OPPOSITION No B 3 050 360

Emil Veinedotter, Broomfield House 64 Broomfield Road, HD2 2HG Fixby, United Kingdom (opponent)

a g a i n s t

Next Retail Limited, Desford Road, Enderby, LE19 4AT Leicester, United Kingdom (applicant), represented by Marks & Clerk LLP, 15 Fetter Lane, EC4A 1BW London, United Kingdom (professional representative).

On 08/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 360 is partially upheld, namely for the following contested goods:

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; bags; handbags; shoulder bags; cases; suitcases; briefcases; rucksacks; belts; purses; travelling cases; backpacks; duffel bags; bags for campers; shopping bags; carrier bags; 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; hat boxes of leather; luggage tags; sling bags for carrying infants; vanity cases.

Class 25: Clothing, footwear, headgear; sports clothing; socks; maternity wear; clothing for men, women and children, namely, coats, rain coats, anoraks, parkas, blazers, jackets, cardigans, boleros, sport coats, wind resistant jackets, suits, tuxedos; vests, dresses, evening gowns, jumpers, jerseys, skirts, pants, slacks, trousers, jeans, jean shirts, jump suits, coveralls, flight suits, gym suits, jogging jerseys, blouses, tunics, sweatshirts, t-shirts, tops, halter tops, tank tops, body suits, camisoles, chemises, undershirts, slips, foundation garments, body shapers, bustiers, briefs, boxer shorts, underpants, panties, lounge wear, night gowns, night shirts, negligees, robes, pyjamas, hosiery, tights, leggings, socks; ties, neckties, bow ties, scarves, shoals, neckerchiefs, gloves, mittens, belts, swimwear, bathing suits, beachwear, beach cover-ups, sarongs; ski wear, ski suits, ski pants, ski gloves, thermal socks, infant wear, play suits; footwear, namely, shoes, boots, sandals, flip flops, thongs, pool sliders and slippers; headgear namely, hats, caps, headbands, ear warmers; ready-made clothing; clothing of leather or suede; overalls; pullovers; shirts; swimming suits; training suits; jogging suits; mufflers; ear muffs; shawls; lingerie; bras; bodies; sleep sets; waterproof clothing; dancing clothing; shorts; clothing, footwear and headgear for children and babies; clothing, footwear and headgear all for sports and leisurewear; knitwear in the nature of sweaters; footwear in the nature of trainers; joggers, namely jogging suits; hoodies; polo shirts; sweat tops; track suits; leotards; trunks; waistcoats; bridesmaid dresses; ponchos; raincoats; dressing gowns; knickers; basques; stoles; wraps; cravats; kaftans; rompers; fleeces; fleece shirts; windbreakers; aprons; clothing for babies; babies' bibs, not of paper; dinner jackets; braces; babies' sleepsuits; garters; sock suspenders; bandanas [neckerchiefs]; special sporting and gymnastic wear; special sporting and gymnastic footwear; ankle boots; babies' pants [underwear]; bath sandals; bath slippers; bath robes; bathing caps; bathing trunks; swimsuits; beach clothes; beach shoes; berets; boas [necklets]; bodices [lingerie]; boots for sports; breeches for wear; caps [headwear]; clothing for gymnastics; clothing of imitations of leather; collars [clothing]; combinations [clothing]; corselets; corsets [underclothing]; cuffs/wristbands [clothing]; cyclists' clothing; detachable collars; fishing vests; football shoes/football boots; footmuffs, not electrically heated; fur stoles; furs [clothing]; gabardines [clothing]; galoshes; gymnastics shoes; half-boots; hoods [clothing]; jumper dresses; pinafore dresses; lace boots; layettes [clothing]; leg warmers; masquerade costumes; money belts [clothing]; motorists' clothing; neckties; outerclothing; overcoats, topcoats; paper clothing; paper hats [clothing]; petticoats; saris; sashes for wear; short sleeve shirts; shower caps; ski boots; skorts; skull caps; sleep masks; slippers; inner soles; spats; gaiters; sports jerseys; sports shoes; sports singlets; stocking suspenders; stockings; stuff jackets [clothing]; sweat-absorbent stockings; sweat-absorbent underwear and underclothing; sweat-absorbent socks; teddies [undergarments]; togas; top hats; trouser straps/gaiter straps; turbans; underwear/underclothing; uniforms; valenki [felted boots]; veils [clothing]; visors [headwear]; wet suits for water-skiing; wooden shoes; girdles; bra strap extenders; snoods.

