OPPOSITION No B 3 088 407

Hugo Boss Trade Mark Management GmbH & Co. KG, Dieselstr. 12, 72555 Metzingen, Germany (opponent), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative)

a g a i n s t

Метатрон Инвестинг, ул. «Елов дол» № 1, 1220 София, Bulgaria (applicant).

On 07/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 088 407 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 042 003 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 042 003 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 49 221 for the word mark ‘BOSS’. The opponent invoked Article 8(1)(b) and (5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent claimed repute in relation to earlier EUTM No 49 221 for the following goods:

Class 25: Clothing for men, women and children; stockings; headgear; underwear; nightwear; swimwear; bathrobes; belts; belts of leather; shawls; accessories, namely headscarves, neck scarves, shawls, dress handkerchiefs; ties; gloves; shoes.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 28/03/2019. Therefore, the opponent was required to prove that the trade mark for which reputation is claimed had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 25: Clothing for men, women and children; stockings; headgear; underwear; nightwear; swimwear; bathrobes; belts; belts of leather; shawls; accessories, namely headscarves, neck scarves, shawls, dress handkerchiefs; ties; gloves; shoes.

The opposition is directed against the following goods and services:

Class 10: Feeding bottles for babies; feeding bottle teats; disposable teats; feeding bottle valves; feeding aids and pacifiers; dummies [teats] for babies; neonatal pacifiers; dropper bottles for administering medication; feeding bottles; baby feeding dummies; teething soothers; clips for pacifiers; paediatric pacifiers.

Class 12: Children’s bicycles; tires for children’s bicycles; vehicle safety restraints for use with pram bodies; balance bicycles [vehicles]; fitted pushchair mosquito nets; pushchair covers and hoods; infants’ carriages with removable infant supports; harnesses for prams; fitted footmuffs for pushchairs; pushchair covers; fitted footmuffs for prams; child carrying seats for use in vehicles; vehicle booster seats for children; fold-up pushchairs; bags adapted for pushchairs; baskets for perambulators; prams; push scooters [vehicles]; pushchairs; safety seats for children, for vehicles; children’s bicycle seats; pushchairs for use with carry cots; harnesses for use with pushchairs; bicycles.

Class 20: Seat pads being parts of furniture; school furniture; furniture moldings; cocktail units [furniture]; storage shelves [furniture]; wooden furniture; furniture partitions of wood; furniture for children; fitted furniture; seating furniture; furniture of plastic materials; bathroom stools; seats; three piece suites [furniture]; wooden racks [furniture]; chairs with castor wheels; dressers [furniture]; inflatable furniture; household furniture; furniture of metal; doors made of plastic for furniture; doors for furniture; high chairs for babies; racks [furniture]; tables [furniture]; toy boxes [furniture]; boards in the nature of furniture; doors made of non-metallic materials for furniture; furniture chests; babies’ chairs; desks; pouffes [furniture]; furniture partitions; furniture parts; wooden shelving [furniture]; furniture; clothes hangers, clothes stands [furniture] and clothes hooks.

Class 21: Insulating flasks; vacuum jugs (non-electric -); thermally insulated flasks for household use.

Class 25: Sandals and beach shoes; children’s outerclothing; infants’ footwear; visors [headwear]; party hats [clothing]; walking shoes; one-piece clothing for infants and toddlers; leisurewear; outerclothing; linen clothing; long sleeved vests; shoes with hook and pile fastening tapes; outerclothing for boys; children’s footwear; training shoes; children’s wear; woven clothing; gabardines [clothing]; casual footwear; layettes [clothing]; shoulder wraps [clothing]; fingerless gloves; football shoes; knitted baby shoes; leisure shoes; roller shoes; turtlenecks; maternity clothing; weatherproof clothing; woolen clothing; bodies [clothing]; athletic shoes; babies’ outerclothing; shorts; baby clothes; loungewear.

Class 28: In-line roller skates.

Class 35: Retail services connected with the sale of clothing and clothing accessories; mail order retail services for clothing; retail services in relation to pushchairs; online retail services relating to clothing; administration of the business affairs of retail stores; retail store services in the field of clothing; mail order retail services connected with clothing accessories; retail services in relation to car accessories; retail services connected with the sale of furniture.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 12/02/2020 the opponent submitted the following evidence.

