OPPOSITION Nо B 3 091 055

 

Original Buff S.A., c/ França, 16, 08700 Igualada, Barcelona, Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative) 

 

a g a i n s t

 

Trerè Innovation S.r.l., Via Modena,18, 46041 Asola (mantova), Italy (applicant), represented by Lucia Malgarini, Via Divisione Acqui N. 8h, 46044 Goito (mantova), Italy (professional representative).

On 03/11/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1. Opposition No B 3 091 055 is partially upheld, namely for the following contested goods:

Class 25: Socks for men, women and children; socks; socks; sports socks for men, women and children; underwear; sportswear; rainproof clothing; casualwear; clothing for men, women, and children; articles of sports clothing; skiwear; technical performance clothing for sports; articles of leisure clothing; coats; jackets [clothing]; heavy jackets; trousers; trousers shorts; sweat shirts; jumpers; sweaters; undershirts; tee-shirts; sashes for wear; gloves [clothing]; berets; bonnets; hats; waist belts; shoes; footwear for men and women; children's footwear; footwear.

2. European Union trade mark application No 18 018 233 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 049 005  (figurative mark). The opposition is based on European Union trade mark registrations No 10 496 321 for the figurative mark , No 10 496 404 for the figurative mark and No 17 137 019 for the figurative mark in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. It is also based on European Union trade mark registration No 15 955 751 for the figurative mark in relation to which the opponent only invoked Article 8(1)(b) EUTMR. Furthermore, the opposition is also based on European Union trade mark registration No 9 201 856 for the word mark ‘BUFF’ in relation to which the opponent invoked Article 8(1)(a) and Article 8(5) EUTMR.

NON-ADMISSIBILITY OF SOME EARLIER RIGHTS

In addition to the above earlier rights identified in the notice of opposition, the opponent submitted arguments within the time-limit to complete the opposition where it is expressly indicated that ‘from the annexed documents, it follows that the earlier marks “BUFF” are well-known marks according the article 6bis of the Paris Convention for the Protection of Industrial Property and article 8(5) EUTMR, not only in Spain, but also in the European Union territory’.

The notice of opposition does not contain any indication that the opposition is also based on any trade mark which is well known in a Member State in the sense in which the words ‘well-known' are used in Article 6bis of the Paris Convention, i.e. Article 8(2)(c) EUTMR.

Considering that the opponent must clearly identify all the earlier rights on which the opposition is based within a period of three months following the publication of the EUTM application (Article 46(1) EUMTR) and in this case this time limit expired on 22/08/2019, the claim of additional earlier well-known trade marks within the meaning of Article 8(2)(c) EUTMR and Article 6bis of the Paris Convention contained in the opponent’s observations for completing the opposition on 13/01/2020 is inadmissible and cannot be taken into consideration (Article 2(2)(b)(ii) and Article 5(3) EUTMDR).

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to European Union trade mark registration No 10 496 321 for the figurative mark which the opponent claimed enjoys reputation in the European Union.

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 above mentioned 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 did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has reputation in the European Union for the following goods:

Class 25: Ready-made clothing, including underwear and outerwear; Headscarves (not included in other classes), caps, footwear (except orthopaedic footwear) and headgear.

The applicant argues that the expressions for which the earlier mark is registered are inaccurate and indefinite since it is practically impossible not to fall into these macro categories. It claims that the application is detailed and precisely correlated.

To these arguments it must be noted that ‘ready-made clothing, including underwear and outerwear’ is a sufficiently clear and precise wording of the goods for which the earlier mark is registered. The natural and usual meaning of the term clothing is garments for humans with the purpose of covering the body for normal use and the fact that they are ready-made only add that they do not need any further manufacture in order to be worn. As a consequence therefore, it is an acceptable wording which is even still included in the alphabetical list of the goods concerned in the currently in force eleventh edition of the Nice Classification of goods and services applied for the registration of marks. This reasoning is also valid for the rest of the goods for which the earlier mark is registered which are sufficiently clear and precise.

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 specialized public.

In the present case, the contested trade mark was filed on 09/04/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based 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: Ready-made clothing, including underwear and outerwear; Headscarves (not included in other classes), caps, footwear (except orthopaedic footwear) and headgear.

The opposition is directed against the following goods:

Class 23: Yarns and threads; Textile yarns; Elastic thread; Synthetic threads; Natural yarns; Mixed spun threads and yarns; Textile yarns made of man-made fibres.