2. European Union trade mark application No 17 383 316 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 17 383 316 for the figurative mark . The opposition is based on European Union trade mark registration No 9 774 233 and the United Kingdom trade mark registration No 2 557 598 (please, see the Preliminary Remarks below), both registered for the figurative mark .The opponent invoked Article 8(1)(b) EUTMR.

Preliminary Remarks

The Opposition Division observes that in the notice of opposition the opponent invoked the European Union trade mark registration No 9 774 233 as basis of the opposition, however together with the notice of opposition and within the opposition period, the opponent submitted also the certificate of the United Kingdom trade mark registration No 2 557 598.

According to the Office practice, for the purposes of assessing the admissibility of the opposition the Office must base itself solely on the claims contained in the documents submitted by the opponent within the opposition period (decision of 21/07/2014, R 1573/2013-4, OKAY/O-Key (fig.)).

Identification elements are to be looked for are not only in the notice of opposition, but also in annexes or other documents filed together with the notice of opposition or any documents submitted within the opposition period.

Therefore, in the present case the United Kingdom trade mark registration No 2 557 598 constitutes a valid basis for the present opposition and is admissible and substantiated.

ASSESSMENT OF THE PROOF OF USE REGARDING THE EARLIER EUTM REGISTRATION NO 9 774 233

Preliminary remarks

The Opposition Division notes that on 17/012019, the applicant filed an explicit und unambiguous request to the Office asking the opponent to submit the evidence of use of the earlier EUTM registration. In the observations, filed on the same day, the applicant made some remarks regarding the UK registration and considered that this right did not constitute the basis of the present opposition proceedings and, consequently, the evidence of use of the earlier UK registration has not been explicitly and unambiguously requested by the applicant.

The Opposition Division wishes to recall that the Office does not inquire ex officio whether the earlier mark has been used. Such examination takes place only when the EUTM applicant makes an explicit and unambiguous request for proof of use. Such a request, if the legal requirements are met, triggers the procedural and substantive consequences laid down in the EUTMR and the EUTMIR and EUTMDR.

Therefore, the Opposition Division will proceed with the examination of the evidence of use as filed by the opponent in relation to the only earlier right in relation to which an explicit and unambiguous proof of use request was made: the EUTM registration No 9 774 233.

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

On 17/01/2019 the applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 9 774 233.

The request was filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 24/10/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 24/10/2012 to 23/10/2017 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 18: Leather and imitations of leather; holdalls, travelling bags, handbags, satchels, rucksacks, purses.

Class 25: Clothing, footwear and headgear.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 31/01/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 05/04/2019, which has been subsequently extended until 05/06/2019 to submit evidence of use of the earlier trade mark. On 05/06/2019, the opponent requested additional one-day extension of this time limit due to IT problems. The Office agreed and extended the time limit by one day that is until 06/06/2019.

On 07/06/2019, after the above-mentioned time limit, the opponent has submitted the proof of use.

The Office practice is that any evidence that has been submitted by the opponent at any time during the proceedings before the expiry of the time limit for providing proof of use, in our case, before or on 06/06/2019 at the latest, even before the applicant’s request for proof of use, has to be taken automatically into account when assessing proof of use.

The Opposition Division notes that before the expiry of the time limit for providing proof of use, namely on 19/04/2018, together with the notice of opposition the opponent sent the following evidence of use of the earlier mark:

• Letter dated 18/04/2018 signed by the opponent, being also Creative Director of Pearly King, stating that the earlier trade mark has been continuously used since 2009 as the brand logo for all the product groups (in classes 18 and 25) for the opponent’s fashion brand ‘Pearly King’. Furthermore the letter states that the earlier mark has been used consistently on all point of sale, adverting and marketing materials.

• Seven undated pages of images from unknown source showing the earlier figurative mark on some clothing articles (polos, jackets, T-shirts, trousers, shirts), accessories and/or marketing materials, including one with comparison ‘NEXT’ vs. ‘Pearly King’.

