OPPOSITION Nо B 3 068 131

 

G-Star Raw C.V., Joan Muyskenweg 39, 1114 AN Amsterdam-Duivendrecht, Netherlands (opponent), represented by Hgf Bv, Gedempt Hamerkanaal 147, 1021 KP Amsterdam, Netherlands (professional representative) 

 

a g a i n s t

 

Boxraw Ltd, 3 The Quadrant, Cv1 2dy Coventry, United Kingdom (applicant), represented by Cms Cameron Mckenna Nabarro Olswang Posniak I Bejm Sp.K., Emilii Plater 53, 00-113 Warsaw, Poland (professional representative).

On 10/02/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 068 131 is upheld for all the contested goods, namely:

 

	Class 25: Clothing; Footwear; Headgear; Sports clothing; Clothing for sports; Jackets being sports clothing; Articles of sports clothing; Sports garments; Clothes for sport; Sports clothing [other than golf gloves]; Clothes for sports; American football socks; American football shirts; American football shorts; American football pants; American football bibs; Ankle socks; Anti-perspirant socks; Athletic tights; Athletic uniforms; Athletics vests; Baby bottoms; Baby clothes; Baby tops; Baseball uniforms; Baselayer bottoms; Baselayer tops; Bathing suits for men; Bathing suits; Bathing trunks; Bathwraps; Beach clothes; Beach robes; Beach wraps; Bathing costumes for women; Bath robes; Bed jackets; Bed socks; Belts [clothing]; Bib shorts; Bikinis; Body warmers; Body stockings; Boys' clothing; Boy shorts [underwear]; Boxing shorts; Boxer shorts; Bottoms [clothing]; Casual jackets; Casual trousers; Casualwear; Children's wear; Clothing for gymnastics; Clothing for martial arts; Clothing for men, women and children; Coats; Coats for men; Coats for women; Collars; Collars [clothing]; Combative sports uniforms; Combinations [clothing]; Dressing gowns; Down vests; Down jackets; Donkey jackets; Dance clothing; Fingerless gloves; Football jerseys; Footless socks; Footless tights; Fleece vests; Fleece tops; Fleece shorts; Fleece pullovers; Gloves for cyclists; Gloves [clothing]; Girls' clothing; Gloves including those made of skin, hide or fur; Gym shorts; Gym suits; Head scarves; Heavy coats; Heavy jackets; Jogging sets [clothing]; Jerseys [clothing]; Jackets [clothing]; Hooded sweatshirts; Hooded tops; Hooded pullovers; Ladies' clothing; Knitwear [clothing]; Knitted underwear; Knitted gloves; Knit tops; Jogging tops; Lounging robes; Loungewear; Lounge pants; Long-sleeved shirts; Long johns; Leisurewear; Leisure suits; Leggings [trousers]; Leggings [leg warmers]; Menswear; Men's underwear; Men's suits; Men's socks; Men's and women's jackets, coats, trousers, vests; Outerclothing for men; Outerclothing for girls; Outerclothing; Outerclothing for boys; Raincoats; Rainproof jackets; Rainwear; Reversible jackets; Referees uniforms; Shorts; Short-sleeved T-shirts; Short-sleeve shirts; Short trousers; Short sets [clothing]; Sleeveless jerseys; Sleeveless jackets; Sleeved jackets; Sports pants; Sports jerseys; Sports jackets; Sports jerseys and breeches for sports; Sports bras; Sports bibs; Sport coats; Socks and stockings; Socks; Sock suspenders; Soccer bibs; Sports shirts with short sleeves; Sports singlets; Sports socks; Sportswear; Strapless bras; Surfwear; Sunsuits; Sweat jackets; Sweat-absorbent socks; Sweat-absorbent stockings; Sweat-absorbent underwear; Sweat bands for the wrist; Sweat shirts; Sweat shorts; Sweatbands; Sweaters; Sweatpants; Swim shorts; Swim wear for children; Swim wear for gentlemen and ladies; Swimming trunks; Taekwondo suits; Tank tops; Tankinis; Trunks; Trousers shorts; Trousers for children; Trousers; Tracksuit bottoms; Track jackets; Tracksuit tops; Tops [clothing]; Toe socks; Underpants; Weatherproof pants; Weatherproof clothing; Weather resistant outer clothing; Waterproof trousers; Warm-up tops; Warm-up pants; Warm-up jackets; Womens' outerclothing; Women's suits; Winter gloves; Winter coats; Windproof clothing; Wind suits.
2.		European Union trade mark application No 17 946 320 is rejected for all the contested goods. It may proceed for the remaining uncontested goods, namely all the goods in Class 28.