Class 24: Fabrics; Non-woven textile fabrics; Waterproof textile fabrics; Elastic woven material; Breathable waterproof fabrics; Apparel fabrics; Knitted fabric; Mixed fiber fabrics; Elastic fabrics for clothing; Structured fabrics being technical sportswear; Fabrics for textile use; Knitted elastic fabrics for sportswear; Textiles impervious to water but permeable to moisture; Covered fabrics for waterproof clothing; Breathable fabrics; Technical textiles for sportswear; Textiles of fibre for manufacturing technical sportswear.

Class 25: Socks for men, women and children; Socks; Socks; Sports socks for men, women and children; Underwear; Sportswear; Rainproof clothing; Casualwear; Clothing for men, women, and children; Articles of sports clothing; Skiwear; Technical performance clothing for sports; Articles of leisure clothing; Coats; Jackets [clothing]; Heavy jackets; Trousers; Trousers shorts; Sweat shirts; Jumpers; Sweaters; Undershirts; Tee-shirts; Sashes for wear; Gloves [clothing]; Berets; Bonnets; Hats; Waist belts; Shoes; Footwear for men and women; Children's footwear; Footwear.

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.

The opponent submitted evidence to support the reputation of the earlier mark on 13/01/2020.

It requested that certain commercial data contained in the evidence submitted as Annexes 4 and 5 be kept confidential vis-à-vis third parties. The Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

Annex 1: Extract from TMview with a list of the opponent’s registered trade marks for ‘BUFF’ in the European Union and also in other countries such as the United States of America, Japan, Russia and Mexico, among others.

Annexes 2 and 3: Certifications issued in April and October 2010 from Barcelona and Madrid Chambers of Commerce stating that ‘BUFF’ is sufficiently known in the market as a trade mark for bandanas (neckerchiefs) in the relevant places.

Annexes 4 (confidential): Three declarations made by the Head of Finance and Administration of the opponent containing information on sales and turnover made by products identified with the sign ‘BUFF’. The first one issued in 2016 refers to the period between 2009-2015 and breaks down figures into sales in Spain and abroad. The other two dated in 2018 contain information on sales figures for the financial years 2016/2017 and 2017/2018 for Spain and the other territories of the European Union broken down by country.

Annex 5 (confidential): Three declarations made by the Head of Finance and Administration of the opponent on advertising expenditures, one dated 2016 with information for Spain and abroad for the period between 2009‑2015. The other two dated 2018 refer to the period of 2016-2018 and broken down in advertising figures by the different countries of the European Union.

Annex 6: A large selection of press news and promotional material concerning the sign ‘BUFF’, extracts from Spanish newspapers and publications dated between 2011 and 2015. These documents show promotional material of goods labelled with the sign ‘BUFF’ in various forms such as

BUFF ®

mainly concerning tube scarfs and other head and neck apparel.

There are various extracts of Spanish magazines dealing with different outdoor sports (trekking, climbing, skiing) but also for nature lovers [Desnivel or Campo Base (mountain and trekking – revistas de montaña); Oxigeno (Sport and nature - deporte y naturaleza); Finisher Triatlon; Grandes Espacios (Active tourism)]. Other more general clippings and promotional materials or printed fashion publications are also submitted where either news or promotional evidence of the opponent’s goods and trade mark ‘BUFF’ are shown (Glamour, QC, Shopping, Hola and Diez Minutos).

Catalogues, photos and evidence concerning the participation of the opponent at the ISPO Trade Fair for sport business in Munich (Germany) from 2009 up to 2018 where the opponent appears at the list of exhibitors and also at the Outdoor Friedrichshafen Fair from 2013, 2015-2017. Other promotional press material of the opponent’s goods in different relevant territories such as in the Benelux are also submitted (sponsorship of a race (surfski) in 2016; or sponsoring the BUFF team, Epic Trial AigüesTortes, (although this latter document is undated). For the United Kingdom there are various press and media activities reports in 2016 and 2017 where the opponent’s goods multifunctional headwear apparel and caps are promoted and/or advertised in different sport magazines such as ‘Running Fitness’, ‘running’ and ‘women’s running’.

Annex 7: Photographs from the ‘BUFF’ store at Barcelona airport.