Additionally, on 13/09/2018, the opponent filed the following documents:

• Attachment 1: document entitled ‘PK Current StyleFile’ is undated and show various articles of clothing including shirts, sweaters, t-shirts and polo shirts mostly bearing the earlier figurative mark and the mark ‘PERALY KING’ on the neck label visible on the goods or placed directly above the earlier figurative mark

• Attachment 2: document entitled ‘PK New Brand Pack 2018’, although the opponent described the document as ‘NEW Brand Pack 2018’, the content of the of this document is undated and refers to design proposals for zip pullers, swing ticket placed on jeans or buttons bearing the earlier figurative mark. Anyhow, 2018 is outside the relevant time period.

• Attachment 3 and 4: undated documents entitled ‘Current devices’ and ‘Current shops’ show side by side comparison of undated images from the unknown source of some clothing articles bearing the earlier figurative mark (polos, t-shirts) from ‘Pearly King’ and ‘Next’.

• 

Furthermore, there are some undated images showing sweaters bearing the earlier figurative mark

Assessment of evidence

Article 47 EUTMR requires proof of genuine use of the earlier mark. Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (judgment of 18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

In accordance with Article 10(3) EUTMDR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services.

These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements.

The Opposition Division notes that the material field by the opponent is undated. The Attachment No 2 filed by the opponent on 13/09/2018, named ‘PK New Brand Pack 2018’ refers to the time point which falls outside the relevant period. Already for this reason, the evidence submitted before of the expiry of the time limit is insufficient to prove genuine use of the earlier mark.

In addition, as far as the place of use is concerned, the only reference to the place of use of the earlier mark is indicated on the background of the last photo, incorporated into this decision, on which ‘NEXT CO.UK’ can be read. However, this reference on itself is not sufficient to indicate the place of use of the earlier mark in question.

Additionally, the photos showing some articles of the relevant goods bearing the earlier figurative mark do not refer to any clear source. The Opposition Division can only suppose that they come from the opponent’s catalogues (some photos bear page numbers). Some materials appear to be merely projects of particular designs, not marketed and awaiting approval (see for example, attachment 2 to the opponent’s observations of 13/09/2018).

In this regard, it should be mentioned that the requirement of proof of use always raises the question of the probative value of the submitted material. The evidence must at least have a certain degree of reliability. As a general rule, the Office considers material produced by third parties as being of a higher probative value than material produced by the owner himself or by its representative. However, where material must regularly be produced for use by the public and/or authorities according to statutory rules, for instance, company law and/or Stock Exchange Regulations, and where it may be assumed that such material is subject to certain official verification, its probative value is certainly higher than ordinary ‘personal’ material produced by the opponent.

On some photos the earlier mark appears as it is registered, however, on other it is accompanied by additional verbal elements ‘Pearly King’ or it does not appear at all (see, for example, cover photo of the attachment 1 to the opponent’s observations of 13/09/2018).

Article 18 EUTMR states that use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, and regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (judgment of 23/02/2006, T-194/03, EU:T:2006:65, § 50).

The General Court (the ‘GC’) further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

In order to decide whether the sign as used and the sign as registered are broadly equivalent, it must first be established which elements are negligible. The GC has developed criteria for doing so in several judgments.

The GC has held that:

the assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the arrangement of the trade mark (judgment of 24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 36).

With regard to additions:

• several signs may be used simultaneously without altering the distinctive character of the registered sign (judgment of 08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34);

• if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (judgments of 30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

In the present case, the earlier mark is registered for the figurative mark . It is up to the opponent to provide evidence that, for example, the additional sign ‘PEARLY KING’ is in fact an independent sign, which refers, for instance, to the company mark, the manufacturer, etc. or that its use does not alter the distinctive character of the earlier figurative mark in the form it is registered.

It is important, in particular, where the genuineness of use could be put into doubt where used with another mark, in particular, when the registered mark is perceived as a mere decorative element.

According to the Office practice, in principle, a difference in words or even letters constitutes an alteration of the distinctive character of the mark. However, there are some situations where additions are acceptable if they constitute non-dominant elements, have generic or descriptive meaning or are insignificant (punctuation marks, plural or singular forms, indications of type of enterprise).

In the letter filled together with the notice of opposition the opponent only mentions that ‘Pearly King’ products, all featuring the logo, have been sold in many EU countries’ and that ‘Pearly King’ constitutes the opponent’s fashion brand. However, as claimed by the applicant, the opponent did not submit any evidence in order to explain thoroughly the relationship between the use of the opponent’s earlier mark in question and the sign ‘Pearly King’.