 A Wikipedia article on the ‘Hugo Boss’ company extracted in May 2018 (enclosure 1), stating the ‘company went public in 1985 and introduced a fragrance line that same year, added men’s and womenswear diffusion lines in 1997, a full women’s collection in 2000 as well as children’s clothing in 2008/2009, and has since evolved into a major global fashion house with more than 1,100 company-owned retail stores worldwide (2016)’. Moreover, it states that ‘Hugo Boss has at least 6,102 points of sale in 124 countries. Hugo Boss AG directly owns over 364 shops, 537 monobrand shops, and over 1,000 franchise-owned shops’ [where footnote 9 refers to ‘Chevalier, Michel (2012). Luxury Brand Management. Singapore: John Wiley & Sons. ISBN 978-1-118-17176-9’] and that in ‘2010, the company had sales of $2,345,850,000 and a net profit of $262,183,000 with royalties of 42% of total net profit’ [where footnote 11 refers to “Results of Operations in Fiscal Year 2009” (https://web.archive.org/web/20100902164539/http://annualreport.hugoboss.com/en/facts/results-of-operations-in-fiscal-year-2009.html). Hugo Boss AG. Archived from the original (http://annualreport.hugoboss.com/en/facts/results-of-operations-in-fiscal-year-2009.html) on 2 September 2010. Retrieved 13 February 2011.’]. ‘In June 2013, Jason Wu was named artistic director of Boss Womenswear’. ‘In 2017, the sales of Hugo Boss climbed by 7 percent during the final quarter of the year’ [where footnote 14 refers to ‘‘The Boss Is Back” (https://www.bloomberg.com/news/articles/2018-01-16/that-hugo-boss-suit-is-starting-tolook-less-crumpled). Bloomberg.com. 2018-01-16. Retrieved 2018-01-25’].

 Two online news articles from 2012 and 2014 (enclosures 2-3) mentioning the strength of ‘Hugo Boss’ in the fashion industry. In particular, the 2012 article from ‘wuv.de Advertising and Sales’ of 14/09/2012 (internet publication, Munich, with 1 489 823 visits) states that the ‘German fashion label can show an almost one hundred percent recognition’ and in ‘the overall ranking no other fashion label [than Hugo Boss] appears so attractive, modern and high in quality in comparison’. It refers to a ‘mafoScorecard’ from the 2012 BrandFeel Ranking in English where ‘BOSS’ had the highest ‘mafoScore’ with 6.9. The 2014 article from ‘Handelsblatt Online’ of 28/08/2014 (internet publication, Dusseldorf, with 14 356 891 visits) lists ‘Hugo Boss’ in ‘place 2’ (right after ‘Adidas’) under the largest men’s outfitters of Germany in the fashion industry. The article describes this fashion group as a born manufacturer of work clothes, employing at the time of the article more than 11 000 employees with sales of over EUR 2.3 billion in 2012 and willing to further expand its business.

 A survey on the mark’s recognition called ‘BOSS/HUGO – Results of Outfit 7.0’ (enclosure 4) from November 2011, conducted in Germany by ‘Spiegel QC’ in English. The sample consists of 5 671 people aged between 14-69 years old. The product sectors are clothing (92 brands) and wristwatches (55 brands). It gives figures for advertising expenditure in the clothing sector from 2001-2010 for different companies and in different media, with the ‘Hugo Boss’ company in the top 10 for advertising expenditure in 2010. According to this study, the brand awareness of the mark ‘BOSS’ in relation to clothing is 93 % and 26 % of the basic population possesses clothing from the ‘BOSS’ brand. ‘BOSS’ is also listed among the top 10 brand rankings under ‘Major sports brands are still the best-known’.

 A ‘mafoScorecard’ from BrandFeel in German (enclosure 5), which gives a ‘mafo score’ of 7.2 (out of 10) for the trade mark ‘BOSS’ in the fashion sector, and 9.8 (out of 10) for the mark’s awareness level, from a survey conducted in 2011 among 512 respondents.

