OPPOSITION No B 3 049 362

Wal-Mart Stores, Inc. and WalMart Apollo, LLC, 702 S.W. 8th Street, 72716, Bentonville, United States of America (opponent), represented by Appleyard Lees IP LLP, 15 Clare Road, HX1 2HY Halifax, United Kingdom (professional representative)

a g a i n s t

Saadettin Yildiz, 18 rue Léon Paul Fargue, 95200 Sarcelles, France (applicant).

On 18/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 362 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 633 611 for the word mark ‘AVENUE GEORGE CINQ PARIS’. The opposition is based on European Union trade mark registration No 16 202 145 for the word mark ‘GEORGE’, European Union trade mark registration No 16 202 152 for the figurative mark and on non-registered trade marks used in the course of trade in all of the countries of the European Union for the word mark ‘GEORGE’ and the figurative mark . The opponent invoked Article 8(1)(b), Article 8(4), and Article 8 (5) EUTMR.

PRELIMINARY REMARK

The Opposition Division notes that, in the course of the proceedings, both earlier European Union trade mark registrations were assigned by the opponent to the company Walmart Apollo, LLC. The transfer of ownership for the above-mentioned EUTM registrations has been entered in the Office’s Register on 20/06/2018 and published on 22/06/2018. Therefore as regards those marks, the new proprietor substitutes the original proprietor in the proceedings. However, no transfer was claimed, or evidence provided, concerning the earlier non-registered trade marks. Accordingly in relation to the latter marks the Office considers the original opponent to still be a party in the proceedings with the result that there are two opponents and the new opponent is treated as a ‘joint opponent’ .

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 16 202 145 for the word mark ‘GEORGE’.

a) The goods

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

Class 14: Precious metals and their alloys; jewellery, precious stones; horological and chronometric instruments; agates; alarm clocks; amulets [jewellery]; anchors [clock- and watchmaking]; atomic clocks; badges of precious metal; barrels [clock- and watchmaking]; beads for making jewellery; boxes of precious metal; bracelets [jewellery]; brooches [jewellery]; busts of precious metal; cabochons for making jewellery; chains [jewellery]; charms [jewellery] / trinkets [jewellery]; chronographs [watches]; chronometers; chronoscopes; clasps for jewellery; clock hands; clock cases; clocks; clocks and watches, electric; clockworks; cloisonné jewellery coins; control clocks [master clocks]; copper tokens; cuff links; dials [clock- and watchmaking]; diamonds; earrings; figurines [statuettes] of precious metal; gold, unwrought or beaten; gold thread [jewellery]; hat ornaments of precious metal; ingots of precious metals; Iridium; ivory jewellery; jet, unwrought or semi-wrought; jewellery of yellow amber; jewellery; jewellery boxes; jewellery findings; jewellery rolls; key rings [trinkets or fobs] / key chains [trinkets or fobs]; lockets [jewellery]; medals; movements for clocks and watches; necklaces [jewellery]; olivine [gems] / peridot; ornamental pins; ornaments of jet; ornaments [jewellery]; osmium; palladium; paste jewellery [costume jewellery]; pearls made of ambroid [pressed amber]; pearls [jewellery]; pendulums [clock- and watchmaking]; pins [jewellery]; platinum [metal]; precious metals, unwrought or semi-wrought; presentation boxes for watches; presentation boxes for jewellery; rhodium; rings [jewellery]; ruthenium; semi-precious stones; shoe ornaments of precious metal; silver thread [jewellery]; silver, unwrought or beaten; spinel [precious stones]; split rings of precious metal for keys; spun silver [silver wire]; statues of precious metal; stopwatches; sundials; threads of precious metal [jewellery] / wire of precious metal [jewellery]; tie clips; tie pins; wall clocks; watch straps; watch chains; watch springs; watch glasses / watch crystals; watch cases [parts of watches]; watch hands; watches; works of art of precious metal; wristwatches.

