OPPOSITION No B 3 069 018

Tariq Mahmood, Kreuzstr. 341, 45770 Marl, Germany (opponent), represented by David Farrugia, 41, Sir Adrian Dingli Street, SLM1903 Sliema, Malta (professional representative)

a g a i n s t

TMG International, 106 Stoletov Blvd., 5300 Gabrovo, Bulgaria (applicant).

On 17/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 069 018 is partially upheld, namely for the following contested goods and services:

Class 25: Headgear; Clothing; Footwear.

Class 35: Online retail services relating to clothing; Mail order retail services for clothing; Online retail store services relating to clothing; Retail services connected with the sale of clothing; Retail services in relation to headgear; Retail services in relation to clothing; Retail store services in the field of clothing; Wholesale services in relation to headgear; Wholesale services in relation to clothing.

2. European Union trade mark application No 17 958 824 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 958 824, ‘TMG International’, namely against all the goods and services in Classes 25 and 35. The opposition is based on European Union trade mark registration No 13 916 515, , and German trade mark registration No 302 013 065 153, . The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK

According to Article 2(2)(b) EUTMDR, the notice of opposition shall contain a clear identification of the earlier mark or earlier right on which the opposition is based.

According to Article 5(3) EUTMDR, where the notice of opposition does not comply with Article 2(2)(a), (b) or (c) of the EUTMDR, and where those deficiencies have not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

In the present case, in the notice of opposition the opponent indicated as basis of the opposition under Article 8(1) EUTMR only the above mentioned trade mark registrations.

In its submissions filed on 09/05/2019 (i.e. after expiration of the three-month opposition period which ended on 28/12/2018) the opponent made a reference to European Union trade mark registration No 17 923 495, ‘TMG’, European Union trade mark registration No 17 967 998, ‘TMG Clothing’, and European Union trade mark registration No 18 001 435, .

The Opposition Division points out that the opponent cannot extend the basis of the opposition once the opposition period has expired. Therefore, the opposition is not admissible insofar as it is based on the aforementioned subsequently invoked EUTMs.

Furthermore, the opponent claimed in its submission filed together with the notice of opposition that there would be a likelihood of confusion between the contested sign and further earlier rights of the opponent, namely to several domain names and company names. However, domain names and company names are not trade marks according to Article 8(2) EUTMR and the relevant opposition ground for such rights does not fall under Article 8(1) EUTMR, as claimed by the opponent. Therefore, the claim to domain names and company names as a basis of the opposition is also inadmissible.

SUBSTANTIATION OF GERMAN TRADE MARK REGISTRATION NO 302 013 065 153

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

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

According to Article 7(5) EUTMDR, the Office will not take into account written submissions, or parts thereof, which have not been submitted in or not been translated into the language of the proceedings, within the time limit set by the Office.

In its submissions, filed together with the notice of opposition on 20/11/2018, the opponent refers to the German mark registration No 302 013 065 153, , without providing a registration certificate in language of the proceedings. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office for this particular earlier right.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

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

Class 9: Clothes for protection against injury; Electrically heated clothing for protection against accident or injury; Fireproof clothing; Insulated clothing for protection against accident or injury; Reflective clothing for the prevention of accidents; Reflecting strips for wear.