 An online survey in eight key markets, including France, Germany, Italy, Spain and the United Kingdom, dated November 2011 (enclosure 6), conducted by the company ‘Werbestolz’ (Germany) in English. The study, named ‘Status of HUGO BOSS and Competitors – Awareness and Image of HUGO BOSS Product Lines’, was conducted among men aged 25-49 and women aged 21-49; the sample size of each market was from 1 004-1 015 participants, with a total of 8 074 participants. As far as spontaneous brand awareness (‘Which brands of clothing in the premium or luxury segment do you know, even if only by name?’) in all markets was concerned, the mark ‘HUGO BOSS’ came in eighth position, right after the mark ‘LOUIS VUITTON’ (page 17). In Germany, the mark appears in first position, in France in third position, in Italy in twelfth position, in Spain in eighth position and in the United Kingdom in sixth position (page 18). The study also provides relevant information on the aided awareness of the mark in the five EU countries, the brand possession, purchase intention, aided advertising recall and the awareness of different product lines under the ‘HUGO BOSS’ mark.

 A judgment from the District Court of Cologne, Germany (enclosure 7), dated September 1996, confirming that the mark ‘BOSS’ is well known in relation to clothing based on the facts and figures presented in conjunction with the documents submitted, reinforced by a private GFK survey of early 1994.

 A judgment from the Paris Court of First Instance (enclosure 8), dated March 2007, based on an opinion poll relating to the ‘BOSS/HUGO BOSS’ trade mark which leads to the court confirming that this is a ‘renowned’ trade mark.

 An excerpt in German of a print medium called ‘Markenprofile 12’ of the Stern Group (enclosure 9) allegedly from a study in Germany on fashion conducted in 2007, which shows that the trade mark ‘BOSS’ is known to 87 % of the survey participants.

 An affidavit signed by an employee of the opponent on 22/05/2018 (enclosure 10) on the net sales of the ‘HUGO BOSS Group’ in the years 2011-2015 in relation to ‘fashion and clothing accessories as well as bags and leather goods for adults in some exemplary countries of the European Union’ – which are steadily increasing and quite significant especially in Germany, the United Kingdom and France – and on the advertising expenditure for the mark ‘BOSS’ in some EU countries in 2013 and 2014, which reflects the sales figures, confirming the highest expenditures for Germany, the UK and France.

On 07/08/2020, after the expiry of the time limit, in reply to the applicant’s observations, the opponent submitted the following additional evidence.

 As enclosure 1, a copy of a range of goods offered by the German chemist ‘dm’, to demonstrate that the goods of the contested mark in Class 10 are sold in the same shops as the opponent’s goods (covered by another earlier mark registration for which reputation was not claimed by the opponent) in the same class, namely drugstores. The opponent states that ‘drugstores have an increasingly wide selection, and they carry all these goods in close proximity’. According to the opponent, the range of products offered by drugstores has expanded and is no longer limited to cosmetics and hygiene products.

 A PDF document in German allegedly on the sales increase of ‘Hugo Boss AG’ over recent years (enclosure 2). The attachment shows several graphs of statistics that should demonstrate the sales increase under the trade marks ‘BOSS’ and ‘HUGO’ and the opponent’s economic success. On page 13 of the dossier, according to the opponent, it can be seen that sales of the brand have increased steadily in recent years. The opponent further states that the ‘worldwide sales volume of the company Hugo Boss has increased from 2.06 billion to 2.9 billion in the years 2011-2019’. Pages 47-50 show, as explained by the opponent, the sales distribution of direct competitors. In popularity surveys, the opponent states, the ‘brand occupies top positions (page 55 of the enclosure) alongside comparably successful well-known brands such as Adidas’.

Even though, according to Article 7(2) EUTMDR, the opponent has to provide evidence of substantiation within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account.

According to Article 8(5) EUTMDR, where after the expiry of the period referred to in Article 7(1) EUTMDR, the opponent submits facts and evidence that supplement relevant facts or evidence submitted within that period and that relate to the same requirement laid down in Article 7(2) EUTMDR, the Office has to exercise the discretion conferred on it by Article 95(2) EUTMR in deciding whether to accept these supplementing facts or evidence. The Office must exercise its discretionary power if the late facts or evidence merely supplement, strengthen and clarify the prior relevant evidence submitted within the time limit that relate to the same legal requirement laid down in Article 7(2) EUTMDR, namely, when both sets of facts or evidence refer to the same earlier mark, to the same ground and, within the same ground, to the same requirement.

In exercising its discretion, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence. The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence.

In this regard, the Office considers that the opponent did submit relevant evidence within the time limit initially set by the Office, consequently it is not necessary to assess the second batch of evidence. In any event, even if this second batch of evidence were considered it would not change the findings concerning the reputation of the mark, for the reasons set out below.