Class 16: Paper and cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging; printers' type; printing blocks; 3D wall art prints; absorbent sheets of paper or plastic for foodstuff packaging; address stamps; address plates for addressing machines; addressing machines; adhesive tape dispensers [office requisites]; adhesive tapes for stationery or household purposes; adhesive bands for stationery or household purposes; adhesives [glues] for stationery or household purposes; advertisement boards of paper or cardboard; albums / scrapbooks; almanacs; announcement cards [stationery]; aquarelles / watercolours [paintings]; architects' models; arithmetical tables / calculating tables; artists' watercolour saucers; atlases; bags [envelopes, pouches] of paper or plastics, for packaging; bags for microwave cooking; balls for ball-point pens; banknotes; bibs of paper; binding strips [bookbinding]; biological samples for use in microscopy [teaching materials]; blackboards; blotters; blueprints / plans; bookbinding apparatus and machines [office equipment]; bookbindings; bookends; booklets; bookmarkers; books; bottle envelopes of cardboard or paper; bottle wrappers of cardboard or paper; boxes of cardboard or paper; cabinets for stationery [office requisites]; calendars; canvas for painting; canvas wall prints; carbon paper; cardboard tubes; cards / charts; cases for stamps [seals]; catalogues; chalk boards; chalk board labels; chalk for lithography; chalk holders; charcoal pencils; chart pointers, non-electronic; chromolithographs [chromos]; cigar bands; clipboards; clips for offices / staples for offices; cloth for bookbinding; coasters of paper; comic books; compasses for drawing; composing frames [printing]; composing sticks; conical paper bags; copying paper [stationery]; cords for bookbinding; correcting fluids [office requisites]; correcting ink [heliography]; correcting tapes [office requisites]; covers [stationery] / wrappers [stationery]; cream containers of paper; credit card imprinters, non-electric; desk mats; diagrams; document files [stationery]; document laminators for office use; document holders [stationery]; drawer liners of paper, perfumed or not; drawing pads; drawing pins / thumbtacks; drawing boards; drawing materials; drawing instruments; drawing sets; drawing pens; drawing rulers; drawing squares; drawing T-squares; duplicators; elastic bands for offices; electrocardiograph paper; electrotypes; embroidery designs [patterns]; engraving plates; engravings; envelope sealing machines, for offices; envelopes [stationery]; erasing products; erasing shields; etching needles; etchings; fabrics for bookbinding; face towels of paper; figurines [statuettes] of papier mâché; files [office requisites]; filter paper; filtering materials [paper]; finger-stalls [office requisites]; flags of paper; flower-pot covers of paper / covers of paper for flower pots; flyers; folders for papers / jackets for papers; folders [stationery]; forms, printed; fountain pens; franking machines for office use / postage meters for office use; French curves; galley racks [printing]; garbage bags of paper or of plastics; geographical maps; glue for stationery or household purposes / pastes for stationery or household purposes; gluten [glue] for stationery or household purposes; graining combs; graphic prints; graphic reproductions; graphic representations; greeting cards; gummed tape [stationery]; gummed cloth for stationery purposes; gums [adhesives] for stationery or household purposes; hand labelling appliances; hand-rests for painters; handkerchiefs of paper; handwriting specimens for copying; hanging signs; hat boxes of cardboard; hectographs; histological sections for teaching purposes; holders for stamps [seals]; holders for checkbooks [cheque books]; house painters' rollers; humidity control sheets of paper or plastic for foodstuff packaging; index cards [stationery]; indexes; Indian inks; ink; ink sticks; ink stones [ink reservoirs]; inking pads; inking ribbons; inking sheets for duplicators; inking sheets for document reproducing machines; inking ribbons for computer printers; inkstands; inkwells; isinglass for stationery or household purposes; labels, not of textile; ledgers [books]; letter racks; letter trays; lithographic works of art; lithographic stones; lithographs; loose-leaf binders; magazines [periodicals]; manifolds [stationery]; manuals [handbooks] / handbooks [manuals]; marking chalk; marking pens [stationery]; mats for beer glasses; mimeograph apparatus and machines; modelling clay; modelling wax, not for dental purposes; modelling materials; modelling paste; moisteners [office requisites]; moisteners for gummed surfaces [office requisites]; money clips; moulds for modelling clays [artists' materials]; apparatus for mounting photographs; musical greeting cards; newsletters; newspapers; nibs; nibs of gold; note books; numbering apparatus; numbers [type]; obliterating stamps; office perforators; office requisites, except furniture; oleographs; packaging material made of starches; packing [cushioning, stuffing] materials of paper or cardboard; pads [stationery]; page holders; paint boxes [articles for use in school]; paint trays; painters' brushes; painters' easels; paintings [pictures], framed or unframed; palettes for painters; pamphlets; pantographs [drawing instruments]; paper for recording machines; paper sheets [stationery]; paper clasps; luminous paper; paper tapes and cards for the recordal of computer programmes; paper for radiograms; paper ribbons; paper shredders for office use; paper knives [cutters] [office requisites]; paper coffee filters; paper bows; paper-clips; paperweights; papier mâché; parchment paper; passport holders; pastels [crayons]; pen clips; pen cases / boxes for pens; pen wipers; pencil sharpening machines, electric or non-electric; pencil leads; pencil holders; pencil lead holders; pencil sharpeners, electric or non-electric; pencils; penholders; pens [office requisites]; perforated cards for Jacquard looms; periodicals; photo-engravings; photograph stands; photograph albums; pictures; placards of paper or cardboard; place mats of paper; plastic film for wrapping; plastic bubble packs for wrapping or packaging; plastic cling film, extensible, for palletization; plastics for modelling; polymer modelling clay; portraits; postage stamps; postcards; posters; printed timetables; printed matter; printed publications; printed coupons; printers' blankets, not of textile; printers' reglets; printing type; printing sets, portable [office requisites]; prints [engravings]; prospectuses; punches [office requisites]; rice paper; rollers for typewriters; rosaries / chaplets; rubber erasers; school supplies [stationery]; scrapers [erasers] for offices; sealing stamps; sealing wax; sealing machines for offices; sealing compounds for stationery purposes; sealing wafers; seals [stamps]; self-adhesive tapes for stationery or household purposes; sewing patterns; sheets of reclaimed cellulose for wrapping; shields [paper seals]; signboards of paper or cardboard; silver paper; slate pencils; song books; spools for inking ribbons; spray chalk; square rulers; stamp pads; stamp stands; stamps [seals]; stands for pens and pencils; stapling presses [office requisites]; starch paste [adhesive] for stationery or household purposes; steatite [tailor's chalk]; steel letters; steel pens; stencil cases; stencil plates; stencils [stationery]; stencils; stickers [stationery]; stuffing of paper or cardboard; table linen of paper; table napkins of paper; tablecloths of paper; tablemats of paper; tags for index cards; tailors' chalk; teaching materials [except apparatus]; terrestrial globes; tickets; tissues of paper for removing make-up; toilet paper / hygienic paper; towels of paper; tracing patterns; tracing paper; tracing cloth; tracing needles for drawing purposes; trading cards other than for games; transfers [decalcomanias] / decalcomanias; transparencies [stationery]; trays for sorting and counting money; type [numerals and letters] / letters [type]; typewriter ribbons; typewriter keys; typewriters, electric or non-electric; vegetable saver bags; vignetting apparatus; viscose sheets for wrapping; paper wall buntings; wall growth charts; wall stickers; waxed paper; wood pulp board [stationery]; wood pulp paper; wrapping paper / packing paper; wristbands for the retention of writing instruments; writing slates; writing or drawing books; writing chalk; writing materials; writing paper; writing cases [stationery]; writing cases [sets]; writing brushes; writing instruments; writing board erasers; Xuan paper for Chinese painting and calligraphy.

