OPPOSITION No B 3 048 817

Norma Lebensmittelfilialbetrieb Stiftung & Co. KG, Heisterstr. 4, 90441 Nürnberg, Germany (opponent), represented by Betten & Resch Patent- und Rechtsanwälte PartGmbB, Maximiliansplatz 14, 80333 München, Germany (professional representative)

a g a i n s t

The King of Shaves Company Ltd, 10 Penn Road, HP9 2LH Beaconsfield, United Kingdom (applicant), represented by Neil John Muttock, 6 Kings Avenue, N10 1PB Muswell Hill, United Kingdom (professional representative).

On 28/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 817 is upheld for all the contested goods.

2. European Union trade mark application No 17 594 111 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 594 111 for the word mark ‘KING OF STYLE’. The opposition is based on, inter alia, European Union trade mark registration No 13 121 215 and German trade mark registration No 684 917, both for the word mark ‘King’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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.

The applicant requested that the opponent submit proof of use of the German trade mark registration No 684 917 ‘King’ and international registration designating Austria, Benelux, Czech Republic, Italy and France No 270 159 .

For reasons of procedural economy, the Opposition Division will first examine the proof of use in relation to earlier German trade mark registration No 684 917.

The date of filing of the contested application is 13/12/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 13/12/2012 to 12/12/2017 inclusive.

The request was submitted 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.

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

Class 3: Perfumery, cosmetics and beauty-care preparations, essential oils, bleaching preparations, starch and products made of starch for laundry purposes, colour additives for laundry, abrasives.

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 22/11/2018, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 27/01/2019 to submit evidence of use of the earlier trade mark. On 28/01/2019, within the time limit (being 27/01/2019 a Sunday), the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Affirmation in lieu of an oath by the head of the centralized purchasing department of the opponent, dated 10/01/2019, affirming that its earlier marks DE 684 917 and IR 270 159 designating, inter alia, Austria France and the Czech Republic, have been used regularly in Germany, Austria, the Czech Republic and France, since at least 2008, for shaving gel, shaving foam and aftershave. It is also stated that these goods have been advertised by weekly advertisement flyers published in Germany with a circulation of about 15 million copies per week. The turnover in Germany, Austria, France and Czech Republic in years 2013 to 2015 has been of more than EUR 2.3 million. The document also provides sales figures of these years of the above mentioned goods in Germany, Austria and France and only for shaving gel in the Czech Republic. As regards Germany, the document shows that the opponent has sold between EUR 214.429 to EUR 228.060 of ‘shaving gel’, between EUR 226.585 to EUR 232.286 of ‘shaving foam’ and EUR 270.117 to EUR 340.745 of ‘aftershave’.

• 8 sample product packaging of products marked , and for goods such as 'rasier schaum/mousse de rasage', 'aftershave/ Après Rasage' and 'rasier gel/gel de rasage' with specifications in German, French and Czech.

• 18 invoices and delivery notes from 2013 to 2015 in German, issued by different suppliers from Germany to the opponent and the company Georg Roth Stiftung &Co. Lebensmittelfilialbetrieb KG (according to the opponent, belonging to the opponent’s group of companies) with references to the mark 'KING' for shaving foam, after shave and shaving gel.

• 7 sample advertisement flyers for Germany and Austria dated from 2013 to 2015 showing the mark 'King' and referred ‘after shave’ and ‘shaving foam’ among others goods.

• 1 photograph of a shelf in a store displaying goods marked 'King', namely, ‘shaving foam’, ‘shaving gel’ and ‘after shave’, among others goods.

• Printout of the opponent’s website www.norma-online.de, dated 21/06/2018, regarding the history of the opponent’s business as a discount store in Germany from 1921 until 2016 and its expansion to France in 1989, Czech Republic in 1992 and Austria in 2005. There is also a list of the 14 branches in Germany and one in Austria, France and Czech Republic, respectively.

• Printout of the website https://de.statista.com showing the turnover of the leading retailers of all sectors in Germany of the year 2014, indicating the opponent's ranking 19^th with a turnover for 2013 close to EUR 3.000 million billion.