On the basis of the evidence submitted within the time limit the Opposition Division concludes that the earlier trade mark has a reputation in the European Union for clothing for men, women and children (Class 25).

The survey conducted in 2011 shows a high spontaneous brand awareness of the earlier mark for clothing in a substantial part of the European Union, namely in France, Germany, Italy, Spain and the United Kingdom (enclosure 6). Furthermore, the brand awareness of the mark ‘BOSS’ in relation to clothing is 93 % in Germany, as can be inferred from the 2011 survey ‘BOSS/HUGO – Results of Outfit 7.0’ (enclosure 4). The German and French court decisions also recognise a certain degree of recognition of the mark (enclosures 7 and 8). Although it is true that they date back to 1996 and 2007, respectively, when viewed in conjunction with the materials as a whole, particularly with the surveys and news articles of 2012 and 2014, they do offer important, indirect information in the sense that they prove the longevity of the mark in a sector that has a high turnaround.

According to Article 7(2)(f) EUTMDR, the burden of putting forward and proving the relevant facts lies with the opponent, by expressly requiring it to provide evidence attesting that the earlier mark has a reputation for the goods and services claimed.

In this regard, the evidence is fairly limited and not necessarily updated, as also the applicant points out, and it is only the surveys, the decisions from two EU countries and the news articles that allow a finding of a certain reputation for some of the goods. The most recent enclosures are the Wikipedia extract and the affidavit of the opponent’s employee from 2018, with their relative evidential value as Wikipedia is not an official source and the affidavit stems from the opponent. Although reputation is usually built up over a number of years and cannot simply be switched on and off, if the period elapsed between the latest evidence of use and the filing of the EUTM application is quite significant, the relevance of the evidence should be carefully assessed by reference to the kind of goods and services concerned. The clothing market at issue is strongly tied to yearly seasons and to the different collections issued every quarter. This can lead to a possible loss of reputation in this particular field meaning the burden of proof is heavier.

The opponent submitted evidence for a number of EU Member States, although the evidence is most comprehensive and detailed with regard to Germany as most items and information were submitted with regard to this Member State. That said, the opponent also submitted evidence for some other countries, such as France, Italy, Spain and the UK. It is sufficient if the reputation exists in a substantial part of the EU (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 28; 06/10/2009, C‑301/07, Pago, EU:C:2009:611, § 30) and a reputation proven in Germany is already sufficient to assume a reputation in the whole of the EU (considering that in the ‘Chevy’ and ‘Pago’ judgments the territories of the Benelux and Austria were considered to be sufficient), let alone France, Germany, Italy, Spain and the UK which would inevitably be sufficient.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence relates mainly to clothing for men, women and children, whereas there is little or no reference to the remaining goods in Class 25. This is clear, for example, from the news articles and the online survey conducted by ‘Werbestolz’, where only clothing, or the broader term ‘fashion’, is mentioned.

For the sake of completeness, it is noted that even had the second batch of evidence been considered, it would not have changed the aforementioned finding. Indeed, this batch relates to the same goods and only shows a sales volume increase in the most recent years, and the only relation is with ‘Adidas’. Since it does not reveal any further or more recent information as to the degree of recognition of the earlier mark among the relevant public, the finding of a ‘certain degree of reputation’ would not be changed.

b) The signs

BOSS
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 earlier mark is a word mark, consisting of the sole verbal term ‘BOSS’. As regards word marks, it must be noted that their protection applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant that the earlier trade mark is depicted in upper-case letters.

The contested sign is a figurative mark, composed of the letters ‘B*SS’ depicted in stylised white letters, positioned underneath the term ‘little’ in italic white letters, in a significantly smaller size. The applicant itself does not exclude that there is the possibility that the contested sign is deemed to be largely perceived as ‘little BOSS’. In fact, a significant part of the public will see the dummy represented between the letter ‘B’ and the letters ‘SS’ as the letter ‘O’ to form the word ‘BOSS’. Since some of the contested goods are pacifiers and some other goods and services at issue relate to children’s bicycles, pushchairs, furniture, clothing and footwear, this element is descriptive of the nature or the characteristics of these goods and services (for babies), and therefore weak at best in relation to such goods and related services. For the remaining goods and services for which it will be perceived as a stylisation of one single letter (‘O’) in the middle of the term ‘BOSS’, it is still not overly distinctive since it fulfils a fairly decorative role, in one single letter, within the overall impression of the sign as a whole. 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). As regards the few remaining figurative aspects of the contested sign (limited to an italicised, stylised white font against a black rectangular background and the superposition of the verbal elements), these will be perceived as being of a decorative nature and are not able to have a significant impact on consumers.