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; attaché cases; bags for climbers; bags for campers; bags [envelopes, pouches] of leather, for packaging; bags for sports; bags; beach bags; bits for animals [harness]; blinkers [harness] / blinders [harness]; boxes of leather or leatherboard; boxes of vulcanised fibre; bridles [harness]; bridoons; briefcases; business card cases; butts [parts of hides]; card cases [notecases]; cases of leather or leatherboard; casings, of leather, for springs / casings, of leather, for plate springs; cat o' nine tails; cattle skins; chain mesh purses; chamois leather, other than for cleaning purposes / skins of chamois, other than for cleaning purposes; chin straps, of leather; collars for animals; covers for animals / clothing for pets; covers for horse saddles; credit card cases [wallets]; curried skins; fastenings for saddles; frames for umbrellas or parasols; fur / fur-skins; furniture coverings of leather; game bags [hunting accessories]; garment bags for travel; girths of leather; goldbeaters' skin; gut for making sausages; halters / head-stalls; handbag frames; handbags; harness straps / harness traces; harness for animals; harness fittings; hat boxes of leather; haversacks; horse collars; horse blankets; horseshoes; key cases; kid; knee-pads for horses; leather leashes / leather leads; leather laces; leather straps / leather thongs; leather, unworked or semi-worked; leather twist / leather thread; leatherboard; luggage tags; moleskin [imitation of leather]; mountaineering sticks / alpenstocks; music cases; muzzles; net bags for shopping; nose bags [feed bags]; pads for horse saddles; patio umbrellas; pocket wallets; pouch baby carriers; purses; randsels [Japanese school satchels]; reins; riding saddles; rucksacks; saddle trees; saddlecloths for horses; school bags / school satchels; shopping bags; shoulder belts [straps] of leather / bandoliers; sling bags for carrying infants; slings for carrying infants; stirrup leathers; parts of rubber for stirrups; stirrups; straps for soldiers' equipment; straps of leather [saddlery]; straps for skates; suitcase handles; suitcases; tool bags, empty; traces [harness]; travelling bags; travelling sets [leatherware]; trimmings of leather for furniture / leather trimmings for furniture; trunks [luggage]; umbrella rings; umbrella or parasol ribs; umbrella sticks; umbrella covers; umbrella handles; valises; valves of leather; vanity cases, not fitted; walking stick seats; walking stick handles; wheeled shopping bags.