As regarding the extent of use, as correctly argued by the applicant, the evidence does not indicate what is the market share of the earlier trade mark, nor provides any concrete information on the extent to which the trade mark has been promoted (newspaper advertisements), and sold in relation to the relevant goods. All these aspects are not supported by the evidence. The material filed by the opponent is not conclusive since it is not relevant; it does not include reliable evidence, such as invoices referring to a concrete number of the relevant goods sold under the earlier mark or market surveys/opinion polls regarding the earlier mark. The opponent did not submit any evidence regarding turnover figures for the relevant territory. Finally, as mentioned above, the evidence appears to be originating entirely from the opponent, and there are no independent third parties items that refer to the marks and their extent of use in relation to the goods at issue (such as, inter alia, advertisements of the opponent’s goods in independent publications and media).

Under these circumstances, it cannot be determined beyond reasonable doubt that the opponent’s goods have actually been sold in the relevant territory, during the relevant period. As noted above, the Opposition Division cannot base its findings on probabilities or suppositions.

Consequently, in the present case, the Opposition Division concludes that the evidence furnished by the opponent before the expiry of the time limit is manifestly insufficient to prove that the earlier trade mark was genuinely used in the relevant territories during the relevant period of time for the goods for which it is registered.

As outlined above, on 07/06/2019, therefore, after expiry of the time limit to file proof of use (06/06/2019), the opponent filed, for the first time, the following new items of the evidence.

Annex 1

Letter of Consent from Emil Veinedotter to Rapidname Ltd (Employer) to use

the EU Trademark 9774233 (the earlier mark) [Page 34]

Annex 2

Cross Reference Guides for Evidence

See also Annex 23

Annex 3

Comparison Images – Pearly King & Next garments

Annex 4

Customer Invoices – These provide evidence of where Rapidname Ltd has sold garments/products that feature the EU Trade Mark 9774233 (earlier mark)

Annex 5

Supplier Invoices – These provide evidence of where Rapidname Ltd has purchased products or services that feature the EU Trade Mark 9774233 (earlier mark)

Annex 5A

Production Supplier Invoices for Garments

Annex 5B

Packaging Supplier Invoices

Annex 5C

Trims, Labels, Tickets Supplier Invoices

Annex 5D

Point of Sale Supplier Invoices

Annex 5E

Legal Invoice for Previous Opposition

Annex 5F

Class 18 Invoices

Annex 6

Marketing & Advertising Expenditure Invoices for services featuring EU Trade Mark 9774233 (earlier mark)

Annex 7

Pearly King Look Books and Style Files Images featuring EU Trade Mark 9774233 (earlier mark)

Annex 8

Packaging, Labels and Trims Images featuring EU Trade Mark 9774233 (earlier mark)

Annex 9

Social Media and Website Screenshots featuring EU Trade Mark 9774233 (earlier mark)

Annex 10

Magazine & Web Articles Invoice & Images featuring EU Trade Mark 9774233 (earlier mark)

Annex 11

Exhibitions and Tradeshows Images featuring EU Trade Mark 9774233 (earlier mark)

Annex 12

Distributor / Customer Showrooms and Stores Images featuring EU Trade Mark 9774233 (earlier mark)

Annex 13

Class I8 images featuring EU Trade Mark 9774233 (earlier mark)

Annex 14

Supporting Case -Decision of the Second Board of Appeal of 22 November 2017 R 64 2017 2

Annex 15

Supporting Case -Judgment of the General Court (First Chamber) of30 September 2015 T36/413

Annex 16

Supporting Case- Decision of the First Board of Appeal of 9 January 2017 R 1304/2016-1

Annex 17

Supporting Case- Decision of the Fourth Board of Appeal of 18 May 2016 in Case R 1353/2015-4

Annex 18

Supporting Case -Judgment of the Court of First Instance (Fifth Chamber) 17 April 2008 (*) In Case T-389/03,

Annex 19

Supporting Case -Decision of the 5th Court of Appeal November 2014 R1910/2013-5

Annex 20

Supporting Case- Opposition Decision of 23/09/2008 No B 584 716

Annex 21

Supporting Case- Judgment of the General Court (First Chamber) of26 April 2016 (*) In Case T21/15,

Annex 22

Supporting Case- Judgment of the General Court (Fifth Chamber) of 20 October 2011 (*) In Case T-238/10

Annex 23

Additional information

Additional Witness Statement

Additional Customer Invoices

Additional Supplier Invoice

Additional Cross Reference Guides for Evidence

At this point, it should be mentioned that Article 10(2) EUTMDR is an essentially procedural provision and it is apparent from the wording of that provision that when no proof of use of the mark concerned is submitted within the time limit set by the Office, the opposition must automatically be rejected. It follows that the Office cannot take into account evidence submitted for the first time after the expiry of the time limit (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 28).