On account of its size and position, the element ‘BOSS’ is more dominant (visually eye-catching) than the element ‘little’.

The common element ‘BOSS’ of the signs is an English word which will be understood by a part of the public to refer to ‘the person who is in charge of an organisation and who tells others what to do’ (information extracted from Cambridge Dictionary on 24/09/2020 at https://dictionary.cambridge.org/dictionary/english/boss?q=boss_1). Another part of the public in the EU will not understand it. As regards its distinctiveness, the word ‘BOSS’ in any event does not have any meaning related with the goods and services in question and it is thus considered to be of normal distinctiveness. In contrast, the word ‘little’ of the contested sign is a basic English word that will describe, it being an adjective, the characteristics of the goods and services at issue, for example relating to goods for children or that are small in size (29/03/2007, R 750/2006‑1, CAROLE LITTLE / CAROLL, § 20). Therefore, in relation to the relevant goods and services, this element is weak at best.

The applicant claims that while the earlier mark refers to the name of the opponent’s founder, the contested sign refers to a ‘baby boss’ or a ‘little baby boss’, due to the meaning of ‘BOSS’ as a ‘chief, manager, governing authority’, combined with the verbal element ‘little’ and the figurative element of a ‘pacifier’. However, it cannot be excluded that both verbal elements ‘BOSS’ of both signs at issue will be perceived by a significant part of the public as having the same meaning of ‘chief’ or ‘manager’, to which the concepts of ‘little’ and ‘pacifier’ have been added in the contested sign. In order to avoid many possible interpretations of the common element of the signs, the Opposition Division will focus on this significant part of the public.

Visually and aurally, the signs coincide in the verbal element ‘BOSS’, which is normally distinctive. However, they differ in the additional elements of the contested sign, namely the stylisation of the letters, in particular the dummy which will be partly perceived as the letter ‘O’, the black rectangular background and the verbal element ‘little’, which are not present in the earlier mark but which are weak at best and/or with less impact on the perception of the sign.

Therefore, the signs are visually similar to an average degree and aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the significant part of the public which will interpret ‘BOSS’ in both marks in the same way, the signs coincide in this meaning and the contested sign’s additional ‘little’ is weak at best. Therefore, the signs are conceptually similar to an above-average degree.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are visually similar to an average degree and aurally and conceptually similar to an above-average degree. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods or services covered by the trade marks in dispute are the same or overlap to some extent. In the present case, the relevant section of the public for the goods and services covered by the conflicting signs is the same or overlaps to some extent. All the contested goods and services may be sold to customers buying also the opponent’s clothing. The earlier mark ‘BOSS’ enjoys a certain degree of reputation for clothing for men, women and children. Furthermore, it is inherently distinctive to a normal degree for these goods.

The signs are visually similar to an average degree and aurally and conceptually similar to an above-average degree due to the fact that the earlier mark is entirely included in the contested sign, of which it also is the most distinctive element and has the highest impact within the sign.

As seen above, the earlier mark enjoys a certain degree of reputation in view of its long-standing use in the relevant territory. Moreover, the earlier mark is distinctive per se, as regards the goods covered by the earlier mark, as outlined above. For the purposes of assessing whether there is a link between the marks at issue, the degree of the earlier mark’s distinctive character must be taken into consideration.