Class 25: Clothing, footwear, headgear; albs; ankle boots; aprons [clothing]; ascots; babies' pants [underwear]; bandanas [neckerchiefs]; bath sandals; bath slippers; bath robes; bathing caps; bathing trunks; bathing suits; beach clothes; beach shoes; belts [clothing]; berets; bibs, not of paper; blazers; blouses; boas [necklets]; bodices [lingerie]; boot uppers; boots; boots for sports; boxer shorts; brassieres; breeches for wear; camisoles; cap peaks; caps [headwear]; chasubles; clothing for gymnastics; clothing of imitations of leather; clothing of leather; coats; collars [clothing]; combinations [clothing]; corselets; corsets [underclothing]; cuffs / wristbands [clothing]; cyclists' clothing; detachable collars; dress shields; dresses; dressing gowns; ear muffs [clothing]; esparto shoes or sandals; fishing vests; fittings of metal for footwear; football shoes / football boots; footmuffs, not electrically heated; footwear uppers; fur stoles; furs [clothing]; gabardines [clothing]; galoshes; garters; girdles; gloves [clothing]; gymnastic shoes; half-boots; hat frames [skeletons]; hats; headbands [clothing]; headgear for wear; heelpieces for stockings; heelpieces for footwear; heels; hoods [clothing]; hooded sweatshirts; hosiery; jackets [clothing]; jeans; jerseys [clothing]; jumper dresses / pinafore dresses; knickers / panties; knitwear [clothing]; lace boots; layettes [clothing]; leg warmers; leggings [trousers]; liveries; maniples; mantillas; masquerade costumes; maternity dresses; mitres [hats]; mittens; money belts [clothing]; motorists' clothing; muffs [clothing]; neck scarves [mufflers]; neckties; non-slipping devices for footwear; outerclothing; overalls / smocks; overcoats / topcoats; paper clothing; paper hats [clothing]; parkas; pelerines; pelisses; petticoats; pocket squares; pockets for clothing; polo shirts; ponchos; pyjamas; ready-made clothing; ready-made linings [parts of clothing]; sandals; saris; sarongs; sashes for wear; scarves; shawls; shirt fronts; shirt yokes; shirts; shoes; short-sleeve shirts; shower caps; ski boots; ski gloves; skirts; skorts; skull caps; sleep masks; slippers; slips [undergarments]; sock suspenders; socks; inner soles; soles for footwear; spats / gaiters; sports jerseys; sports shoes; sports singlets; stocking suspenders; stockings; studs for football boots; stuff jackets [clothing]; suits; suspenders / braces for clothing; sweat-absorbent stockings; sweat-absorbent underwear; sweat-absorbent socks; sweaters / jumpers [pullovers] / pullovers; teddies [undergarments]; tee-shirts; tights; tips for footwear; togas; top hats; trouser straps / gaiter straps; trousers; turbans; underpants; underwear / underclothing; uniforms; valenki [felted boots]; veils [clothing]; visors [headwear]; waistcoats / vests; waterproof clothing; welts for footwear; wet suits for water-skiing; wimples; wooden shoes.

