OPPOSITION No B 3 061 065

BOP LLC, Attn: Trademarks 1245 East Washington, Suite 300, 53703 Madison, United States of America (opponent), represented by Cooley (UK) LLP, Dashwood 69 Old Broad Street, EC2M 1QS London, United Kingdom (professional representative)

a g a i n s t

OSS GmbH & Co KG, Industriestr. 15, 64807 Dieburg, Germany (applicant).

On 27/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 061 065 is partially upheld, namely for the following contested goods:

Class 14: Bracelets; bracelets [jewellery]; silver-plated bracelets; bracelets for watches; bracelets of precious metal; wooden bead bracelets; bracelets and watches combined; tie pins; cuff links and tie clips; tie clips of precious metal; tie clips; cuff links; cuff links of precious metal; cuff links made of silver plate.

Class 18: Attaché cases; briefcases; briefcases [leather goods]; briefcases and attache cases; portfolio cases [briefcases]; pocket wallets; card cases [notecases]; folding briefcases; handbags; credit card cases [wallets]; wallets including card holders; card wallets [leatherware]; handbags, purses and wallets; purses; rucksacks; duffel bags; small rucksacks; bumbags; gym bags.

Class 25: Neckties; ascots; waist belts; belts [clothing]; belts made from imitation leather; belts made out of cloth; leather belts [clothing]; gloves [clothing]; knitted gloves; headgear; caps [headwear]; skull caps; visors [headwear]; leather headwear; socks; socks and stockings; neck scarves [mufflers]; mufflers [clothing]; neckerchiefs; fabric belts [clothing]; bowties.

2. European Union trade mark application No 17 887 901 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 887 901 . The opposition is based on European Union trade mark registration No 5 796 289 ‘SHOPBOP’ (word). Initially, the opponent invoked Article 8(1)(b) and Article 8(4) and 8(5) EUTMR, however, in its correspondence of 13/12/2018, the opponent requested to proceed with the examination of the opposition with regard to Article 8(1)(b) EUTMR only.

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

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

a) The goods and services

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

Class 25: Clothing, footwear, headgear; clothing, namely shirts, blouses, t-shirts, sweatshirts, pants, jeans, slacks, shorts, dresses, skirts, undergarments, lingerie, socks, shoes, hats, gloves, scarves, sweaters, jackets, coats, bathing suits, bath robes, pyjamas, slippers, belts, neckties.

Class 35: Advertising; business management; business administration; office functions; computerized searching, ordering services featuring general merchandise and general consumer goods; dissemination of advertising for others via an on-line electronic communications network; providing an on-line searchable database for the sale of goods and services of others; providing an on-line searchable ordering guide for locating, organizing and presenting goods and services of other on-line vendors; database aggregation, integration and management services; association services, namely providing opportunities for exchange of information and conversation regarding a wide variety of topics by means of product reviews; providing an interactive computer database featuring automatically updating address book, personal planner, date reminder, travel planner, and alumni and professional group links, via global computer networks; searching and retrieving information, sites, and resources relating to clothing and accessories, including footwear, jewellery and handbags, located on computer networks for others; directory services to help locate people, places, organizations, phone numbers, network home pages, and electronic mail addresses; auction services; auctioneering; providing classified advertising services; retail store services in the field of clothing and accessories, including footwear, jewellery and handbags; retail sales services in the field of clothing and accessories, including footwear, jewellery and handbags provided by means of a global computer network; on-line retail and wholesale distributorship services in the field of clothing and accessories, including footwear, jewellery and handbags featuring general merchandise and general consumer goods; automated and computerized trading services; on-line trading services relating to clothing and accessories, including footwear, jewellery and handbags; computer services, namely services to facilitate the sales of goods and services via the global electronic communications network.

Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; providing fashion information; providing information about fashion.

The contested goods are the following:

Class 9: Spectacles; Spectacle holders; Eyewear pouches.

Class 14: Wristwatches; Watch bands; Clocks and watches; Bracelets; Bracelets [jewellery]; Silver-plated bracelets; Bracelets for watches; Bracelets of precious metal; Wooden bead bracelets; Bracelets and watches combined; Tie pins; Cuff links and tie clips; Tie clips of precious metal; Tie clips; Cuff links; Cuff links of precious metal; Cuff links made of silver plate; Key rings [split rings with trinket or decorative fob]; Key fobs of precious metals; Metal key fobs; Key rings of leather; Key fobs of imitation leather; Fancy keyrings of precious metals; Key fobs, not of metal; Key fobs of common metal.