It is true that pursuant to Article 10(7) EUTMDR the Office will exercise its discretion under Article 95(2) EUTMR and decide whether or not to accept belated indications or evidence of use. However, the use of the term ‘supplementary’ in the text of Article 10(7) EUTMDR points to the necessary existence of a previous relevant submission within the time limit set by the Office, i.e. that it is not entirely new. It follows that no discretionary power is available, if no indications or evidence of use were submitted within the relevant time limit.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145 and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

As it can be seen from the evidence enumerated above, the evidence filed by the opponent after the relevant time limit had expired is entirely new as to the substance. Therefore, since, as stated above, within the relevant time limit, the opponent did not submit any relevant evidence as to the use of the earlier mark for the goods for which it has been registered (in particular in respect to the time and place but also extent of use) and, the belated evidence does not have any supplementary character but is entirely new, the Office cannot take into account evidence submitted for the first time after the expiry of the time limit (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 28).

Consequently, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR as it is based on European Union trade mark registration No 9 774 233.

The Opposition Division will now continue with the assessment of the likelihood of confusion under Article 8(1)(b) EUTMR in relation to the United Kingdom trade mark registration No 2 557 598.

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 18: Leather and imitations of leather; holdalls, travelling bags, handbags, satchels, rucksacks, purses.

Class 25: Clothing, footwear and headgear.

The contested goods are 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; 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.

Class 25: Clothing, footwear, headgear; sports clothing; socks; maternity wear; clothing for men, women and children, namely, coats, rain coats, anoraks, parkas, blazers, jackets, cardigans, boleros, sport coats, wind resistant jackets, suits, tuxedos; vests, dresses, evening gowns, jumpers, jerseys, skirts, pants, slacks, trousers, jeans, jean shirts, jump suits, coveralls, flight suits, gym suits, jogging jerseys, blouses, tunics, sweatshirts, t-shirts, tops, halter tops, tank tops, body suits, camisoles, chemises, undershirts, slips, foundation garments, body shapers, bustiers, briefs, boxer shorts, underpants, panties, lounge wear, night gowns, night shirts, negligees, robes, pyjamas, hosiery, tights, leggings, socks; ties, neckties, bow ties, scarves, shoals, neckerchiefs, gloves, mittens, belts, swimwear, bathing suits, beachwear, beach cover-ups, sarongs; ski wear, ski suits, ski pants, ski gloves, thermal socks, infant wear, play suits; footwear, namely, shoes, boots, sandals, flip flops, thongs, pool sliders and slippers; headgear namely, hats, caps, headbands, ear warmers; ready-made clothing; clothing of leather or suede; overalls; pullovers; shirts; swimming suits; training suits; jogging suits; mufflers; ear muffs; shawls; lingerie; bras; bodies; sleep sets; waterproof clothing; dancing clothing; shorts; clothing, footwear and headgear for children and babies; clothing, footwear and headgear all for sports and leisurewear; knitwear in the nature of sweaters; footwear in the nature of trainers; joggers, namely jogging suits; hoodies; polo shirts; sweat tops; track suits; leotards; trunks; waistcoats; bridesmaid dresses; ponchos; raincoats; dressing gowns; knickers; basques; stoles; wraps; cravats; kaftans; rompers; fleeces; fleece shirts; windbreakers; aprons; clothing for babies; babies' bibs, not of paper; dinner jackets; braces; babies' sleepsuits; garters; sock suspenders; bandanas [neckerchiefs]; special sporting and gymnastic wear; special sporting and gymnastic footwear; ankle boots; babies' pants [underwear]; bath sandals; bath slippers; bath robes; bathing caps; bathing trunks; swimsuits; beach clothes; beach shoes; berets; boas [necklets]; bodices [lingerie]; boot uppers; boots for sports; breeches for wear; cap peaks; caps [headwear]; clothing for gymnastics; clothing of imitations of leather; collars [clothing]; combinations [clothing]; corselets; corsets [underclothing]; cuffs/wristbands [clothing]; cyclists' clothing; detachable collars; dress shields; fishing vests; fittings of metal for footwear; football shoes/football boots; footmuffs, not electrically heated; footwear uppers; fur stoles; furs [clothing]; gabardines [clothing]; galoshes; gymnastics shoes; half-boots; hat frames [skeletons]; heelpieces for stockings; heelpieces for footwear; heels; hoods [clothing]; jumper dresses; pinafore dresses; lace boots; layettes [clothing]; leg warmers; masquerade costumes; money belts [clothing]; motorists' clothing; neckties; non-slipping devices for footwear; outerclothing; overcoats, topcoats; paper clothing; paper hats [clothing]; petticoats; pockets for clothing; ready-made linings [parts of clothing]; saris; sashes for wear; shirt fronts; shirt yokes; short sleeve shirts; shower caps; ski boots; skorts; skull caps; sleep masks; slippers; inner soles; soles for footwear; spats; gaiters; sports jerseys; sports shoes; sports singlets; stocking suspenders; stockings; studs for football boots; stuff jackets [clothing]; sweat-absorbent stockings; sweat-absorbent underwear and underclothing; sweat-absorbent socks; teddies [undergarments]; tips for footwear; togas; top hats; trouser straps/gaiter straps; turbans; underwear/underclothing; uniforms; valenki [felted boots]; veils [clothing]; visors [headwear]; welts for footwear; wet suits for water-skiing; wooden shoes; girdles; bra strap extenders; snoods.