• Printout of the website https://de.statista.com showing the turnover of the leading discount retailers in Germany of the year 2016, indicating the opponent's ranking 5^th and the turnover of more than EUR 3.330 million.

Assessment of the evidence

Place of use

The ‘affidavit’, product packaging, invoices and advertisement flyers show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (‘EURO’) and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the ‘affidavit’ and the ‘invoices and delivery notes’, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Although the turnovers corresponding to 2013 and 2016, provided through the website https://de.statista.com, refer to sales figures as regards all the goods of the opponent and not only to those under the mark at issue, the affidavit gives the corresponding information to those specific goods for the years 2013, 2014 and 2015. These data completed with the invoices and advertising samples provide sufficient indications concerning the extent of use of the earlier mark.

Nature of use

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the earlier mark has been used in the invoices and delivery notes as the word mark ‘KING’. The packaging and advertising flyers, presented as proof of use of the earlier mark, show also figurative marks such as , or , which can also be accepted as being use of the mark according to Article 18(1) EUTMR, since the slight stylisation of the typeface and different colours of the sign ‘King’ are considered small variations that do not alter the distinctive character of the earlier word mark. Furthermore, the additional word elements ‘FOR MEN’ do not alter its distinctive character either, because these are descriptive of the public to which the goods are targetted.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for after shave, shaving gel and shaving foam. These goods can be considered to form objective subcategories of cosmetics.

Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for after shave, shaving gel and shaving foam.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 13 121 215 and German trade mark registration No 684 917.

a) The goods

The goods on which the opposition is based in relation to the earlier European Union trade mark registration No 13 121 215 and for which use has been proven in relation to German trade mark registration No 684 917 are the following:

DE No 684 917

 

Class 3: After shave, shaving gel and shaving foam.

EUTM No 13 121 215

Class 8: Hygienic and beauty implements for humans and animals; Hair cutting and removal implements; Razors; Animal shearing implements; Beard clippers; Electrically operated hair clippers [hand instruments]; Electric beard trimmers; Electric hair clippers; Electric hair clippers for personal use [hand instruments]; Electrolysis apparatus [depilatory]; Depilation appliances, electric and non-electric; Hair cutting scissors; Hair clippers for personal use, electric and non-electric; Containers adapted for razor blades; Disposable razors; Electric shavers; Razor cases; Japanese razors; Blades for electric razors; Vibrating blade shavers; Razor blades; Cartridges containing razor blades; Razor knives; Razor strops [leather strops]; Shaving cases; Safety razors; Safety razor blades; Dispensers for razor blades; Safety razor blades (Dispensers for -).

The contested goods are the following:

Class 3: Toiletries; Essential oils and aromatic extracts; Body cleaning and beauty care preparations; Abrasive preparations for use on the body; Massage gels, other than for medical purposes; shaving gels; shaving cream; shaving soap; moisturisers; cleansers; beard oil; beard wax; beard balm; shaving serums.

Class 8: Razors; safety razors; electric shavers; razor blades; razor blade dispensers; hair trimmers, electrically operable hair removal devices.

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 3

Shaving gel is identically contained in both lists of goods despite being in plural form in the applicant’s goods.

The contested toiletries; beauty care preparations include, as broader categories, the opponent’s shaving foam. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested moisturisers overlap with the opponent’s after shave since an after shave may be a moisturiser lotion at once. Therefore, they are identical.

The contested shaving cream; shaving soap; shaving serums are similar to a high degree to the opponent’s shaving foam since they have the same purpose and method of use. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested essential oils and aromatic extracts; massage gels, other than for medical purposes are similar to the opponent’s after shave since they may coincide in producer, relevant public and distribution channels.

The contested body cleaning; abrasive preparations for use on the body; cleansers are similar to the opponent’s shaving foam since they may coincide in producer, relevant public and distribution channels.

The contested beard oil; beard wax; beard balm are similar to the opponent’s after shave since they may coincide in producer, relevant public and distribution channels.

Contested goods in Class 8

Razors; safety razors; electric shavers; razor blades; razor blade dispensers are identically contained in both lists of goods (albeit using slightly different wordings).