Class 18: Tie cases for travel; Attaché cases; Briefcases; Briefcases [leather goods]; Briefcases and attache cases; Portfolio cases [briefcases]; Pocket wallets; Card cases [notecases]; Folding briefcases; Handbags; Credit card cases [wallets]; Wallets including card holders; Card wallets [leatherware]; Handbags, purses and wallets; Purses; Small suitcases; Travel cases; Trunks and suitcases; Overnight cases; Travelling bags; Travelling sets [leatherware]; Overnight bags; Flight bags; Travelling bags made of imitation leather; Rucksacks; Duffel bags; Small rucksacks; Make-up bags sold empty; Umbrellas; Umbrellas and parasols; Bumbags; Gym bags; Toiletry bags; Wash bags (not fitted); Wash bags for carrying toiletries.

Class 25: Neckties; Ascots; Waist belts; Belts [clothing]; Belts made from imitation leather; Belts made out of cloth; Leather belts [clothing]; Gloves [clothing]; Knitted gloves; Headgear; Caps [headwear]; Skull caps; Visors [headwear]; Leather headwear; Socks; Socks and stockings; Neck scarves [mufflers]; Mufflers [clothing]; Neckerchiefs; Fabric belts [clothing]; Bowties.

Class 26: Belt clasps; Belt buckles; Buckles [clothing accessories]; Belt buckles of precious metals.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’ used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

Moreover, 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 9, 14 and 26

Retail services in general are not similar to any goods that are capable of being sold by retail. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.

However, retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). 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 bracelets; bracelets [jewellery]; silver-plated bracelets; bracelets for watches; bracelets of precious metal; wooden bead bracelets; bracelets and watches combined; tie pins; cuff links and tie clips; tie clips of precious metal; tie clips; cuff links; cuff links of precious metal; cuff links made of silver plate in Class 14 which are considered pieces of jewellery are similar to a low degree to the opponent’s retail store services in the field of clothing and accessories, including footwear, jewellery and handbags.

However, the contested spectacles; spectacle holders; eyewear pouches in class 9 and the contested wristwatches; watch bands; clocks and watches; key rings [split rings with trinket or decorative fob]; key fobs of precious metals; metal key fobs; key rings of leather; key fobs of imitation leather; fancy keyrings of precious metals; key fobs, not of metal; key fobs of common metal in Class 14 and belt clasps; belt buckles; buckles [clothing accessories]; belt buckles of precious metals in Class 26 are dissimilar to the opponent’s retail and wholesale services because, as stated above, retail (or wholesale) services relating to the sale of particular goods and other goods are not similar. Too broad a protection would be given to retail services if similarity were found even where the goods sold at retail were highly similar to the goods covered by the other mark.

These contested goods are also dissimilar to the opponent’s clothing, footwear, headgear in Class 25. Their nature and main purpose are different. The main purpose of clothing is to dress the human body, whereas glasses are for improving eyesight, watches are timepieces, key fobs and key rings are to be used with keys as decoration or security; and buckles and clasps for belts and clothing are components or additional elements that can be used in connection with clothing items. They do not have the same distribution channels and are neither in competition, nor complementary. Even though some fashion designers nowadays also sell watches, fashion accessories (such as glasses), this is not the rule; it tends to apply only to (commercially) successful designers. In particular, the contested belt clasps; belt buckles; buckles [clothing accessories]; belt buckles of precious metals in Class 26 are considered dissimilar to the opponent’s goods in Class 25. This is because the mere fact that a certain product can be composed of several components does not automatically establish a similarity between the finished product and its parts (see judgment of 27/10/2005, T-336/03, ‘Mobilix’, paragraph 61) and it cannot be assumed that the contested goods are produced by the same manufacturer as the opponent’s goods in Class 25. The goods can have different distribution channels, are not strictly complementary and can have different consumers.

These contested goods are also dissimilar to the opponent’s advertising, since advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity.

It is even more difficult to establish a link between these contested goods and the remaining goods and services on which the opposition is based. The goods and services have different natures, purposes and methods of use. They are directed at different consumers and provided through different distribution channels. They are neither complementary nor in competition. They are also unlikely to be provided by the same manufacturers.

As such, the contested spectacles; spectacle holders; eyewear pouches in class 9 and the contested wristwatches; watch bands; clocks and watches; key rings [split rings with trinket or decorative fob]; key fobs of precious metals; metal key fobs; key rings of leather; key fobs of imitation leather; fancy keyrings of precious metals; key fobs, not of metal; key fobs of common metal in Class 14 and belt clasps; belt buckles; buckles [clothing accessories]; belt buckles of precious metals in Class 26 are dissimilar to any of the opponent’s goods and services.

Contested goods in Class 18

The opponent’s clothing, headgear and footwear in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The contested attaché cases; briefcases; briefcases [leather goods]; briefcases and attache cases; portfolio cases [briefcases]; pocket wallets; card cases [notecases]; folding briefcases; handbags; credit card cases [wallets]; wallets including card holders; card wallets [leatherware]; handbags, purses and wallets; purses; rucksacks; duffel bags; small rucksacks; bumbags; gym bags are related to articles of clothing (or headgear and footwear) in Class 25. This is because they are likely to be considered by the consumers as aesthetically complementary accessories to articles of clothing, headgear and even footwear because they are closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered to be similar.