Class 25: Arm warmers [clothing]; Clothing made of fur; Layettes [clothing]; Babies' pants [clothing]; Bandanas [neckerchiefs]; Clothing of imitations of leather; Motorists' clothing; Bridesmaids wear; Christening robes; Clothing for wear in judo practices; Children's wear; Motorcyclists' clothing of leather; Clothing; Clothing; Leather clothing; Paper clothing; Clothing for martial arts; Clothing for horse-riding [other than riding hats]; Sportswear; Clothing for fishermen; Boys' clothing; Clothes for children; Clothing for wear in wrestling games; Casual clothing, namely shirts; Boas [necklets]; Chaps (clothing); Three piece suits [clothing]; Pocket squares; Mittens; Belts (Money -) [clothing]; Knitwear [clothing]; Belts [clothing]; Gloves [clothing]; Handwarmers [clothing]; Jogging sets [clothing]; Hoods (clothing); Short sets [clothing]; Corsets; Shoulder wraps; ties [clothing]; Leather belts [clothing]; Cuffs; Visors [headwear]; Nightwear; Ear muffs [clothing]; Hats (Paper -) [clothing]; Paper hats for use as clothing items; Party hats [clothing]; Furs [clothing]; Polo knit tops; Slipovers [clothing]; Polo-necks (clothing); Mufflers [clothing]; Veils [clothing]; Shoulder wraps [clothing]; Aprons [clothing]; Playsuits [clothing]; Quilted jackets [clothing]; Headbands [clothing]; Togas; Tops [clothing]; Kerchiefs [clothing]; shawls (clothing); Bottoms [clothing]; Weatherproof clothing; Chefs' whites; Nappy pants [clothing]; Windbreakers (clothing); Hosiery; Thermally insulated clothing; Oilskins [clothing]; Topcoats.

Class 40: Tailoring or dressmaking; Dressmaking; Shoemaking; Needlework [custom manufacture]; Needlework and dressmaking; Sewing (custom manufacture); Embroidery; Fur cutting; Cutting of leather; Pattern cutting; Cutting of fabric; Cutting of textiles; Wool cutting.

The contested goods and services are the following:

Class 25: Headgear; Clothing; Footwear.

Class 35: Online ordering services; Import and export services; Online retail services relating to clothing; Mail order retail services connected with clothing accessories; Mail order retail services for clothing; Mail order retail services for cosmetics; Wholesale ordering services; Online retail services relating to cosmetics; Online retail store services relating to clothing; Online retail store services relating to cosmetic and beauty products; Retail services connected with the sale of clothing and clothing accessories; Retail services in relation to headgear; Retail services in relation to footwear; Retail services in relation to clothing; Retail store services in the field of clothing; Wholesale services in relation to footwear; Wholesale services in relation to headgear; Wholesale services in relation to clothing.

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 25

Clothing is identically contained in both lists of goods.

The contested headgear includes, as a broader category, the opponent’s visors [headwear]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested footwear is similar to the opponent’s clothing. They coincide in their aesthetic purpose and they target the same public. Moreover, they are often manufactured by the same undertakings and commercialised through the same channels.

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. The same principle applies to the various services rendered that revolve exclusively around the actual sale of goods such as wholesale services, internet shopping, catalogue or mail order services.

Therefore, the contested online retail services relating to clothing; mail order retail services for clothing; online retail store services relating to clothing; retail services connected with the sale of clothing; retail services in relation to headgear; retail services in relation to clothing; retail store services in the field of clothing; wholesale services in relation to headgear; wholesale services in relation to clothing are similar to a low degree to the respective opponent´s goods in Class 25 (i.e. clothing and visors [headwear]) found identical to the respective particular goods which are involved in the contested services (as reflected in the comparison with regard to Class 25 above).

Online ordering services; mail order retail services for cosmetics; wholesale ordering services; online retail services relating to cosmetics; mail order retail services connected with clothing accessories; retail services connected with the sale of clothing accessories; online retail store services relating to cosmetic and beauty products; retail services in relation to footwear; wholesale services in relation to footwear and the opponent’s goods in Classes 9 and 25 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, the goods and services have different methods of use and are neither in competition nor complementary.

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 in the aforementioned case, since the goods at issue are not identical. Moreover, the services which are not limited to specific goods are vague and in absence of an express limitation by the opponent in order to clarify its services, they can only be considered as lowly similar to the contested goods.