Annex 8: Press clippings and news on sponsorships by the opponent of different races, events as well as sport and cultural related activities in Spain, among others, Buff Mountain Festival 2018; Philpark Pata Negra 2012 (freeski); KTM Buff Team (formula twin in motorbike); Hockey team in Igualada 2013; or the organisation of a concert within a bus in Barcelona. List of the opponent’s ambassadors indicating dates on which they were engaged in this activity for the opponent (2013-2017). They are leading and outstanding sports persons in various outdoor sports such as Trial Running, MTB, freeride MTB, cycling, motorbike, climbing, snowboard or ski who promote and wear goods with the 'BUFF' sign.

Extracts from the opponent’s catalogue for kids and adults entitled ‘Licenses Collection’ showing ‘BUFF' branded neck tubulars or headbands together with the brands of leading sports persons or companies and football teams like Anton Krupicka, Marc Márquez, National Geographic, FC Barcelona, Marvel, Star Wars or Disney such as:

Although those documents are not dated as such, a reference to the equipment for seasons 16/17 and 17/18 is included.

Annex 9: Extracts from the opponent’s web page (www.buff.com) and its blog dated between 2016 and 2018 containing information about the sponsorship activities of the opponent in various sports as well as promotional news on different goods launched (folding back caps, UV multifunctional, tubular specially designed for security forces, firefighter balaclavas or urban running collection; more environmental friendly and sustainable material in the manufacture of multifunctional headwear).

The certifications of the Chambers of Commerce of Madrid and Barcelona indicate that the mark ‘BUFF’ is [sufficiently] known for ‘bandanas’ (neckerchiefs) in their respective marketplace. Nevertheless, the degree of knowledge has not been specifically qualified or ranked (Annexes 2 and 3).

The turnover figures and volume of sales in Spain and other territories of the European Union of goods with the mark ‘BUFF’ (Annex 4), although they are not broken down by the kind of products sold, and appear in a document drawn up by someone linked to the opponent, they refer to a very significant amount of sales from 2009 until 2015, but also in subsequent years with additional information on the turnover figures for 2016 until 2018.

Annexes 6, 8 and 9 contain articles and information regarding the brand, in media of wide diffusion in the Spanish territory, for example the newspaper La Vanguardia Digital, or magazines such as Diez Minutos, Cosmopolitan, Vogue Collection, etc. These are media of widespread coverage. In these articles, dated prior to the filing date of the contested trade mark, details can be extracted that confirm the high level of knowledge of the trade mark in Spain, among other things, due to the large number of sponsored events, especially sports and music, as well as advertising campaigns, many of them carried out by well-known actors, presenters and models promoting the trade mark 'BUFF'. These articles confirm the advertising efforts made to make the brand known to the public.

Thus, the investments on promotion and advertising of the opponent’s goods indicated in the declarations submitted as Annex 5 are to be confirmed by the widespread presence of the opponent’s goods in various specialized magazines in outdoors sports and activities as well as by the presence in other publications and press media dealing with more general subjects (Annexes 6 and 8). Those articles confirm the advertising efforts made by the opponent to promote its sign and make it known to the public. There is even one article in the newspaper ‘La Vanguardia’ from January 2012 where a recognition of the success of the sign is contained when it indicates that ‘the exit of a product has a less pleasant side, the copies’.

Thus, although it is admitted that most of the press media and advertising material submitted as to the territory of Spain concerns the period between 2011 and 2015, ending a few years back before the filing date, other additional evidence submitted concerning the subsequent years suggest that the success on sales and advertising efforts have continued, see to that extent Annexes 8 and 9.

The Opposition Division therefore considers that there is no reason to believe that the certain degree of reputation shown by the evidence concerning the previous years was not still maintained in the preceding years to the filing date of the contested sign.

The opponent also expressly refers to a previous opposition decision issued on 11/12/2017, namely B 2 842 972 / , where a certain reputation of the earlier trade mark was considered proven. The turnover and sales figures as well as the advertising figures between 2016 and 2018 have not decreased according to the declarations submitted (Annexes 4 and 5), but to the contrary they had been not only stable but increased significantly. More recent evidence on constant and widespread presence in the market of the earlier mark is supported with some of the documents produced as Annex 8 and 9 where promotional and sponsor activities were still performed by the opponent with the earlier mark in 2017 and 2018 (Buff Mountain Festival 2018; opponent’s ambassadors leading and well-known sport personalities; or opponent’s goods promoting various sports events or teams such as Le Tour de France, FC Barcelona and MotoGP Championship).

