OPPOSITION No B 3 057 277

Almacenes Prieto, S.A., C/ José Prieto Balsa n° 1 (Polígono Industrial Sete Pontes de Vilalba), 27800 Vilalba (Lugo), Spain (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Frederik Sturm, Greifswalder Str. 219, 10405 Berlin, Germany (applicant), represented by v. Nieding Ehrlinger Geipel Ingendaay PartGmbB, Kurfürstendamm 66, 10707 Berlin, Germany (professional representative).

On 26/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 277 is partially upheld, namely for the following contested goods and services:

Class 25: Clothing; headgear; footwear; evening wear; dress pants; suits; work clothes; bathing drawers; infant wear; girls’ clothing; leotards; corduroy trousers; ladies’ clothing; womens’ outerclothing; fleeces; belts [clothing]; swimming costumes; children’s wear; blouses; blazers; casualwear; shirts; handwarmers [clothing]; gloves [clothing]; scarves; jackets [clothing]; trousers; men’s suits; outerclothing for men; heavy jackets; denims [clothing]; denim jeans; leather clothing; sport coats; socks; gym suits; knitwear [clothing]; tee-shirts; sweat shirts; sweat jackets.

Class 28: Sporting articles and equipment; hunting and fishing equipment; swimming equipment; indoor fitness apparatus; exercise bands; body protectors for sports use; body training apparatus [exercise].

Class 35: Retail services in relation to footwear.

2. European Union trade mark application No 17 875 305 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all of the goods and services of European Union trade mark application No 17 875 305 for the word mark ‘ARYS’, namely against all the goods and services in Classes 24, 25, 28, 35 and 40. The opposition is based on Spanish trade mark registration No 1 668 721 for the word mark ‘‘ARIS’’. 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 proof of use of the opponent’s earlier mark as a part of his arguments, submitted on 17/01/2019. As from 01/10/2017 such request must be done by way of a separate document as required by Article 10(1) EUTMDR. The request for proof of use must be separate from other submissions; it could be submitted simultaneously with other submissions, however it must be presented separately (on a separate document). Consequently, a proof of use request that is merged into observations is not accepted.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 and services

The goods on which the opposition is based are the following:

Class 25: Footwear [excluding orthopaedic footwear].

The contested goods and services are the following:

Class 24: Textile goods, and substitutes for textile goods; bath towels; printed textile labels; fabrics.

Class 25: Clothing; headgear; footwear; evening wear; dress pants; suits; work clothes; bathing drawers; infant wear; girls’ clothing; leotards; corduroy trousers; ladies’ clothing; womens’ outerclothing; fleeces; belts [clothing]; swimming costumes; children’s wear; blouses; blazers; casualwear; shirts; handwarmers [clothing]; gloves [clothing]; scarves; jackets [clothing]; trousers; men’s suits; outerclothing for men; heavy jackets; denims [clothing]; denim jeans; leather clothing; sport coats; socks; gym suits; knitwear [clothing]; tee-shirts; sweat shirts; sweat jackets.

Class 28: Sporting articles and equipment; hunting and fishing equipment; swimming equipment; indoor fitness apparatus; exercise bands; body protectors for sports use; body training apparatus [exercise].

Class 35: Presentation of goods on communication media, for retail purposes; procurement services for others (purchasing goods and services for other businesses); advertising; organisation of events for commercial and advertising purposes; business management of wholesale and retail outlets; retail store services in the field of clothing; retail services in relation to bags; retail services in relation to sporting equipment; retail services in relation to dietary supplements; retail services in relation to sporting articles; retail services relating to sporting goods; retail services in relation to clothing; retail services in relation to footwear; retail services in relation to headgear; retail services in relation to clothing accessories; online retail store services relating to clothing.

Class 40: Custom tailoring; treatment and producing of textiles and textile goods.

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 24

The contested textile goods, and substitutes for textile goods; bath towels; printed textile labels; fabrics are textiles or textile goods that are used for interior decoration or drying off (such as bath towels). They are dissimilar to the opponent’s footwear [excluding orthopaedic footwear] in Class 25. Even if some textile goods in Class 24 and footwear in Class 25 share something in common, that is to say, that they are made of textile material, this is not enough to justify a finding of similarity. Goods are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). The goods serve completely different purposes: footwear is meant to be worn by people, for protection and/or fashion, whereas textile goods and fabrics are mainly for household purposes and interior decoration or as raw material, to process it into other goods. Therefore, their method of use is also different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Consequently, they are neither complementary nor in competition.