The term ‘namely’ used in the list of the contested goods in Classes 18 and 25 to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 18

The contested leather and imitations of leather; travelling bags (mentioned twice); handbags; rucksacks; satchels are identically mentioned in the opponent’s specification.

The contested leather, un-worked or semi-worked; processed or unprocessed leather, artificial leather, lining leather are included in the broad category of the opponent’s leather and imitations of leather. Therefore, they are identical.

The contested bags includes as a broader category the opponent’s travelling bags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested suitcases; travelling cases and the contested travelling bags are synonyms. Therefore, they are identical.

The contested backpacks and the opponent’s rucksacks are synonyms and therefore, these goods are identical.

The remaining contested trunks; shoulder bags; cases; briefcases; belts; purses; duffel bags; bags for campers; shopping bags; carrier bags; 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), leather bags, bags of synthetic materials; wallets; attaché cases; music cases; 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; hat boxes of leather; luggage tags; vanity cases are at least similar to the opponent’s travelling bags; handbags. These goods may coincide at least in producer, relevant public and distribution channels. Some of the goods may also coincide in further factors, such as purpose, i.e. purses or purpose and nature, i.e. toilet bags.

The contested processed or unprocessed hides; cowhide; animal skins, hides are at least similar to the opponent’s broad category of leather and imitations of leather as they may serve the same purpose. They usually coincide in producer and distribution channels. Furthermore, they may be in competition.

The contested sling bags for carrying infants are similar to a low degree to the opponent’s clothing in Class 25 as they usually coincide in producer, relevant public and distribution channels.

The remaining contested furniture covering of leather; umbrellas, parasols and walking sticks; shooting sticks; collars for animals; whips, harness and saddlery are dissimilar to all the opponent’s goods in Class 18. Furniture covering of leather constitutes pieces of leather for furniture. According to case-law, the raw materials subjected to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (see, to that effect, judgment of 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (judgment of 09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43). The contested umbrellas, parasols are devices for protection from the weather (rain/sun) consisting of a collapsible, usually circular, canopy mounted on a central rod. The contested walking sticks are long wooden sticks which a person can lean on while walking. Shooting sticks are devices that resemble walking sticks, having a spike at one end and a folding seat at the other. The contested collars for animals; whips, harness and saddlery are accessories made usually of leather, used for driving and riding animals, especially horses. These goods do not have the same nature, purpose or method of use. Moreover, they are neither in competition nor complementary. Finally, they are not generally produced by the same companies, sold through the same channels and do not target the same public.

A fortiori, the remaining contested goods mentioned above are also dissimilar to the opponent’s clothing, footwear and headgear in Class 25. The goods at issue have different natures, purposes and methods of use. They are not in competition with each other or complementary. Furthermore, they are not provided by the same undertakings and they do not target the same end users.