The notable amount of evidence submitted by the opponent but also the nature and scale of the promotional activities undertaken leaves no doubt that the figurative mark (or other variations of the sign) has been subject to long-standing and intensive use holding a solid position in the market sector of headwear and tubular scarfs or neckerchiefs. These activities are suitable to build up a certain brand image among the public, in the case at hand, an image of outdoors and nature activities for sports lovers (as shown by the evidence submitted, e.g. in Annex 9 where there are indications on this brand image ‘the Original reborn; our iconic product now more sustainable, comfortable and more protective’).

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.

Nevertheless, the evidence furnished has not demonstrated the trade mark’s reputation in relation to all of the goods on which the opposition is based, and for which reputation has been claimed. Having examined the material mentioned above, the Opposition Division considers that the earlier trade mark has acquired an enhanced distinctive character and a certain reputation through its use in the market for ready-made clothing, including underwear and outerwear; headscarves (not included in other classes), caps and headgear. To this extent the headgear and multifunctional bandanas or neckerchiefs that essentially appear in the evidence are encompassed by these terms.

No evidence of use or any recognition has been provided in relation to the rest of the goods for which reputation was also claimed, i.e. footwear (except orthopaedic footwear.

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.

b) The signs

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 degree of similarity required under Article 8(1)(b) EUTMR, on the one hand, and Article 8(5) EUTMR, on the other, is different. Whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is, to establish a link between them (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 27, 29, 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 57, 58, 66).

The verbal element ‘BUFF’ of the earlier trade mark is a polysemic term identifying in English language, among other concepts, the abbreviation of ‘buffet’, a pale brown colour, someone knowing a lot about a particular subject or in good physical shape (extracted from www.dictionary.cambridge.org on 25/09/2020 https://dictionary.cambridge.org/es-LA/dictionary/english/buff).

As regards the contested sign, although it contains a single verbal element 'BUFFERSHELL’, the English-speaking part of the relevant consumers will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Here it would be split into ‘BUFFER’, as something that helps protecting from harm, and ‘SHELL’ as the outer covering of something, especially nuts, eggs and some animals (extracted from www.dictionary.cambridge.org on 25/09/2020 https://dictionary.cambridge.org/dictionary/english/buffer; https://dictionary.cambridge.org/dictionary/english/shell). Therefore the idea conveyed by the contested sign to English-speaking consumer is the one of a protective shell.

Hence, contrary to the opponent’s arguments, for this public it is 'buffer' that qualifies the substantive ‘shell’ and not the other way around as claimed by the opponent.

However, neither ‘BUFF’ nor ‘BUFFERSHELL’ would be associated with any relevant meaning for the goods in question by the relevant public in other territories of the European Union. Therefore, both of these verbal elements are distinctive for this part of the public.

An eventual conceptual difference between the signs could help consumers to more easily distinguish between them, thus, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of relevant public that would neither associate ‘BUFF’ nor ‘BUFFERSHELL’ with any meaning for the goods in question, for example on the Spanish-speaking part in the relevant territory.

This is the most advantageous scenario for the opponent, namely that both signs would be perceived as meaningless words for all the relevant goods, since ‘BUFF’ and ‘BUFFERSHELL’ would not be associated with any common concept in any of the relevant languages of the European Union.

Spain is also the territory where, in accordance with the evidence produced by the opponent, the earlier mark has been more intensively used and the part of the relevant territory in which an enhanced distinctive character and a certain reputation of the earlier marks was proven. As a result, it is also appropriate for these reasons to focus the assessment on the Spanish-speaking part of the public in the relevant territory.

As to the circular element framing the earlier figurative mark it is a commonly used basic figure in trade on distinctive signs as to emphasise the verbal element. It would not be seen by the public as endowed with distinctive character. With regard to the particular typeface of the term ‘Buff’ in the earlier mark, this font slightly going upward does not detract consumers from the importance of the word ‘Buff’ in the sign which remains clearly legible in its overall impression. Furthermore, the rectangular black background in the contested sign is also non-distinctive since it is a decorative element which merely serves to highlight the verbal element contained in that sign.

Visually, the signs are similar to the extent that they coincide in the letter combination ‘B-U-F-F-”, meaning that the whole verbal element of the earlier mark is included at the beginning of the contested sign.

They differ in that the earlier mark also has other letters juxtaposed to the common part ‘-E-R-S-H-E-L-L’, that the contested sign is superimposed on a dark rectangular background, but most striking that the earlier mark is a fairly short word of four letters whereas the contested sign is a much longer sign composed of eleven letters.