Contested goods in Class 25

The contested footwear is identically contained in both lists of goods (including synonyms).

The contested headgear; clothing; evening wear; dress pants; suits; work clothes; bathing drawers; infant wear; girls’ clothing; leotards; corduroy trousers; ladies’ clothing; womens’ outerclothing; fleeces; belts [clothing]; swimming costumes; children’s wear; blouses; blazers; casualwear; shirts; handwarmers [clothing]; gloves [clothing]; scarves; jackets [clothing]; trousers; men’s suits; outerclothing for men; heavy jackets; denims [clothing]; denim jeans; leather clothing; sport coats; socks; gym suits; knitwear [clothing]; tee-shirts; sweat shirts; sweat jackets are headgear and various types of clothing. All these goods serve the same purpose as the opponent’s footwear [excluding orthopaedic footwear], as they are all used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets and target the same public. Consumers looking for clothing and headgear will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all these goods. Therefore, the goods are similar.

Contested goods in Class 28

The opponent’s footwear [excluding orthopaedic footwear] include sports footwear and footwear for hunting and fishing, which are items of apparel designed specifically to be worn when doing sport, hunting or fishing. The purpose and nature of these goods are different from those of the contested sporting articles and equipment; hunting and fishing equipment; indoor fitness apparatus; exercise bands; body protectors for sports use; body training apparatus [exercise], which are articles and apparatus for all types of sports and gymnastics, such as weights, halters, tennis rackets, balls and fitness apparatus. However, undertakings that manufacture sporting articles and hunting and fishing equipment may also manufacture footwear for sports, hunting and fishing. In this case the distribution channels can be the same. Therefore, the opponent’s footwear [excluding orthopaedic footwear] in Class 25 and the aforementioned contested goods are at least similar to a low degree.

The contested swimming equipment includes swimming equipment used for feet, such as flippers for swimming. They are considered similar at least to a low degree to the opponent’s footwear [excluding orthopaedic footwear] in Class 25, which includes shoes for use in the water (e.g. water skin shoes), as they have a similar nature and they usually coincide in method of use and relevant public.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services in relation to footwear are similar to a low degree to the opponent’s footwear [excluding orthopaedic footwear] in Class 25.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled for some of the contested services, since the goods that are covered by the contested retail store services in the field of clothing; retail services in relation to bags; retail services in relation to sporting equipment; retail services in relation to dietary supplements; retail services in relation to sporting articles; retail services relating to sporting goods; retail services in relation to clothing; retail services in relation to headgear; retail services in relation to clothing accessories; online retail store services relating to clothing are not identical to the opponent’s footwear [excluding orthopaedic footwear] in Class 25. Therefore, they are dissimilar.

As regards the remaining contested presentation of goods on communication media, for retail purposes; procurement services for others (purchasing goods and services for other businesses); advertising; organisation of events for commercial and advertising purposes; business management of wholesale and retail outlets, these services are mainly rendered by people or organisations, in principal, with the object of helping in the running or managing a commercial undertaking, or helping in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services. These services are provided by specialist companies, which study their clients’ needs, provide all the necessary information and advice for marketing the clients’ goods and services.

These services have nothing in common with the opponent’s footwear [excluding orthopaedic footwear] in Class 25, as they differ in natures, purposes, methods of use, distribution channels and providers. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested services in Class 40

By their nature, goods are generally dissimilar to services. They can, however, be complementary. Services can also have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between goods and services can be found.

However, the contested custom tailoring is not sufficiently related to the opponent’s footwear [excluding orthopaedic footwear] in Class 25. While it has been traditionally an option for some types of clothing (such as suits and dresses) to have them customised and tailored to fit before buying them, this is not typically the case with footwear. The goods and services have different natures, purposes and methods of use. Furthermore, it is not common that the manufacturers of footwear provide tailoring services. These goods and services differ in distribution channels and they are neither complementary nor in competition, since the complementarity factor only applies to the use of goods and not to their production process. Therefore, they are dissimilar.

