085 199

Class 3: Bleaching preparations and other substances for laundry use; polishing, scouring, and abrasive preparations; soap, perfumery, essential oils, hair lotions; dentifrices.

Spanish trade mark No 143 300

Class 25: Knitwear of all kinds, in particular stockings; ready-made clothing; footwear.

Spanish trade marks No 2 581 059 and No 2 983 724/EUTM No 1 653 351

Class 25: Clothing, headgear, footwear.

The remaining contested goods are the following:

Class 3: Dentifrices.

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 dentifrices are listed identically in the specification of Spanish trade mark No 3 085 199.

However, the contested dentifrices are dissimilar to the goods covered by all of the remaining earlier marks. Clothing, footwear and headgear, on the one hand, and dentifrices, on the other hand, have different natures, purposes, manufacturers and distribution channels, and are neither complementary nor in competition. The mere fact that the public is the same is not enough to consider these goods to be similar, even to a low degree.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. As the contested goods are dissimilar to all goods covered by Spanish trade mark registration No 143 300, Spanish trade mark registration No 2 581 059 for the figurative trade mark, Spanish trade mark registration No 2 983 724 and European Union trade mark No 1 653 351, the opposition must be rejected as far as it is based on those marks because one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled.

The examination of the opposition under the grounds of Article 8(1)(b) EUTMR proceeds on the basis of Spanish trade mark No 3 085 199.

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 are directed at the public at large.

The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 signs have already been compared under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid under Article 8(1)(b) EUTMR. The fact that the relevant goods at this stage are dentifrices does not alter the conclusions previously reached regarding the distinctive character of the elements of the signs.

Therefore, the signs are visually similar to a low degree, aurally similar to an average degree and conceptually not 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 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.

The opponent did not claim that earlier Spanish trade mark No 3 085 199 is particularly distinctive by virtue of intensive use or reputation in relation to any of the goods for which it is registered in Class 3.

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 has no meaning for the relevant goods 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, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (20/09/1998, C‑39/97, ‘Canon’, paragraphs 17 and further).

The earlier mark is inherently distinctive to an average degree and the goods are identical and usually trigger a normal degree of attention on the part of the relevant public.

The goods at issue, namely dentifrices, are usually purchased in supermarkets or in establishments such as pharmacies, in which they are arranged on shelves so that consumers are guided in their purchase by the visual impact of the mark they are looking for).

For such goods, the low degree of visual similarity between the signs weighs decisively against a likelihood of confusion.

Furthermore, conceptual differences may be such as to counteract to a large extent the visual and aural similarities between trade marks. For this to happen it is enough that at least one of the marks has, from the point of view of the relevant public, a clear and specific meaning that the public is capable of grasping immediately, and that the other trade mark does not have such a meaning or means something different (22/06/2004, T-85/02, ‘Picaro’ para 56).

In the present case, the difference arising from the clearly perceptible concept conveyed by the contested sign is also a relevant factor of differentiation and will help consumers safely distinguish between the signs. The visual and aural similarities between the signs are not sufficiently high to neutralise the effect of the differentiating concept conveyed by the contested sign.

Considering all the above, there is no likelihood of confusion on the part of the public.

As previously mentioned, the Opposition Division has taken the stance that Spanish consumers would not understand the existing but very uncommon word ‘Mirto’. Should the word be understood by some consumers, the outcome that there is no likelihood of confusion would be even clearer for that minority group as the conceptual difference between the signs would be even more obvious.

Therefore, the opposition must be rejected.

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

Frédérique SULPICE

Catherine MEDINA

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.