Although consumers generally tend to focus at the beginning of a sign when they encounter a trade mark, and here the initial parts of both signs reproduce the same combination of letters ‘B-U-F-F’, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that the examination of the similarity of trade marks must take into account the overall impression produced by them, since the average consumer normally perceives a sign as a whole and does not examine its individual details (07/10/2010, T‑244/09, Acsensa, EU:T:2010:430, § 23; 16/05/2007, T‑158/05, Alltrek, EU:T:2007:143, § 70; 27/06/2012, T-344/09, ‘Cosmobelleza’, EU:T:2013:40, § 52).

Nevertheless, the figurative elements of the respective signs (the circular frame and rectangular background) are non-distinctive as such as explained above and the stylisation of their verbal elements will not detract the consumers’ attention away from those verbal elements themselves as also explained.

In view of the above considerations, the signs are only visually similar to a low degree.

Aurally, the earlier mark will be pronounced as a monosyllabic word ‘BUFF’ while the contested sign will be phonetically reproduced in three syllables, namely ‘BUFF-ER-SHELL’.

The important differences in the number and sequence of syllables of the signs in question implies a relevant divergence in their rhythm and intonation, mostly considering that the earlier mark has one single sound whereas the contested sign contains two additional syllables.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the part of the public under analysis where neither ‘BUFF’ nor ‘BUFFERSHELL’ would be linked with any particular concept. As a consequence thereof, the conceptual comparison is neutral and has no impact in the assessment of the similarity between the signs in relation to those goods.

For all the above reasons, the arguments submitted by the applicant claiming that the signs are dissimilar are not persuasive and cannot change the findings reached above.

Taking into account that the signs have been found lowly similar at the visual and phonetic aspects, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

As seen above, the earlier mark has a certain degree of reputation for some of the goods for which reputation was claimed and the signs are visually and aurally similar to a low 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 in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 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.

As regards the degree of similarity between the marks at issue, it is clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (see, to that effect, judgment of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 67 to § 69; and judgment of 18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, §  44). Moreover, the stronger the distinctive character of the earlier mark, the more likely it is that, when confronted with a later similar mark, the relevant public will associate it with that earlier mark.

Therefore, it is in the light of the abovementioned jurisprudence that the opponent’s claims must be examined.

The infringements referred to in Article 8(5) EUTMR, where they occur, are the consequence of a certain degree of similarity between the trade mark applied for and the earlier trade mark, by virtue of which the public concerned makes a connection between them, that is, establishes a link between them even though it does not confuse them (25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 41 and the case-law cited; 12/11/2009, T‑438/07, SpagO, EU:T:2009:434, § 15).

The similarity between the signs was qualified as low from the visual and phonetic perspective considering that the signs have a clearly different structure, length, rhythm and intonation and that consumers perceives the signs as a whole. Nevertheless, the verbal element ‘BUFF’ of the earlier mark appears completely reproduced at the beginning of the contested sign..

As regards the distinctiveness of the earlier mark, the word ‘BUFF’ is inherently distinctive for the goods in relation to which a certain degree of reputation has been proven as set out above in section a) of this decision and has gained an enhanced distinctiveness for those goods.

As regards the contested goods in Class 25 consisting of different clothing, headgear and footwear articles, they are either identical or similar to the goods for which a certain degree of reputation has been proven, which are also articles of clothing and headgear. These goods, if not identical, at least share the same purpose in the sense that they are used for covering and protecting parts of the human body and for fashion. Furthermore, they are often found in the same retail outlets and target the same public. Consumers looking for clothing articles will expect to find footwear articles in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear.

Thus, even if the signs are similar only to a low degree overall and only a certain reputation of the earlier mark has been proven, it cannot be excluded that the contested sign would bring to mind the opponent’s mark when used in relation to identical or similar goods. In fact, many of the contested goods are intended to be worn while practising sports outdoors, which is the commercial sector where the earlier mark has been shown to have a strong visibility and been put to long-standing and intensive use.

However, even if the contested goods in Classes 23 (yarns and threads) and 24 (fabrics) belong to neighbouring sectors to the one of clothing and headgear of the earlier mark to the extent that they are intermediate materials or other goods used in the manufacture of the opponent’s goods in Class 25, these goods are dissimilar.

They serve completely different purposes, have different methods of use, do not coincide in their distribution channels and sales outlets and are not usually manufactured by the same undertakings. Thus, clothing is meant to be worn by people, for protection against the elements and/or fashion, whereas yarns and threads in Class 23 as well as the fabrics in Class 24 are used in sewing, weaving and knitting to make clothing or other goods made of textile.