As for the contested treatment and producing of textiles and textile goods, they concern the treatment and producing of unfinished textiles and textile goods, and have no relation to the opponent’s footwear [excluding orthopaedic footwear] in Class 25 (the contested services do not even concern the treatment and producing of the opponent’s goods). These goods and services have nothing in common, as they differ in natures, purposes, method of uses, distribution channels and providers. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

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 goods and services found to be identical or similar to varying degrees are directed at the public at large.

The degree of attention may vary from average (e.g. clothing) to high (e.g. hunting equipment), depending on the specialised nature of the goods and services, the frequency of purchase and their price.

3. The signs

‘ARIS’	ARYS
Earlier trade mark	Contested sign

The relevant territory is Spain.

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

The earlier mark is the word mark ‘‘ARIS’’. In its observations, the applicant argues that the verbal element ‘‘ARIS’’ has a below-average degree of distinctiveness because it is a very common and not very distinctive name. However, no further evidence had been submitted to support his claim. Even if the name might exist in Spain, there is no supportive evidence of this being a common name used in the relevant territory. The vast majority of relevant public will not even know of ‘‘ARIS’’ being a name, and hence they will not associate it with any meaning, but rather perceive it as an inventive term. The verbal element ‘ARYS’ of the contested sign also has no meaning. Therefore, the verbal elements of both signs are considered distinctive.

As for the quotation marks of the earlier mark, their function is primarily for the marking of where a speech or a quotation begins and ends. They are also sometimes used around titles of books, plays, or songs. Quotations marks are generally perceived as a reinforcement of the verbal element(s) appearing between these marks. They do not convey any meaning on their own and do not add any distinctiveness to the sign.

Visually, both signs are four-letter marks. They coincide in the first two and the last letters, ‘AR*S’. They only differ in their third letters, ‘I’ in the earlier mark and ‘Y’ in the contested sign, which might be less obvious to the consumers as they are placed in between other letters. The additional quotation marks of the earlier mark have a limited impact, if any, on the assessment due to the reasons mentioned above.

Therefore, they are considered visually highly similar.

Aurally, the quotation marks of the earlier mark will not be pronounced. Furthermore, the difference of the letters ‘I’ and ‘Y’ will not be aurally noticed. Consequently, the signs, ‘‘ARIS’’ and ‘ARYS’, are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

5. Global assessment, other arguments and conclusion

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.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The relevant public is the public at large. The degree of attention varies between average and high depending on the particular goods and services. The earlier mark enjoys a normal degree of inherent distinctiveness.

The signs are visually highly similar on the account that they have the same length and coincide in the majority of their letters, ‘AR*S’. The difference in their third letters, ‘I’ versus ‘Y’, is not sufficient to counteract their clear similarities and to eliminate a likelihood of confusion as they are placed in between letters and might therefore be less perceptible to the consumer. As for the additional quotation marks in the earlier mark, they will only reinforce the verbal element of the sign and do not contribute to any noticeable or distinctive difference between the signs. In particular, the signs are aurally identical as the differing letters ‘I’ and ‘Y’ of the signs will be pronounced identically by the relevant public. The conceptual aspect of the comparison remains neutral as neither of the signs conveys any concept. Therefore, there are no differentiating concepts that would enable the relevant public to distinguish between the signs.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The applicant argues that the signs at issue are very short and that the difference is more significant than in the case of longer comparative signs. While this is true, in principle, a short sign has, in principle, no more than three letters. Although the signs at issue, containing four letters, might be characterised as relatively short, their differing third letters are not sufficient to counteract their similarities. Taking into consideration that the average consumer normally perceives a sign as a whole and does not proceed to analyse its various details, the small difference of the signs’ third letter is not sufficient to exclude a finding of visual and aural similarity, particularly when the signs have the same beginnings and endings, namely ‘AR*S’. Moreover, since the difference is in the middle, it might be less obvious for the consumer. Therefore, the Opposition Division must set the applicant’s arguments aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration, even taking into account that the relevant public has a higher degree of attentiveness for some goods, due to the striking similarities between the signs, in particular, in the aural aspect. The same reasoning applies fully for the goods and services that are found similar only to a low degree.

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

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Renata COTTRELL

Tu Nhi VAN

Peter QUAY

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.