The contested goods belong to Classes 14, 16, 18 and 25. The full list of the contested goods (which is not reproduced here due to its length) can be found at https://euipo.europa.eu/eSearch/#details/trademarks/017633611.

Some of the contested goods are identical or similar to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to higher than average, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

For instance, in relation to articles of jewellery, gemstones and precious metals (Class 14), in its decision of 09/12/2010, R 900/2010-1, Leo Marco (fig.) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

c) The signs

GEORGE	AVENUE GEORGE CINQ PARIS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

Being word marks, none of the signs has any element which can be considered to be more dominant than other elements.

The earlier mark consists of one word, ‘GEORGE’. It is an English male first name which will be perceived as such also by the non-English speaking part of the public due to its close correspondence with the national equivalent given names and it is also commonly used throughout the European Union territory. Moreover, there are many celebrities, such as George Clooney, or politicians, such as former US president George W. Bush, who are famous and very well-known around the world, including throughout the EU, and therefore, this word will be recognised by all consumers as being a male first name. As this word has no meaning in connection with the relevant goods it is distinctive to a normal degree.

The contested sign ‘AVENUE GEORGE CINQ PARIS’ is also a word mark. The first element, ‘AVENUE’, will be understood by the relevant public as indicating ‘a wide, straight road, especially one with trees on either side’ (information extracted from Collins dictionary on 16/04/2019 at https://www.collinsdictionary.com/dictionary/english/avenue) for a number of reasons. Firstly the term exists as such in French and English. Secondly it is very close to the equivalent words in the official languages of several EU countries such as for example Bulgaria, Latvia, Spain and Portugal. Thirdly it is a basic English word which will be understood in all Member States. Contrary to the opponent’s submission, this verbal element is distinctive to a normal degree, since it has not been shown to be a common term in relation to the goods at issue. The element ‘GEORGE’ will be seen, as explained above, as a male first name while the subsequent element ‘CINQ’ will be understood by part of the public, especially consumers in France, Luxembourg and Belgium (for whom the term exists as such), but also in Italy, Spain and Portugal (due to the closeness of the corresponding terms) as the numeral five. The juxtaposition of the terms GEORGE CINQ’ will indicate, for a significant part of the public, comprising at least of, but not necessarily being limited to, French, Italian, Spanish and Portuguese speaking consumers as referring to a monarch, being the fifth of a series, bearing the name ‘GEORGE’. This expression has no meaning in connection with the relevant goods and is therefore distinctive. For the part of the public who does not know the basic French word ‘CINQ’, the term is equally distinctive. Finally the term ‘PARIS’ will be universally associated with the capital and most populous city of France. This element will be perceived as indicating the origin of the products in question and is therefore non distinctive. The Opposition Division takes the view that the contested sign will be understood overall as an address of a street located in Paris. As such it has a normal degree of distinctiveness because its meaning is not directly related to the relevant goods in a clear way that could impair its distinctiveness.

Visually and aurally, the signs coincide in the letters/sound ‘GEORGE’, which constitutes the entirety of the earlier mark and one element of the contested mark, which, however, is located in the middle of the sign. It should 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.

The signs differ in all of the remaining elements of the contested sign, namely the first word ‘AVENUE’ and the ending, ‘CINQ PARIS’, none of which has a counterpart in the earlier sign.

Accordingly, the signs are visually and aurally similar to at best a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the earlier mark will be understood as a male first name while the contested sign indicates an address in Paris, the signs are conceptually dissimilar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade mark has a reputation in all the countries throughout the European Union in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted, in particular, the following evidence:

 Affidavit by Mr Graeme Morrison, a senior lawyer of the Asda Stores. It is dated 27 May 2016 and the original was filed in the Opposition proceedings No 2 612 391. Mr Morrison claims that the brand ‘George’ sales in the UK amounted in 2014 to greater than 1.6 billion GBP. Furthermore he claims, that the GEORGE website, from which goods can be bought, include furnishings, lighting, mirrors, cutlery, cups and mugs, coffee machines, bedding, blankets and furniture. The turnover in GBP varied between 2010 and 2016. For example the turnover in 2011 stood at 73 million GBP, and in 2014 stood at 162 million GBP. Mr Morrison also claims that the 364 very large supermarkets sell GEORGE products, and at least 34 Asda Living Stores sell GEORGE products. The claims of Mr Morrison are backed up by print screens from the website of GEORGE, pictures from the GEORGE section in stores and supermarkets where the products are sold, and also a picture of a large lorry bearing the trade mark of GEORGE on the sides.