These goods are not usually goods that are in competition with each other either, not even in the case of textiles used for clothing, as in the mind of the average consumer who wants to buy an item of clothing, buying a piece of fabric (non-finished product) to then make the item of clothing is not a usual alternative. The goods in question are not even complementary, that is to say, connected in the sense that some are indispensable or important for the use of others and, above all, it does not seem reasonable to assume that, taking into account business practices in the sectors in question, these are even produced by the same companies (21/11/2016, R 2250/2015-5, CAMOMILLA / CAMOMILLA (fig.),§ 86–87).

Certainly, it is only in special cases, for example where a manufacturer of fabrics wants to exploit the reputation of its trade mark and decides to extend its business to the manufacture of clothing, that the mark is used to designate the finished goods (clothing) and the intermediate materials (fabrics, yarns) (09/07/2015, T‑98/13 & T‑99/13, Camomilla, EU:T:2015:480, §  69). Intermediate materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by those goods in terms of nature and intended purpose (11/07/2017, T‑405/16, JAPRAG / JAPAN RAGS et al., EU:T:2017:482, § 42; 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). In addition, they are also in general intended for use in industry rather than for direct purchase by the final consumer as those for which a certain reputation was established (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43). As indicated above, making one’s clothes or head and neck apparel instead of buying ready-made ones is neither easy in many occasions nor very common for a substantial part of the public at large, to which the earlier goods are sold.

Considering that the signs are only lowly similar, that the evidence submitted was only able to show that the earlier mark has a certain reputation for some of the goods in Class 25 and that the contested goods in Classes 23 and 24 are dissimilar to the goods for which the earlier mark enjoys a certain degree of reputation, it is not plausible that the public would be reminded of the earlier mark and establish a link between the two signs in question when perceiving the contested sign in relation to those goods.

Whilst it is true that Article 8(5) EUTMR is applicable to situations of dissimilar goods and services, this provision does not give blanket protection but rather depends on the interplay of the relevant factors.

Taking into account and weighing up all the relevant factors of the present case, given that the relevant section of the public of these contested goods is unlikely to establish a link between the signs in dispute, such a link being a precondition for the application of Article 8(5) EUTMR (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 30–31), the Opposition Division concludes that the opposition is thus not well founded under Article 8(5) EUTMR and must be rejected insofar as it is directed against the contested goods in Classes 23 and 24.

As regards the link considered to be established for the contested goods in Class 25, 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).

Consequently, the Opposition Division will now continue with the further examination of Article 8(5) EUTMR in relation to the contested goods for which the public is likely to establish a link between the signs at hand.

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 argues that the contested sign will exploit the reputation of the earlier mark and that the applicant will avoid incurring in advertising expenses for promoting it. It would therefore unfairly avoid the high costs required when introducing a new trade mark in the market and there is thus free-riding on the coat-tails of the reputed earlier trade mark. This risk of association of the signs also causes an unfair transfer of attractiveness to the contested sign.

In other words, the opponent claims that use of the contested sign 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 sum, that 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, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

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).

Considering the identity or similarity of the goods in question in Class 25, the existence of a certain reputation of the earlier mark and its enhanced distinctive character for the Spanish consumer, although the similarities between the signs are only low, there is a complete reproduction of the word element of the earlier trade mark ‘BUFF’ at the beginning of the contested sign. This circumstance could be considered in the case at hand, under the above conditions, that it could serve consumers to trigger a metal link and be reminded of the earlier mark which has been intensively used and has a certain reputation for the above goods.

It is to be 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). Here, some evidence was filed where the opponent has been working into building up an image that their goods are to be used by persons loving outdoors, nature and sports activities.

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 that it has built-up an image that the goods in question are devoted for someone that loves nature and open spaces as well as performing sports activities outdoors, for which it did not pay any financial compensation (18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, §  41, 49).

This would give the applicant a competitive advantage since its goods would benefit from the extra attractiveness they would gain from the association with the opponent’s older mark. There is therefore a risk of a transfer of the image of the mark or of the characteristics that it projects to the goods identified by the contested mark in Class 25.