 

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

 

REASONS

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 946 320 ‘BOXRAW’ (word mark), namely against all the goods in Class 25. The opposition is based on, inter alia,  international trade mark registration No 1 131 972 ‘RAW’ (word mark) designating the European Union. The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

 

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 international trade mark registration No 1 131 972 designating the European Union.

 

a) The goods

 

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

 

Class 25: Clothing; footwear; headgear; belts (clothing).

The contested goods are the following:

 

Class 25: Clothing; Footwear; Headgear; Sports clothing; Clothing for sports; Jackets being sports clothing; Articles of sports clothing; Sports garments; Clothes for sport; Sports clothing [other than golf gloves]; Clothes for sports; American football socks; American football shirts; American football shorts; American football pants; American football bibs; Ankle socks; Anti-perspirant socks; Athletic tights; Athletic uniforms; Athletics vests; Baby bottoms; Baby clothes; Baby tops; Baseball uniforms; Baselayer bottoms; Baselayer tops; Bathing suits for men; Bathing suits; Bathing trunks; Bathwraps; Beach clothes; Beach robes; Beach wraps; Bathing costumes for women; Bath robes; Bed jackets; Bed socks; Belts [clothing]; Bib shorts; Bikinis; Body warmers; Body stockings; Boys' clothing; Boy shorts [underwear]; Boxing shorts; Boxer shorts; Bottoms [clothing]; Casual jackets; Casual trousers; Casualwear; Children's wear; Clothing for gymnastics; Clothing for martial arts; Clothing for men, women and children; Coats; Coats for men; Coats for women; Collars; Collars [clothing]; Combative sports uniforms; Combinations [clothing]; Dressing gowns; Down vests; Down jackets; Donkey jackets; Dance clothing; Fingerless gloves; Football jerseys; Footless socks; Footless tights; Fleece vests; Fleece tops; Fleece shorts; Fleece pullovers; Gloves for cyclists; Gloves [clothing]; Girls' clothing; Gloves including those made of skin, hide or fur; Gym shorts; Gym suits; Head scarves; Heavy coats; Heavy jackets; Jogging sets [clothing]; Jerseys [clothing]; Jackets [clothing]; Hooded sweatshirts; Hooded tops; Hooded pullovers; Ladies' clothing; Knitwear [clothing]; Knitted underwear; Knitted gloves; Knit tops; Jogging tops; Lounging robes; Loungewear; Lounge pants; Long-sleeved shirts; Long johns; Leisurewear; Leisure suits; Leggings [trousers]; Leggings [leg warmers]; Menswear; Men's underwear; Men's suits; Men's socks; Men's and women's jackets, coats, trousers, vests; Outerclothing for men; Outerclothing for girls; Outerclothing; Outerclothing for boys; Raincoats; Rainproof jackets; Rainwear; Reversible jackets; Referees uniforms; Shorts; Short-sleeved T-shirts; Short-sleeve shirts; Short trousers; Short sets [clothing]; Sleeveless jerseys; Sleeveless jackets; Sleeved jackets; Sports pants; Sports jerseys; Sports jackets; Sports jerseys and breeches for sports; Sports bras; Sports bibs; Sport coats; Socks and stockings; Socks; Sock suspenders; Soccer bibs; Sports shirts with short sleeves; Sports singlets; Sports socks; Sportswear; Strapless bras; Surfwear; Sunsuits; Sweat jackets; Sweat-absorbent socks; Sweat-absorbent stockings; Sweat-absorbent underwear; Sweat bands for the wrist; Sweat shirts; Sweat shorts; Sweatbands; Sweaters; Sweatpants; Swim shorts; Swim wear for children; Swim wear for gentlemen and ladies; Swimming trunks; Taekwondo suits; Tank tops; Tankinis; Trunks; Trousers shorts; Trousers for children; Trousers; Tracksuit bottoms; Track jackets; Tracksuit tops; Tops [clothing]; Toe socks; Underpants; Weatherproof pants; Weatherproof clothing; Weather resistant outer clothing; Waterproof trousers; Warm-up tops; Warm-up pants; Warm-up jackets; Womens' outerclothing; Women's suits; Winter gloves; Winter coats; Windproof clothing; Wind suits.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods 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).