 Affidavit by Mr Anthony Brierley, a partner in the law firm representing the opponent. It is dated 29 October 2018. Mr Brierley claims that the mark GEORGE is well known in the UK and elsewhere. To prove this he quoted a large number of press articles, mainly from UK sources. The examples include screenshots from the BBC website, The Daily Telegraph, Drapers – a specialist retail magazine and retail week dated in 2015, an article from the Guardian dated in 2007 discussing the GEORGE brand. In an article published in ‘Consumer Superbrands Volume VII’ in July 2005 it was reported that 56% of the UK population have bought clothing or footwear in supermarkets, of those, 33% have bought from GEORGE. It was also reported that GEORGE is the biggest UK fashion retailer by volume and fourth by value. In an article published in the Telegraph in 2007, it was reported that, as from February 2008, a whole range of clothing will be sold online to UK shoppers.

Thus, although the affidavits emanate from sources which are very closely linked to the opponent, these are also backed up by very solid evidence coming from independent sources, such as, the newspaper articles and the Consumer Superbrands Magazine.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in the United Kingdom for some of the goods for which the opponent has claimed reputation.

The evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to the retail of clothing and footwear, whereas there is no or little reference to the remaining goods and services. This is clear, for example, from the affidavit, press clips and advertisements. Although screenshots from the Opponent’s website were provided, these were not corroborated with further evidence. Therefore the Opposition Division cannot ascertain with certainty that the mark is also reputed for goods other than clothes and footwear.

It is sufficiently clear to the Opposition Division that the mark is a household name in the UK in connection with clothes, and is known to be amongst the top ‘high street fashion brands’ as appears clear from the articles submitted. The screenshots from the website provided by the opponent together with the amount of turnover achieved under the sign GEORGE, together with press clips from highly regarded news agencies and outlets are very compelling pieces of evidence. However since the evidence applies to the UK only, the Opposition Division takes the view that it was not established that the earlier trade mark has a reputation in other countries of the European Union.

Therefore the Opposition Division will consider that the opponent has a reputation for the following goods:

Class 25: Clothing, footwear.

However, for the remaining goods and services for which reputation was not proven, 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 have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal in relation to the remaining goods and services.

e) 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. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C 342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C 251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C 39/97, ‘Canon’, EU:C:1998:442, § 17).

The relevant public is both the public at large and the professional public whose level of attention may vary from average to higher than average.

The earlier mark has a reputation and enjoys an enhanced scope of protection with respect to clothing and footwear in Class 25. However, for the remaining goods and services, the earlier mark has an average degree of distinctiveness.

The contested goods in Classes 14, 16, 18 and 25 have been assumed to be identical to the opponent’s goods in the same Classes.

In the present case, it must be remembered that the signs were found to be visually and aurally similar at best to a low degree and that conceptually the signs are different. Although they coincide in the sequence of letters ‘GEORGE’, the three additional elements placed before and after it in the contested sign substantially changes the perception of this element, contrary to the opponent’s assertions. In this context, it is also noted that the existence of conceptual differences between signs can counteract the visual and phonetic similarities between them, when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping it immediately (22/06/2004, T-185/02, Picaro, EU:T:2004:189). As mentioned above, the consumers will attribute a clear and precise meaning to the contested sign ‘AVENUE GEORGE CINQ PARIS’ and a different meaning to the single element 'GEORGE' of earlier mark, which will enable them to clearly distinguish the marks.

Therefore, on the basis of all the foregoing, the sole coincidence between the signs, in the sequence of letters ‘GEORGE’, does not amount to a sufficient similarity between the signs to lead to a likelihood of confusion. The low degree of similarity between the signs cannot be offset by the (assumed) identity of the goods, according to the interdependence principle above, as apart from being visually and aurally similar only to a low degree, the signs are conceptually dissimilar which will help the relevant public to distinguish between the marks even more. The relevant public will simply not perceive the goods bearing the sign 'GEORGE' and the sign ‘AVENUE GEORGE CINQ PARIS’ as originating from the same undertaking or from economically-linked undertakings.