On the basis of the above and the arguments put forward by the opponent, the Opposition Division concludes that the contested sign is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark in relation to the contested goods in Class 25.

e) Other types of injury and conclusion on Article 8(5) EUTMR

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and reputation 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 in relation to the contested goods in Class 25. It follows that there is no need to examine whether other types also apply.

f) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following contested goods:

Class 25: Socks for men, women and children; Socks; Socks; Sports socks for men, women and children; Underwear; Sportswear; Rainproof clothing; Casualwear; Clothing for men, women, and children; Articles of sports clothing; skiwear; Technical performance clothing for sports; Articles of leisure clothing; Coats; Jackets [clothing]; Heavy jackets; Trousers; Trousers shorts; Sweat shirts; Jumpers; Sweaters; Undershirts; Tee-shirts; Sashes for wear; Gloves [clothing]; Berets; Bonnets; Hats; Waist belts; Shoes; Footwear for men and women; Children's footwear; Footwear.

However, the opposition is not successful insofar as the remaining contested goods are concerned, namely all those in Classes 23 and 24.

g) Other earlier trade marks for which Article 8(5) EUTMR was also claimed

The opponent also based its opposition on this ground in relation to the following earlier trade marks:

 European Union trade mark registration No 9 201 856 for the word mark ‘BUFF’, for the same goods in Class 25 as those covered by the earlier EUTM already compared, i.e. ‘ready-made clothing, including underwear and outerwear; Headscarves (not included in other classes), caps, footwear (except orthopaedic footwear) and headgear’.

 European Union trade mark registration No. 10 496 404 for the figurative mark , for the same goods in Class 25 as those covered by the earlier EUTM already compared.

 European Union trade mark registration No. 17 137 019 for the figurative mark in relation to clothing, footwear, headgear; visors.

The other earlier rights either contain only the word ‘BUFF’ or are equivalent to the earlier trade mark already compared with a particular colour combination. Furthermore, they cover the same range of goods or overlap with them.

Considering that the remaining goods for which the opposition has not been upheld in Classes 23 and 24 are dissimilar to those described above in Class 25 for which reputation is claimed, and that even for the earlier word mark ‘BUFF’ the differences with the contested sign from the visual and phonetic perspective also apply, there is no need to evaluate whether the pieces of evidence submitted would have been also sufficient to show a certain reputation of these earlier trade marks, at least in the relevant territory where this decision is focusing, i.e. in Spain. This is because this circumstance would not change the outcome on this ground since there would still be no link between the signs in dispute for the same reasons as those set out above in section c) of this decision.

The opponent has also based its opposition on Article 8(1)(b) EUTMR, and the Opposition Division will now proceed to evaluate whether there is likelihood of confusion with regard to the earlier trade marks for which this ground was claimed, but only with regard to the contested goods for which the opposition has not been upheld on grounds of Article 8(5) EUTMR.

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

 

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition with regard to likelihood of confusion in relation to European Union trade mark registration No. 15 955 751 for the figurative mark .

a) The goods

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

Class 24: Textiles and substitutes for textiles; Bed covers; Bath linen, except clothing; Laminated textile piece goods having insulating properties; Fleece made from copolymers; Fleece made from polyester; Fleece made from polypropylene; Fabric linings for clothing; Linings [textile]; Foulard [fabric]; Textile fabric piece goods for use in the manufacture of clothing; Textile piece goods for making-up into towels; Textile fabrics in the piece; Materials for soft furnishings; Materials for use in making clothes; Heat formable non-woven textile materials; Textile material; Textile piece goods for use in the manufacture of protective clothing; Textiles for making up into articles of clothing; Woven cloth with breathable polyurethane coating for water proof garments; Fibre fabrics for use in the manufacture of articles of clothing; Coated fabrics; Waterproof textile fabrics; Breathable waterproof fabrics; Fabric for footwear; Linings [textile]; Textile fabrics for use in the manufacture of sportswear; Cloth; Fibre fabrics for use in the manufacture of linings of shoes; Fabrics of man-made fibres being textile goods in piece form; Textile linings in the piece; Coated fabrics for use in the manufacture of rainwear; Woven fabrics for making up into articles of clothing; Textile fabrics for use in the manufacture of towels; Textile fabrics for the manufacture of clothing; Textile used as lining for clothing; Bed blankets; Quilts; Quilts; Quilt covers; Quilts; Cot covers; Quilts; Duvets; Sleeping bag liners; Bed blankets; Travelling rugs [lap robes]; Blankets for household pets; Blankets for outdoor use; Children's blankets; Textile goods for use as bedding; Bath linen, except clothing; Towelling [textile]; Towelling [textile]; Towels of textile.