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 25

Clothing; footwear; headgear are identically contained in both lists of goods.

The contested Bathwraps; Bath robes are at least similar to the opponent’s clothing. These sets of goods usually coincide in at least their producers, relevant public, distribution channels and method of use.

All the remaining contested goods are various articles of clothing and are included in the broad category of, or at least overlap with, the opponent’s clothing. Therefore, they are identical.

b) Relevant public — degree of attention

 

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

 

In the present case, the goods found to be identical or at least similar are directed at the public at large. The degree of attention is considered to be average.

c) The signs

RAW	BOXRAW
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, for reasons of procedural economy, and in order to avoid a lengthy examination with a number of languages and different findings about concepts, pronunciations and conclusions, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-speaking part of the relevant public.

Both marks are word marks composed of a single verbal element. Being word marks, they have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s). The earlier mark consists of the single verbal element ‘RAW’ and the contested sign of the verbal element ‘BOXRAW’.

While it is acknowledged that the contested sign is composed of a single verbal element, nevertheless, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In this regard, it must be mentioned that in view of the structure of the contested sign and of the respective underlying concepts of (at least) the word ‘BOX’ and, for a part of the public, of ‘RAW’ as well, the relevant Dutch-speaking part of the public will perceive the contested sign as a combination of the elements ‘BOX’ and ‘RAW’, respectively. As mentioned, this is because of the underlying concept of ‘BOX’, which has the following meanings in Dutch: box, stall; playpen (safety enclosure for children); storeroom in the basement of a high building; a loudspeaker (Definitions extracted from www.wordreference.com/nlen/box). As this element does not have any descriptive, non-distinctive or otherwise weak meaning for the relevant goods, its inherent distinctiveness is normal.

The word ‘RAW’, contained in the signs will be understood by those members of the public who have knowledge of English. It means ‘not processed; not cooked; in a natural state, without having been through any chemical or industrial process; not yet been studied in detail (information); a person who is not trained or is without experience; painful; cold (weather)’ (definitions extracted from Cambridge Advanced Learner's Dictionary online, at https://dictionary.cambridge.org/). Contrary to the assertions of the applicant, the element ‘RAW’ has no descriptive, non-distinctive or otherwise weak meaning in relation to the relevant goods in Class 25. The relevant goods are finished goods that do not have any relevant characteristics or features that can be described as ‘in a natural state’ or ‘unfinished, unprocessed’. This has also been confirmed in several decisions of the EUIPO (e.g. 4159C of 29/11/2011, R 1419/2014-4 BEAT & RAW (fig.)/RAW of 11/11/2015, B3023689 of 05/02/2019 RAW/UNIRAW, etc.). The relevant consumer could consider, at most, after some reflection, that the term ‘raw’ might be suggestive or allusive of the kind of fabric used to make the goods (e.g. raw denim, raw cotton) or to a rough style; however, this link is not sufficiently immediate or straightforward, so as to enable the relevant public to establish a specific and direct relationship between the word and the goods in question, without further thought or an additional mental step. Likewise, for the remaining part of the public with no knowledge of English, the element ‘raw’ of the marks has no meaning in relation to the relevant goods. Therefore, whether associated with a meaning or not, the element ‘RAW’ included in the signs has a normal degree of inherent distinctiveness in relation to the goods. As to the word combination ‘BOXRAW’, it has no specific meaning, other than the mere sum of the concepts of the two words.