On the other hand, the contested trunks are large packing cases or boxes that clasp shut, used as luggage or for storage; tie cases for travel; small suitcases; travel cases; suitcases; overnight cases; travelling bags; travelling sets [leatherware]; overnight bags; flight bags; travelling bags made of imitation leather are for carrying things when travelling; umbrellas (used twice) are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; make-up bags sold empty; toiletry bags; wash bags (not fitted); wash bags for carrying toiletries are bags for storing and carrying goods cosmetics and toiletries. The nature of these goods is very different from that of the opponent’s goods in Class 25 or any other of the opponent’s goods and services. They serve very different purposes (storage, protection from rain/sun, versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. Therefore, these goods are considered dissimilar to the opponent’s goods and services

Contested goods in Class 25

The contested neckties; ascots; waist belts; belts [clothing]; belts made from imitation leather; belts made out of cloth; leather belts [clothing]; gloves [clothing]; knitted gloves; headgear; caps [headwear]; skull caps; visors [headwear]; leather headwear; socks; socks and stockings; neck scarves [mufflers]; mufflers [clothing]; neckerchiefs; fabric belts [clothing]; bowties are identical to the opponent’s clothing, headgear, either because they are included in both lists of goods, or because the contested goods are included in the broad categories of the opponent’s goods.

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 and similar to varying degrees are directed at the public at large. The degree of attention is in general average, but depending on the price, it may vary from average to high in relation to jewellery articles and their retail.

c) The signs

SHOPBOP
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).

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.

When assessing the similarity of the signs, an analysis of whether the signs bear some concept is carried out to assess whether the signs are conceptually similar, and if yes, to what extent. It may be more difficult to establish that the public may be confused about origin when one sign bears an easily identifiable concept or when the signs under comparison bear different concepts.

As the word ‘SHOP’ is meaningful for English-speaking consumers, the Opposition Division will first examine the opposition in relation to the part of the public for which the verbal elements of the marks as a whole have no meaning, such as the Spanish-speaking part of the relevant public. For this part of the public, all the elements of the marks, verbal and figurative, are distinctive.

The marks have no elements that could be considered dominant (visually eye-catching).

Visually, the signs coincide in the letters ‘S*O*BOP’ placed in the same position in both signs. The signs differ in the letters ‘H’ vs. ‘N’ and ‘P’ vs. ‘B’, as well as in a figurative element of the contested sign which has, however a limited impact on the comparison of the signs because when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

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

Aurally, the signs coincide in the pronunciation of ‘S*O*BOP’ and differ in the pronunciation of ‘H’ (a silent letter) vs. ‘N’ and ‘P’ vs. ‘B’. However, the difference in the pronunciation of ‘P’ and ‘B’ sounds is minor, in particular when they are both followed by the identical sound ‘B’. The vocalic sequence is the same and the words have the same rhythm and intonation.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the verbal elements of the signs has a meaning for the public in the relevant territory. However, the figurative element in the contested sign will be perceived as a moustache. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

d) Distinctiveness of the earlier mark

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

The opponent withdrew its claim of reputation under Article 8(5) EUTMR and, in any case, no evidence was submitted to demonstrate such a claim.

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 and services in question from the perspective of the public in the relevant territory. However, contrary to what the opponent claims, the distinctiveness of the earlier mark must be seen as normal because it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness.

e) Global assessment, other arguments and conclusion

It has been established in the previous sections of the decision that the contested goods are partly identical and similar to varying degrees and partly dissimilar to the opponent’s goods and services. The signs under comparison are considered to be visually similar to an average degree and aurally highly similar. Because of the presence of the figurative element in the contested sign, the signs are conceptually not similar. The earlier mark has a normal degree of distinctive character.

The signs are similar to the extent that they coincide in ‘S*O*BOP’ placed in the same position. And although there is a risk in relying too much on a mechanical quantitative evaluation, it is a fact that counting the total number of letters, identifying the amount of identical letters and comparing their order in the respective marks, can provide certain guidance. Taking into account that the earlier sign and the verbal element of the contested sign consist of seven letters and that they share five of them, the differences in ‘H’ vs. ‘N’ and ‘P’ vs. ‘B’ are insufficient to make the marks distinguishable from one another. As regards the figurative element, it will obviously be not overlooked by the consumers, but it will attract less of their attention for the reasons explained above.

Account is also 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 796 289. 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.

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

The rest of the contested goods 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 cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Katarzyna ZANIECKA

Anna BAKALARZ

Begoña URIARTE VALIENTE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.