Another factor to consider when assessing whether there is a ‘link’ between the signs is the relevant goods and services. The goods for which the earlier mark has a reputation are clothing for men, women and children. The main purpose of the opponent’s reputed goods is to cover and protect various parts of the human body against the elements. They are also articles of fashion. The contested goods and services are in Class 10 (mainly feeding bottles for babies and their teats and valves, pacifiers and their clips and teething soothers), Class 12 (mainly children’s bicycles, including balance bicycles and their tires; prams, pushchairs and their parts and accessories – such as vehicle safety restraints for use with pram bodies, fitted pushchair mosquito nets; pushchair covers and hoods; infants’ carriages with removable infant supports; harnesses for prams; fitted footmuffs for pushchairs; pushchair covers, fold-up pushchairs; bags adapted for pushchairs; baskets for perambulators –; child carrying seats for use in vehicles; push scooters [vehicles]; and bicycles and children’s bicycle seats), Class 20 (mainly furniture and their parts, adapted for school, for children, for cocktail units, for storage, for seating, for the bathroom, made of wooden, of plastic materials, of metal; chairs for babies; clothes hangers, clothes stands [furniture] and clothes hooks), Class 21 (mainly thermally insulated flasks for household use), Class 25 (mainly various shoes, headwear and clothing, children’s and baby clothing and footwear), Class 28 (in-line roller skates) and Class 35 (mainly retail services connected with the sale of clothing and clothing accessories, also in the form of mail order, online, retail store, retail services in relation to pushchairs, administration of the business affairs of retail stores, retail services in relation to car accessories and retail services connected with the sale of furniture).

The contested goods in Class 25 clearly overlap with the opponent’s reputed goods and are identical or at least similar. Consumers, when seeking to purchase clothes, will expect to find footwear and headgear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items.

The contested retail services in Class 35 in the clothing and clothing accessories field, including the administration of the business affairs of retail stores that can include the clothing sector, are also in the same area of business of the opponent’s reputed goods. Moreover, retail services concerning the sale of specific goods are considered similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places where the goods are offered for sale. Furthermore, they are directed at the same public.

The rest of the contested goods and services, although being dissimilar to the opponent’s clothing for men, women and children according to the Canon criteria, target the same public at large. As the opponent correctly underlines, its mark has an image of quality and luxury. It has to be borne in mind too, that the opponent is active in various fields, using its core mark ‘BOSS’ for instance for wristwatches (as seen in the survey of enclosure 4 above). Therefore, the opponent and its core mark ‘BOSS’ are known to be active in various fields that go beyond the apparel market, and that the general public is thus used to the fact that it might encounter the mark ‘BOSS’ in other sectors as well.

The contested in-line roller skates in Class 28, push scooters [vehicles] and bicycles in Class 12 are involved in or relate to outdoor or fitness activities or, in a broader sense, to recreational activities, and therefore may be sold in similar outlets or distributed through similar channels as those goods in the fields of sports or outdoor activities, or may be easily associated with such goods because of their connection with such activities. The opponent’s reputed mark covers clothing, which would include sports clothing. Nowadays, relevant consumers are indeed accustomed to seeing clothing for sale in sports shops, for instance a bicycle shop, together with e-bikes, scooters, sporting equipment and accessories. It has also become popular and very common nowadays for many fashion brands, especially luxury brands, to branch out into sporting, fitness and streetwear and enter into collaboration with sports giants, and sponsor sporting events and products. The specific items of apparel marketed in this manner are not limited to clothing worn while exercising, but may extend to clothing worn at other times of the day or night such as coats, jackets or streetwear in representation of a certain active lifestyle, for example, riding a push scooter or bicycle (04/05/2020, R 1525/2019‑2, CITY BOSS (fig.) / Boss, § 69). Therefore, on the market, these goods may coincide in producer, relevant public and distribution channel. Thus, overall there is a sufficient proximity between the goods in respect of which the opponent’s mark enjoys reputation and these contested goods.

Moreover, it is not uncommon for successful clothing companies to expand to the household items market, and therefore it is not far-fetched to assume that the public might believe that the opponent pushes forward also into the market of high-quality/luxury household utensils in Class 21, such as flasks and jugs.

With respect in particular to the contested clothes hangers, clothes stands [furniture] and clothes hooks in Class 20, these are usually present in shops where the opponent’s reputed clothing is sold, and clothes hangers are usually marked with the clothing trade mark. Therefore, a certain proximity of these goods cannot be denied. In relation with the remaining contested goods in the field of furniture in Class 20 and the contested furniture retail in Class 35, it cannot be denied that several renowned brands have extended their range from clothing to furniture and to interior decoration accessories, that cooperation between the interior design industry and fashion designers is not unusual among the renowned brands and that many magazines initially dedicated to the fashion sector also cover that of interior design. Therefore, even if those goods and services are dissimilar according to the Canon criteria, this does not preclude a finding of a certain proximity between these goods and services and the opponent’s reputed clothing for children, especially considering that many contested goods are intended for children (e.g. furniture for children, high chairs for babies, toy boxes [furniture] and babies’ chairs) or can include, as broad categories, furniture for children (e.g. wooden furniture, seating furniture and furniture of plastic materials) and nowadays it is quite usual that clothing shops add some pieces of children furniture.