Visually and aurally, the signs coincide in the inherently distinctive verbal element ‘RAW’, which constitutes the only element of the earlier mark and is entirely contained in the second part of the contested sign. This part of the signs will be pronounced in the same way. The signs differ in the additional word ‘BOX’ which has no counterpart in the earlier mark, located at the beginning of the contested sign, where consumers normally focus their attention; this additional word will produce a different sound audible at the beginning of the contested sign. Nevertheless, account should be taken of the fact that the earlier mark is reproduced as an independent distinctive element in the contested sign. Consequently, in view of all these findings, the normal distinctiveness of the elements of the signs and their respective weight and positioning, it is concluded that the signs are visually and aurally similar to an average degree.

Conceptually, as indicated above, the verbal element ‘RAW’ in the signs will be associated with the same concept by the part of the public with knowledge of English. Therefore, for that part of the public, the signs are conceptually similar to an average degree.

As to the remining part of the public with no knowledge of English, the signs will differ in the concept of ‘BOX’ of the contested sign. As the earlier mark has no meaning, one of the signs will not be associated with any meaning and therefore, 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.

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

 

e) Global assessment, other arguments and conclusion

In the present case, the majority of the contested goods are identical and a couple of goods are at least similar to the opponent’s goods. The relevant goods are directed at the public and the degree of attention is average. The inherent distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree. They are conceptually similar to an average degree for the part of the public that has knowledge of English. As for the remaining part of the public, the signs differ in the concept of ‘BOX’ which is not found in the earlier mark. However, this conceptual difference is not of decisive weight. This is because the coinciding verbal element ‘RAW’ plays an independent distinctive role in both signs, it is inherently distinctive and equally able to indicate trade origin as the element ‘BOX’ that precedes it in the contested sign.

The earlier sign ‘RAW’ is composed of only three letters and is, consequently, a relatively short sign. It is true, as claimed by the applicant, that the shorter a sign, the more easily the public is able to perceive all of its individual elements. However, the earlier sign is entirely, and without modifications, incorporated in the second part of the contested sign, ‘BOXRAW’, where it plays an independent and distinctive role. As explained above, the relevant public will break down the contested sign into two components, ‘BOX’ and ‘RAW’ and both of them have equal strength as trade origin indicators.

The relevant goods in Class 25 belong to a market sector in which it is particularly common for sub-brands to be created, namely variations of the main brand that include different motifs and additions. Therefore, in the present case, it is highly conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier mark configured in a different way according to the type of goods which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

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 covered are from the same or economically linked undertakings. In the present case, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes, owing to the presence of the identical word ‘RAW’, that they are derived from the same undertaking or, at the very least, 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 view of the foregoing and taking into account all the relevant circumstances of the case, it is considered that the difference resulting from the word ‘BOX’ in the contested sign, although located at its beginning, is not sufficient to allow the consumers to safely distinguish between the marks and to exclude a likelihood of confusion.

 

The applicant refers to a previous national decision to support its arguments, namely UK IPO Decision in case ‘RAW’ v ‘BOXRAW’ (O-002-18) in which the Hearing Officer considered an identical UK trade mark application involving the same parties. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399). Indeed, even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

 

In the present case, however, the previous case referred to by the applicant relates to the United Kingdom, which is no longer a Member State of the EU. Furthermore, although the signs may be the same, the relevant territory is not the same, which means that the findings as regards the conceptual comparison between the signs are not comparable. Even though the understanding of the term ‘RAW’ in English has been dealt with in the present case, the findings are not necessarily and automatically the same. The understanding of English terms by non-native speakers may be distinct depending on the level of knowledge of the respective individual person. Furthermore, it should be born in mind that different grammatical and syntactic rules apply in the relevant examined territory. In view of the above, it follows that, the previous decision submitted to the Opposition Division is not relevant to the present proceedings and does not have a binding effect on the Office.

 

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

 

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 131 972 designating the EU. It follows that the contested trade mark must be rejected for all the contested goods.

 

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

As the earlier right opponent’s international trade mark registration No 1 131 972 designating the EU leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

 

COSTS

 

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

 

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

 

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Jakub MROZOWSKI

Liliya YORDANOVA

Gueorgui IVANOV

 

 

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