Contested goods in Class 25

The contested clothing, footwear and headgear are identically mentioned in the opponent’s specification.

The contested sports clothing; socks; maternity wear; clothing for men, women and children, namely, coats, rain coats, anoraks, parkas, blazers, jackets, cardigans, boleros, sport coats, wind resistant jackets, suits, tuxedos; vests, dresses, evening gowns, jumpers, jerseys, skirts, pants, slacks, trousers, jeans, jean shirts, jump suits, coveralls, flight suits, gym suits, jogging jerseys, blouses, tunics, sweatshirts, t-shirts, tops, halter tops, tank tops, body suits, camisoles, chemises, undershirts, slips, foundation garments, body shapers, bustiers, briefs, boxer shorts, underpants, panties, lounge wear, night gowns, night shirts, negligees, robes, pyjamas, hosiery, tights, leggings, socks; ties, neckties, bow ties, scarves, shoals, neckerchiefs, gloves, mittens, belts, swimwear, bathing suits, beachwear, beach cover-ups, sarongs; ski wear, ski suits, ski pants, ski gloves, thermal socks, infant wear, play suits; footwear, namely, shoes, boots, sandals, flip flops, thongs, pool sliders and slippers; headgear namely, hats, caps, headbands, ear warmers; ready-made clothing; clothing of leather or suede; overalls; pullovers; shirts; swimming suits; training suits; jogging suits; mufflers; ear muffs; shawls; lingerie; bras; bodies; sleep sets; waterproof clothing; dancing clothing; shorts; clothing, footwear and headgear for children and babies; clothing, footwear and headgear all for sports and leisurewear; knitwear in the nature of sweaters; footwear in the nature of trainers; joggers, namely jogging suits; hoodies; polo shirts; sweat tops; track suits; leotards; trunks; waistcoats; bridesmaid dresses; ponchos; raincoats; dressing gowns; knickers; basques; stoles; wraps; cravats; kaftans; rompers; fleeces; fleece shirts; windbreakers; aprons; clothing for babies; babies' bibs, not of paper; dinner jackets; braces; babies' sleepsuits; garters; sock suspenders; bandanas [neckerchiefs]; special sporting and gymnastic wear; special sporting and gymnastic footwear; ankle boots; babies' pants [underwear]; bath sandals; bath slippers; bath robes; bathing caps; bathing trunks; swimsuits; beach clothes; beach shoes; berets; boas [necklets]; bodices [lingerie]; boots for sports; breeches for wear; caps [headwear]; clothing for gymnastics; clothing of imitations of leather; collars [clothing]; combinations [clothing]; corselets; corsets [underclothing]; cuffs/wristbands [clothing]; cyclists' clothing; detachable collars; fishing vests; football shoes/football boots; footmuffs, not electrically heated; fur stoles; furs [clothing]; gabardines [clothing]; galoshes; gymnastics shoes; half-boots; hoods [clothing]; jumper dresses; pinafore dresses; lace boots; layettes [clothing]; leg warmers; masquerade costumes; money belts [clothing]; motorists' clothing; neckties; outerclothing; overcoats, topcoats; paper clothing; paper hats [clothing]; petticoats; saris; sashes for wear; short sleeve shirts; shower caps; ski boots; skorts; skull caps; sleep masks; slippers; inner soles; spats; gaiters; sports jerseys; sports shoes; sports singlets; stocking suspenders; stockings; stuff jackets [clothing]; sweat-absorbent stockings; sweat-absorbent underwear and underclothing; sweat-absorbent socks; teddies [undergarments]; togas; top hats; trouser straps/gaiter straps; turbans; underwear/underclothing; uniforms; valenki [felted boots]; veils [clothing]; visors [headwear]; wet suits for water-skiing; wooden shoes; girdles; bra strap extenders; snoods are either identical because they are included in the broad categories of the opponent’s clothing, footwear and headgear or they are at least similar to a low degree to them since they usually coincide with the opponent’s goods at least in producer, relevant public and distribution channels, i.e. sleep masks. Some of the goods may also coincide in further factors, such as method of use, i.e. aprons or additionally they may be complementary, i.e. inner soles to the opponent’s footwear.