Furthermore, the contested children’s bicycles; tires for children’s bicycles; vehicle safety restraints for use with pram bodies; balance bicycles [vehicles]; fitted pushchair mosquito nets; pushchair covers and hoods; infants’ carriages with removable infant supports; harnesses for prams; fitted footmuffs for pushchairs; pushchair covers; fitted footmuffs for prams; child carrying seats for use in vehicles; vehicle booster seats for children; fold-up pushchairs; bags adapted for pushchairs; baskets for perambulators; prams; pushchairs; safety seats for children, for vehicles; children’s bicycle seats; pushchairs for use with carry cots; harnesses for use with pushchairs in Class 12 and the related contested retail services in relation to pushchairs and retail services in relation to car accessories (that can broadly include vehicle seats for children) in Class 35, and the contested feeding bottles for babies; feeding bottle teats; disposable teats; feeding bottle valves; feeding aids and pacifiers; dummies [teats] for babies; neonatal pacifiers; dropper bottles for administering medication; feeding bottles; baby feeding dummies; teething soothers; clips for pacifiers; paediatric pacifiers in Class 10 can all be offered in the same retail stores such as children’s shops and, therefore, be directed at the same section of the public as the opponent’s reputed clothing for children.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested sign, the relevant consumers will be likely to associate it with the earlier mark, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following:

that the earlier trade mark enjoys a particularly positive image of quality and luxury among market participants. Therefore, it should be in a position to enjoy the fruits of investment in marketing activities and promotion of its brand.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

 First, the owner shall be in a position to enjoy the fruits of investment in marketing activities and promotion of its brand. These investments should be protected against ‘freeloading’ by exploitation of those earlier investments through use of a similar name.

 Second, the trade mark owner’s investment in a positive qualitative reputation of its brand should be protected as well. Such positive qualitative reputation can only be achieved through rigorous quality control, a commitment to the highest product standards as well as responsive and flexible customer service in order to maintain brand loyalty, all of which have to be kept up for a considerable time. This aspect of the reputation is in danger, when the relevant public associates a product which is not under the control of the owner of the reputable brand with this earlier trade mark.

According to the Court of Justice of the European Union:

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

As outlined above, the opponent has established a certain reputation of the earlier mark, in that it conveys a positive image of quality and luxury. The earlier mark’s reputed goods share a sufficiently close connection with the abovementioned contested goods and services.

In view of the reputation of the earlier mark and also considering the similarities between the signs, it is considered that the lower degree of closeness between the reputed goods and some of the contested goods and services listed above is in any event sufficient to trigger a mental link and remind of the earlier mark since clothing companies, such as the opponent’s, have rather diversified profiles and operate on several interconnected markets.

It is noted that the proprietor of the earlier mark only needs to demonstrate prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 40).

It must be also recalled that the protection under Article 8(5) EUTMR extends to all cases where the use of the contested trade mark applied for is likely to have an adverse effect on the earlier mark, in the sense that it is, inter alia, likely to result in misappropriation of the powers of attraction or exploitation of the earlier mark’s image and prestige (unfair advantage of the distinctive character or repute).

Furthermore, taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T‑128/06, Camelo, EU:T:2008:22, § 46).

Therefore, taking into account all the relevant factors listed above, it cannot be ruled out that through the use of the contested sign the applicant may benefit from the attractiveness of the earlier mark and exploit the marketing effort expended by the opponent in order to develop its brand in such way and build up an image of excellence, for which it did not pay any financial compensation.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Due Cause

As mentioned above, the applicant claims to have due cause for using the contested trade mark.

According to the applicant, the earlier trade mark coexists on the market with at least 20 other EUTMs, bearing an identical sign and provides an attached list extracted from ‘TMview’ in support.

The applicant’s claim is not well founded. The existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘BOSS’. Under these circumstances, the applicant’s claim must be set aside.

On the basis of the above, the Opposition Division considers that the applicant does not have due cause for using the contested trade mark.

f) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods and services.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining ground and earlier rights on which the opposition was based.

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

Karin KLÜPFEL

Valeria ANCHINI

Monika CISZEWSKA

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.