The contested hair trimmers include, as a broader category the opponent’s electric beard trimmers. 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 electrically operable hair removal devices are included in the broad category of the opponent’s hair cutting and removal implements. Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large and business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average.

c) The signs

King	KING OF STYLE
Earlier trade marks	Contested sign

The relevant territory is the European Union and Germany.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Since one of the earlier marks is a national trade mark from Germany it is necessary to assess the similarity of the signs in that territory. Therefore, in order to avoid unnecessary considerations regarding the perception of the elements of the signs in different territories, the Opposition Division finds it appropriate to focus the comparison of the signs as regards the earlier EUTM trade mark registration also on the German-speaking part of the relevant public.

Both signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is depicted in upper or lower case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial.

The word ‘KING’, included in both signs, besides also having the same meaning as in English, namely a male sovereign ruler of an independent state or people, is also frequently used in Germany to denote something having a superior quality and, therefore, has a laudatory connotation. Bearing in mind that the relevant goods are toiletries, cosmetics, razors and shavers, it is considered that this element is weak (20/09/2011, T-99/10, Tofuking, EU:T:2011:497, § 26).

The word ‘STYLE’ of the contested sign is an English word which refers to, among other meanings, ‘elegance or refinement of manners, dress, etc.’ and ‘prevailing fashion in dress, looks, etc.’ (Collins English Dictionary). This meaning will be grasped, by the majority of the relevant public, due to its resemblance to the equivalent German word ‘stil’ and also the use of the English word ‘STYLE’. For this part of the public this element is weak since it indicates the intended purpose of the goods at issue, which is to reach a good style by using them.

For the rest of the public for which the element ‘STYLE’ does not have any meaning, this element is distinctive.

The word ‘OF’ of the contested sign is an English preposition that indicates, among other meanings, ‘characterized by’ (Collins English Dictionary). It will be understood by the part of the public who understands English, for which it will have a limited distinctiveness, and will not be understood with any meaning for the rest of the public, for which it is distinctive.

For the part of the public who perceives the meanings mentioned above, the contested sign ‘KING OF STYLE’ will be associated with the idea of being the first in elegance or fashion in look, and therefore, the expression as a whole has a low degree of distinctiveness for the relevant goods in Class 3 and 8, which are used to have a better appearance or look.

It should also be noted that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the fact that the earlier mark is reproduced at the beginning of the contested sign will have impact in the assessment of likelihood of confusion.

Visually and aurally, the signs coincide in the word and syllable ‘KING’. However, they differ in the words and sounds of the letters ‘OF STYLE’ in the contested sign.

Therefore, taking into account the distinctive issues, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the majority if the public that understands the meaning of both signs, as the signs will be associated with a similar meaning, the signs are conceptually similar to an average degree. For the remaining part of the public that only perceives the meaning of the word ‘KING’, the signs are also conceptually similar to an average degree since there are also other words even without meaning in the contested sign.

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 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all the goods in question.

e) Global assessment, other arguments and conclusion

In the present case, the goods are partly identical and partly similar to varying degrees. They target the public at large and professionals who will pay an average degree of attention when purchasing them. The earlier mark as a whole is of lower than average distinctiveness.

The signs are visually, aurally and conceptually similar to an average degree on account that the earlier mark is included at the beginning of the contested sign.

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. Indeed, in the present case, it is highly conceivable that the relevant consumer will 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The presence of the earlier mark entirely reproduced at the beginning of the contested sign may lead consumers (even professionals) to assume that there is a connection between these two marks.

It should be recalled that the finding that the earlier mark has a lower than average distinctive character does not preclude a finding that there is a likelihood of confusion. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C-39/97, ‘Canon’, § 24), it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjuaes.com, EU:T:2007:387, § 70).

Considering all the above, there is a likelihood of confusion (including a likelihood of association) on the part of the German-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 121 215 and German trade mark registration No 684 917. It follows that the contested trade mark must be rejected for all the contested goods.

As these earlier rights lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268), nor the evidence of use in respect of this other earlier right.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marta GARCÍA COLLADO

Victoria DAFAUCE MENENDEZ

Aldo BLASI

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.