The remaining contested ready-made linings [parts of clothing]; cap peaks; studs for football boots; boot uppers; dress shields; fittings of metal for footwear; footwear uppers; hat frames [skeletons]; heelpieces for stockings; heelpieces for footwear; heels; non-slipping devices for footwear; pockets for clothing; shirt fronts; shirt yokes; soles for footwear; tips for footwear; welts for footwear are dissimilar to the opponent's goods in Classes 25 and 18. They are either used in the process of manufacturing or they constitute parts, components or fittings of the final product and, therefore, the end users targeted by the contested goods are different from those targeted by the opponent's goods, that is, mainly those working in the footwear, headgear and clothing industry and professional consumers. In contrast, the opponent's goods are final products aimed at the general public. Furthermore, they have different natures, methods of use, intended purposes and manufacturers, and they are sold in different retail outlets.

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 services found to be identical and similar to various degrees are directed at public at large.

The public’s degree of attentiveness is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

Both marks are purely figurative. They represent a stag’s head, depicted in rather realistic way.

Neither of the marks includes visually dominant elements.

Visually, the signs coincide in that they include depictions of highly similar stag’s head, portrayed in black and white and in a realistic and accurate style. In both cases it is an animal bust and that partially a fur coat on the neck of the animal is visible. They differ in the fact that their antlers are represented a little differently in both signs and the stag’s head in the contested sign is directed slightly to the left.

The representation of a stag’s head in both signs fulfils a fully distinctive role in the signs as it does not have any clear and unambiguous meaning in relation to the relevant goods from the relevant public’s perspective.

Taking into account the resemblance between the signs in question and the fact that they do not include any other element, the signs are visually similar to an average degree.

Purely figurative signs are not subject to an aural assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs evoke an idea of a stag’s head. As previously mentioned, this concept is distinctive in relation to the goods at issue. Therefore, the signs are conceptually identical.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 relevant goods in question. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods have been found partly identical, partly similar to various degrees and partly dissimilar. They target the general public whose degree of attention is average.

The earlier mark enjoys an average degree of inherent distinctiveness.

The signs are visually similar to an average degree and conceptually identical on account of the coincidence in the representation of the stag’s head portrayed in a similar, realistic way.

The applicant argues that the signs are visually and conceptually not similar due to the differences in the representation of the stag’s head in both signs. In this regard the Opposition Division notes that the signs coincide in their only and clearly recognisable image of a stag’s head. Furthermore, the signs not only share an analogues semantic content but this semantic content is conveyed in a way which creates a similar impression between the signs. Indeed, the Court has also established that, exceptionally, where the signs have the same distinctive concept in common accompanied by visual similarities between the signs, this may lead to a likelihood of confusion even in the absence of a particularly high distinctiveness of the earlier mark (14/12/2006, Joined Cases T-81/03, T-82/03 and T-103/03, EU: T:2006:397 involving the signs and .

From the visual point of view, the Opposition Division observes that the signs match in a clearly recognisable element and they do not include any other element which could help consumers to differentiate between them. As to the conceptual perspective, the fact that elements are stylised in different ways does not prevent the conceptual identity between them (17/04/2008, T‑389/03, Pelikan (representation of a pelican), EU:T:2008:114, §§ 90-92). Consequently, the applicant’s arguments regarding the similarity of the signs in question must be put aside.

Furthermore, the applicant argues that there are a lot of European Union trade mark registrations consisting of animal heads or silhouettes and therefore, the opponent’s mark has a low distinctive character.

In this regard, 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 the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include animal’s head or silhouette.

Furthermore, the applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings since the signs in question are not comparable to those assessed in previous decisions. Although they all represent animal’s head or silhouette there are striking differences due to colours, contours and position in which animals are depicted. These differences are not minor and have further impact on perception of the signs. This is not the case under the present opposition proceedings, as analysed above. Under these circumstances, the applicant’s claims must be set aside.

Account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

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.

It should be concluded that it is highly conceivable that consumers will not remember the slight differences in the portrayals of the stag’s head being the only elements of the signs and even if they realise that they differ in some details, they may still perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way, according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion in the form of a likelihood of association on the part of the public for the identical and similar to various degrees goods, including also those which are similar to a low degree to the opponent’s goods. Therefore, the opposition is partly well-founded on the basis of the opponent’s United Kingdom trade mark registration No 2 557 598.

It follows from the above that the contested trade mark must be rejected for all the goods found to be identical and similar to various degrees to those of the earlier mark.

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

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

Jakub MROZOWSKI

Monika CISZEWSKA

Gueorgui IVANOV

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.