OPPOSITION No B 3 087 152

Alpargatas S.A., Avenida das Nações Unidas Nº 14261 Ala A 9ºao 11º Andar, 04794-000, São Paulo, Brazil (opponent), represented by Sugranes Patentes y Marcas, Calle de Provenza 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

World Threads, 111 NE, 1st Street 8th Floor #359, 33132 Miami, United States of America, and Bruno de Sola, 201 Chemin des serres et des plaines, 83490 Le Muy, France (applicants), represented by SCP Le Stanc – Carbonnier, 105 avenue de Lodève, 34070 Montpellier, France (professional representative)

On 18/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 152 is upheld for all the contested goods.

2. European Union trade mark application No 18 031 601 is rejected in its entirety.

3. The applicants bear the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 031 601, ’Hawaiianize’ (word mark), namely against all the goods in Class 25. The opposition is based, inter alia, on European Union trade mark registration No  7 156 128 ‘HAVAIANAS’ (word mark). The opponent invoked Article 8(1) (b) and Article 8 (5) 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 applicants have not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

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

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

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

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 European Union trade mark registration No 7 156 128 ‘HAVAIANAS’ (word mark).

a) The goods

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Men's clothing; Women's clothing; Hats; Footwear.

The contested Men's clothing; Women's clothing are included in the broad category of the opponent’s Clothing. Therefore, they are identical.

The contested Hats; Footwear are identically contained in both lists of goods (footwear) or included in the opponent’s broad category of goods (headgear). Hence 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 are directed at the public at large.

The degree of attention is average.

c) The signs

HAVAIANAS	Hawaiianize
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 are word marks and therefore protected as such, regardless of the typescript used.

The earlier mark as well as the contested sign will be associated, through the letters ‘HAVAI’ and ‘Hawaii’, with the notion of ‘Hawaii’ which is an island or an archipelago in the Pacific Ocean. This association will be created in the mind of the consumers in the whole European Union because both word elements are based on the universally understandable root ‘Havai’/’Hawai’. However, strictly speaking, the word ‘HAVAIANAS’ exists only in Portuguese (a female adjective in plural form based on ‘Havai’) and ‘Hawaiianize’ exists in English (a verb based on ‘Hawaii’ meaning the make something Hawaiian).

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. Hence, for reasons of economy of procedure, the Office’s analysis will be limited to the German-speaking public.

The relevant German-speaking public will perceive the signs as a whole and as alluding to the island Hawaii as stated above. The consumers will understand ‘Havai’ in the earlier right as referring to ‘Hawaii’ as the letters ‘v’ and ‘w’ are very similar and the pronunciation is identical in the German language. Therefore the argument of the applicants that ‘Havai’ will be understood only by the Portuguese speakers, is of no avail.

Bearing in mind that the relevant goods are, among others things, clothing in class 25, which include shirts, it is considered that the signs, as they allude to ‘Hawaii’, are weak for these goods. This is because a ‘Hawaiian shirt’ is a type of informal shirt with a tropical coloured design which is known to the German and European public. The relevant public who understands the meaning of this allusion will not pay as much attention to this weak part of the signs. Consequently, the impact of this weak letters is limited when assessing the likelihood of confusion between the marks at issue.

Visually, the signs coincide in the letters ‘HA*AI*AN***’, but are dissimilar as regards the letters ‘w’/’v’, the second ‘i’ and the last letters ‘AS’ respectively ‘ize’ of the signs. Therefore, and taking into account the weak distinctive character of the letters ‘Havai/Hawaiian’ for some goods, namely clothing, but also that the letters ‘v’ and ‘w’ and ‘I’ and ‘ii’ look very similar, and that the dissimilar letters ‘AS’ and ‘ize’ are placed at the end of the signs, the marks are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the marks coincides in the sound of the letters ‘HA-AI-AN’ present identically in both signs. Furthermore, in the case at hand, the sound of the letters ‘V’/’W’ is identical in the German language and ‘I’/’ii’ is almost identically pronounced, too. The pronunciation differs in the sound of the additional letters ‘-AS’ at the end of the earlier mark and the letters ‘-ize’ at the end of the contested sign. The applicants argument that the contested sign would be pronounced (HA) (QUA) (IA) (NIZE) cannot be upheld, especially as they did not submit any kind of evidence as to why the second syllable should be pronounced as (QUA). Taking into account the limited impact of ‘Havai/Hawaiian’ for some goods, namely clothing, the signs are aurally similar nevertheless at least to an average degree and not dissimilar as pretend the applicants.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the Hawaiian Islands, and taking into account their limited distinctive character for some goods (clothing), the signs are considered conceptually similar at least to an average degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for some of the goods in question, namely clothing in Class 25. The mark has a normal degree of distinctiveness for the remaining goods in relation to which it has no meaning from the perspective of the public in the relevant territory.

e) Global assessment, other arguments and conclusion

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).

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.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The conflicting goods have been found identical and the conflicting signs are visually similar to an average degree, and aurally and conceptually similar at least to an average degree, too.

Considering all the above, and taking into account the principle of interdependence, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 156 128. 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.

Considering all the above, there is a likelihood of confusion on the part of the public.

It follows that the contested trade mark must be rejected for all the goods found to be identical to those of the earlier trade mark, even for the contested goods for which the earlier mark EUTM No 7 156 128 has a lower degree of distinctiveness, i.e. clothing, in the relevant territory. Moreover, as already mentioned above, said mark is of normal distinctiveness for the rest of 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 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 EUTM No 7 156 128 leads to the success of the opposition and to the rejection of the contested trade mark for all the 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). In the framework of opposition proceedings, the applicants cannot invoke Article 58 EUTMR. If they wish to do so, they must file a separate request for revocation.

The applicants refer to previous decisions of the Office to support their arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the applicants is not relevant to the present proceedings as the signs are not comparable (Clenosan ./. Aloesan), as they consist of different letters.

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

Beatrix STELTER

Karin KLÜPFEL

Tobias KLEE

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.