Therefore, the differences between the signs are sufficiently strong to avoid a likelihood of confusion, even taking into account the enhanced distinctiveness of the earlier mark for clothing and footwear in Class 25.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition, as based on this ground, must be rejected.

The opponent has also based its opposition on the following earlier trade mark:

- European Union trade mark registration No 16 202 152 for the figurative mark

This right is even less similar to the contested mark. This is because it contains a further figurative element, such as the slight stylisation of the verbal element ‘GEORGE’ followed by a full stop, which despite not being very distinctive, are not present in the contested sign. Moreover, it covers the same scope of goods and services. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to this earlier right either.

Consequently, the opposition fails insofar as it is based on Article 8(1)(b) EUTMR.

The examination of the opposition will now proceed further based on the other ground claimed by the opponent, namely Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registration No 16 202 145 for the word mark ‘GEORGE’, for which the opponent claimed reputation in all the countries throughout the European Union.

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

The evidence submitted by the opponent to prove the reputation and the highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed in the UK and the signs are similar to some extent. 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.

In the present case, although the signs may be similar to some extent, this does not mean that the relevant public is likely to establish a link between them.

As mentioned before, the signs are visually and aurally similar only to a low degree. Although they coincide in the sequence of letters ‘GEORGE’, the additional elements placed in the contested sign before and after it alter the semantic content of this element, thereby substantially changing its perception by the relevant public. Due to the addition of the words ‘AVENUE’, ‘CINQ’ and ‘PARIS’ in the contested sign, the relevant public will not be likely to mentally dissect the element ‘GEORGE’ in the contested sign and connect it with the earlier mark, but will perceive the contested sign as a whole without analysing its various details as referring to a street in Paris, therefore not making a link with the earlier mark, even taking into account its reputation.

Therefore, the similarities between the contested trade mark and the earlier trade mark are unlikely to bring the earlier trade mark to the mind of the average consumer. This is also true for the other earlier trade mark invoked by the opponent in the context of Article 8 (5) EUTMR, namely European Union trade mark registration No 16 202 152 for the figurative mark because this mark is even less similar to the contested sign due to its further figurative element. As the relevant consumer will not have either of the earlier signs brought to mind when viewing the contested sign, as explained above, this results in the fact that the earlier mark cannot suffer any injury as a result of the use of the subsequent mark. Therefore, this excludes the possibility that the use 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, taking into account and weighing up all the relevant factors of the present case, 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.

Since the opposition is not successful on the basis of the ground of Article 8(5) EUTMR, it is necessary to examine the other ground of the opposition, namely Article 8(4) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

Finally the opposition is based on the earlier non-registered trade marks used in the course of trade in all countries of the European Union for the word mark ‘GEORGE’ and the figurative mark .

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) The right under the applicable law

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

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of sign used in the course of trade invoked by the opponent, namely the non-registered trade marks for the word mark ‘GEORGE’ and the figurative mark . The opponent did not submit sufficient information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

The Opposition Division notes that it is manifestly insufficient in that regard to merely submit the ‘Table on National Rights that constitute “earlier rights” in the sense of Article 8(4) EUTMR’ taken out from the Office’s Guidelines Concerning Opposition under Article 8(4) EUTMR. It is clearly stated in there that the contents of the table are largely based on information and feedback from trade mark offices and user associations in 2013/2014 and that is not a legal source and is made available for information purposes only. The opponent is under an obligation to submit the relevant national laws on which it relies in the original language, and where it is not the language of proceedings, also a translation of same and, where needed, copies of case law to demonstrate the application of the relevant laws in the jurisdictions at issue. The opponent has not done this in the present case and therefore, the Opposition Division cannot determine the validity of the earlier rights claimed under national law or the scope of their protection. As the conditions under Article 8(4) EUTMR are cumulative, the failure of the opponent to fulfil this condition results in the rejection of the opposition under this ground.

Consequently, the opposition is not well founded under Article 8(4) EUTMR.

Conclusion

The opposition must be rejected in its entirety.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 120 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Article 18(1)(c) EUTMIR (former Rule 94(7)(d) EUTMIR, in force before 01/10/2017).

The Opposition Division

Nicole CLARKE

Riccardo RAPONI

Michele M. BENEDETTI-ALOISI

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.