As analysed above, retailing and wholesaling of specific goods allow consumers to conveniently satisfy different shopping needs. This is clearly not the purpose of the opponent’s services in Class 40 as these services have different purpose (the provision of tailoring, dressmaking, sewing and fabric cutting services) and also do not coincide in provider and distribution channels. Furthermore, they are not complementary to or in competition with each other. Consequently, these services are dissimilar.

The contested import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import/export services and the goods in question are the same is not a relevant factor for finding a similarity. Therefore, the are dissimilar to the opponent’s goods in Classes 9 and 25 and to the services in Class 40 for the reasons analysed above.

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 various degrees are directed at the public at large (e.g. clothing) as well as at business customers with specific professional knowledge or expertise (e.g. wholesale services). The degree of attention is average.

3. The signs

	TMG International
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).

Both signs comprise the elements ‘TMG’ and ‘International’. The common element ‘INTERNATIONAL’ is a basic English word that would be understood throughout the European Union as a company or organization that exists, works, or has members in more than one country (source: https://www.macmillandictionary.com). Therefore, the relevant public will perceive this term as non-distinctive for the relevant goods and services as it indicates that these are provided by an international company.

The three-letter combination ´TMG´, as such, does not have a meaning. However, in the context of the earlier mark it will be perceived together with and as an acronym of the element ‘Textile Management Group’. The latter element will be understood by the vast majority of the relevant public as a reference to a group of companies which specialises in the management in the textile industry and, considering the relevant goods, its distinctiveness will be very limited. Accordingly, in the context of the earlier mark, also the distinctiveness of the acronym ´TMG´ must be seen as very limited.

The element ‘TMG’ is the dominant part of the earlier mark as it is the most eye-catching. The right side of the top part of the letter ‘T’ is elongated so as to cover the element ‘Textile Management Group’ and within it, there is the element ‘INTERNATIONAL’ in white font. Due to its size and position, the element ‘Textile Management Group’ plays a secondary role in the sign.

Visually, the contested sign is included in its entirety in the earlier mark. Although the signs differ in the figurative elements of the earlier mark as well as in its additional element ‘Textile Management Group’ and also taking into account the limited distinctiveness of both the coinciding and the differing elements in the earlier mark, the coincidences lead to at least an average degree of similarity.

Aurally, the pronunciation of the signs coincides in the syllables /TMG INTERNATIONAL/, present identically in both signs. They differ in the sound of the additional letters /Textile Management Group/ present in the earlier mark which has no counterpart in the contested. However, it has been confirmed by case-law that consumers generally tend to shorten marks containing multiple expressions, and therefore the contested sign is likely to be aurally referred to by only the verbal element ‘TMG INTERNATIONAL’, omitting the secondary ‘Textile Management Group’.

Therefore, the signs are aurally at least similar to a high degree, if not identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since elements of the contested sign are identically contained in the earlier mark (i.e. ‘TMG International’), despite the presence of additional elements of in the latter, there will be at least a low degree of similarity.

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 will be associated with the meaning explained above and is, therefore, weak in relation to the relevant goods.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar (to various degrees) and partly dissimilar. They are directed at the public at large and at professionals whose degree of attention is average.

As explained in section c) of this decision, the signs are considered visually similar to an, at least, average degree, aurally similar to a high degree (or even identical phonetically) and conceptually at least lowly similar.

In principle, 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

Upon taking also into account 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), the Opposition Division finds that the differences between the marks (i.e. the figurative elements of the earlier mark and the weak element ‘Textile Management Group’) are not enough for the consumers to safely distinguish the marks (not even with respect to the services found to be similar to a low degree only).

The above finding is not called into question by the weak distinctive character of the earlier trade mark. Indeed, according to established case-law, the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61; 13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70). This is the situation in the present case, in view of the similarity between the conflicting marks and the identity/similarity of the goods and services at issue.

The rest of the contested 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 services cannot be successful.

The opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and/or the services are obviously not identical.

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

Denitza STOYANOVA- VALCHANOVA

Aliki SPANDAGOU

Martin EBERL

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.