OPPOSITION No B 3 078 468

Imperial S.p.A., Via dei Lanaioli, 42 Blocco 11 Centergross, 40050 Funo di Argelato (Bologna), Italy (opponent), represented by Bugnion S.p.A., Via di Corticella, 87, 40128 Bologna, Italy (professional representative)

a g a i n s t

Okuk Lda, Avenida da Boavista, 1281, 4º., 4100 130 Porto, Portugal (applicant), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative).

On 22/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 078 468 is partially upheld, namely for the following contested goods:

Class 25: Clothing.

2. European Union trade mark application No 17 990 013 is rejected for all the above goods. 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 17 990 013 ‘PLEASE STAY, UK’ (word mark). The opposition is based on European Union trade mark registration No 11 852 167 ‘PLEASE’ (word mark). 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 that the opponent submit proof of use of the trade mark on which the opposition is based.

The date of filing of the contested application is 23/11/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 23/11/2013 to 22/11/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 25: Clothing.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 26/11/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 01/02/2020 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended until 01/03/2020. On 05/02/2020, within the time limit, the opponent submitted evidence of use. Given that the CD received at the Office on 05/02/2020 was defective and could not be read, the opponent was invited to resubmit the evidence until 26/11/2020. On 10/11/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Annex 1: an affidavit issued by the opponent’s Managing Director, dated 03/02/2020. It is stated that the mark at issue has been used since 1978 in relation to fashion goods. The document provides, among others, the annual sales figures for 2014-2018 for the European Union for clothing articles sold under the mark at issue as well as the total advertising expenditure for the products bearing the sign at issue for 2014-2018.

 Annex 2: a table drafted by the opponent including turnover figures for 2014-2018 for various EU countries.

 Annexes 3-6: invoices in Italian for sales of various goods (such as, trousers, jumpers, jackets, skirts, shirts, dress, coats) to clients in France, Germany, Italy and Spain for the years from 2014 to 2018 inclusive. The invoices include the following statement ‘merce etichettata a marchio PLEASE’ (meaning merchandise marked ‘PLEASE’). The sold quantities of goods vary from more than 1 200 to over 10 000 items per invoice.

 Annex 7: a catalogue ‘Lookbook spring summer 2018’ showing the mark at issue at the front page depicted as . It refers to the goods, such as jackets, shirts, jeans, sweaters, skirts, T-shirts, sweatshirt, shorts, trousers. The sign is visible on some clothing, namely on the front of a jacket, depicted as and on a T-shirt as . This evidence shows also contact details in various countries, including in EU countries.

The invoices show that the place of use is France, Germany, Italy and Spain. This can be inferred from the addresses in these countries. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. Furthermore, the few materials dated outside of the relevant period (e.g. some of the invoices for 2018 are dated after the relevant period) serve to strengthen the materials submitted for the relevant period, by showing continuous use of the sign.

The documents filed, namely the invoices, the catalogue and the financial information submitted in the affidavit and in the excel table, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The evidence demonstrates that the opponent’s use of the mark at issue for clothing was such as to maintain an outlet for the goods and that the owner has seriously tried to acquire a commercial position in the relevant market by using its mark within the relevant period. Therefore, the Opposition Division considers that the opponent provided sufficient indication on the extent of use of the earlier mark in the relevant territory.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

In the present case the evidence shows use of the word mark ‘PLEASE’ and the figurative signs as shown above with regard to the catalogue evidence. The figurative representation of the sign ‘PLEASE’ is not such as to prevent consumers from clearly grasping the word being represented. Also, the black oval background on which the verbal element is depicted, is of secondary character to the word ‘PLEASE’ and it does not alter the distinctive character of the earlier mark as registered. Thus, the evidence shows that the mark has been used in accordance with its function and as registered.

As for the goods for which use is shown, the submitted materials show use for various items of clothing, which are considered sufficient to show use for the entire category of clothing.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the materials submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory for the goods at issue.

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 on which the opposition is based are the following:

Class 25: Clothing.

The contested goods and services are the following:

Class 25: Clothing.

Class 35: Sales promotion, for others, of clothing (including via the internet).

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.

Contested services in Class 35

The contested sales promotion, for others, of clothing (including via the internet) consist of providing others with assistance in the sale of their goods by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Therefore, the contested sales promotion, for others, of clothing (including via the internet) is fundamentally different in nature and purpose from the manufacture of goods. The fact that the goods appear in promotions is insufficient for finding similarity, contrary to the opponent’s argument. Therefore, the contested sales promotion, for others, of clothing (including via the internet) is dissimilar to the goods being promoted. It follows that the contested services are dissimilar to the earlier goods in Class 25.

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 are directed at the public at large. The degree of attention is considered to be average.

c) The signs

PLEASE	PLEASE STAY ,UK
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.

One of the differing elements (‘STAY’) is not meaningful in certain languages, such as Polish and Spanish, and therefore the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish- and Spanish-speaking part of the relevant public as the signs will not evoke an additional differing concept for this part of the relevant public.

The element ‘PLEASE’ composing the earlier mark and forming the beginning of the contested sign is a basic English word that will be perceived throughout the EU as ‘a word used when politely asking or inviting someone to do something’ or ‘to attract someone's attention politely’ (information extracted from Collins Dictionary on 01/03/2021 at https://www.collinsdictionary.com/dictionary/english/please). Since this element is not related to the relevant goods, it is distinctive (10/04/2019, R 1226/2018-5, Privacy please / Please, § 30).

The element ‘STAY’ of the contested sign cannot be assumed to be understood by the relevant Polish- and Spanish-speaking public, since it cannot be considered as basic English vocabulary. Therefore, this element will be seen as meaningless and distinctive in relation to the goods at issue.

The element ‘UK’ of the contested sign is likely to be perceived by the relevant public as an abbreviation for ‘United Kingdom’, due to its common use in trade. It will, thus, be seen as an evocation of the geographical origin of the goods at issue, seat of the company or a particular style of the goods. Consequently, the impact of this element on the comparison is very limited.

The punctuation mark in form of a comma will be perceived as such in the contested sign. Its impact will be reduced because it is commonly used.

Consumers generally tend to focus on the first elements of a sign when they encounter a trade mark. This is justified because the public reads from left to right, and from top to bottom, which makes the part placed at the left of the sign, or at its top (the initial part), the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the distinctive verbal element ‘PLEASE’ and its pronunciation. It is the sole element of the earlier mark and the first element of the contested sign. The signs differ in the further verbal elements of the contested sign, ‘STAY’ and ‘UK’ and their pronunciations. Visually, the signs differ also in the comma included in the contested sign. Aurally, the punctuation mark in the contested sign does not have any significant impact.

In the light of the foregoing and taking into account the respective elements’ degree of distinctive character, the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be perceived as referring to the same distinctive concept of ‘PLEASE’, the signs are conceptually similar to an average degree. That conclusion is not affected by the concept evoked by ‘UK’ in the contested sign, as it has only a very limited impact.

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 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 relevant public under assessment. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested goods were found identical and the services dissimilar to the goods of the earlier mark. They are directed at the public at large whose level of attention is average. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. The marks are visually, aurally and conceptually similar to an average degree.

As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

Therefore, given that the sole distinctive element of the earlier mark is entirely contained in the contested sign as a distinctive element placed at the beginning of the sign, it is reasonable to assume that, when encountering the contested sign in relation to identical goods, consumers are likely to confuse the marks and believe that these goods come from the same undertaking or, as the case may be, economically linked undertakings.

It is settled case-law that 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish- and 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.

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

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.

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

Julia GARCÍA MURILLO

Marzena MACIAK

Saida CRABBE

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.