The remaining contested goods are the following:

Class 23: Yarns and threads; textile yarns; elastic thread; synthetic threads; natural yarns; Mixed spun threads and yarns; Textile yarns made of man-made fibre.

Class 24: Fabrics; non-woven textile fabrics; waterproof textile fabrics; elastic woven material; breathable waterproof fabrics; apparel fabrics; knitted fabric; mixed fiber fabrics; elastic fabrics for clothing; structured fabrics being technical sportswear; fabrics for textile use; knitted elastic fabrics for sportswear; textiles impervious to water but permeable to moisture; covered fabrics for waterproof clothing; breathable fabrics; technical textiles for sportswear; textiles of fibre for manufacturing technical sportswear.

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 23

The contested yarns and threads; textile yarns; elastic thread; synthetic threads; natural yarns; mixed spun threads and yarns; textile yarns made of man-made fibre are fine cords of twisted fibers used in sewing and weaving. They are necessarily used together with opponent’s textiles and substitutes for textiles to sew textile products. To this extent these goods are complementary. For the same reason, these goods might be purchased at the same sales outlets and are addressed at the same relevant public. These goods are therefore similar to a low degree.

Contested goods in Class 24

All the contested goods, namely fabrics; non-woven textile fabrics; waterproof textile fabrics; elastic woven material; breathable waterproof fabrics; apparel fabrics; knitted fabric; mixed fiber fabrics; elastic fabrics for clothing; structured fabrics being technical sportswear; fabrics for textile use; knitted elastic fabrics for sportswear; textiles impervious to water but permeable to moisture; covered fabrics for waterproof clothing; breathable fabrics; technical textiles for sportswear; textiles of fibre for manufacturing technical sportswear are (items of) fabrics and textiles and are therefore identically covered by or included in the broad category of the opponent’s textiles. Therefore, they are identical.

b) Relevant public — degree of attention

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

In the present case, the contested goods found to be identical or similar to a low degree are directed at the general public having the intention of sewing and weaving but also at business consumers with specific professional knowledge or expertise.

The public’s degree of attentiveness is considered to be average.

c) The signs

The signs have already been compared above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

The signs were found visually and phonetically similar to a low degree.

Here again the decision will first focus on the perception of the non-English-speaking public in the relevant territory, such as the Spanish-speaking public as this is the best case scenario for the opponent, since the conceptual differences between the signs for the English-speaking public would help those consumers to more easily distinguish between them.

For the reasons already set out above neither ‘BUFF’ nor ‘BUFFERSHELL’ would be linked with any particular concept by this public. As a consequence thereof, the conceptual comparison is neutral and has no impact in the assessment of the similarity between the signs in relation to the goods at hand.

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 distinctiveness of the earlier trade mark will rest on its inherent distinctive character since no claim of enhanced distinctiveness of this earlier mark was made by the opponent and the evidence submitted does not show use of this sign for goods in Class 24.

The earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

It should also be taken 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

In the case at hand, the circumstance that the verbal part of the earlier mark ‘BUFF’ is included at the beginning of the contested sign have only created a visual and phonetic similarity of the signs which was qualified as low. There are very important differences between the signs on account of their length, structure, rhythm and intonation. These differences are furthermore easily noticed because while the earlier mark is a fairly short trade mark of a single word with a certain stylisation on its typeface framed by a circular figure, the contested sign is a much longer sign consisting also of a single word of eleven letters superimposed on a rectangular black background.

Under the principle of interdependence the low degree of similarity of the marks would require some degree of enhanced distinctiveness, even for identical goods, otherwise there would be no room for the factor of enhanced distinctiveness (17/04/2008, C‑108/07 P, Ferro, EU:C:2008:234, § 58). There can be no automatism for finding a likelihood of confusion in instances where the similarity is only low (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 69; 26/09/2018, R 2284/2017-2, Reeflowers (fig.) / flower (fig.)).

As a consequence thereof, in view of the significant differences between the signs, as well as the other factors applicable would not create a likelihood of confusion on the part of the public under analysis with regard to the contested goods in Classes 24 and 23, even if some of them are identical to the goods on which the opposition is based. Consumers are unlikely to assume that the goods labelled with the earlier mark and the relevant identical or lowly similar goods bearing the contested sign come from the same or economically-linked undertakings.

This absence of likelihood of confusion is applicable to any other relevant public of the European Union who would not identify in any of the signs a particular concept, which is the best scenario for the opponent. Likelihood of confusion can be even more safely excluded if the public was to associate a particular concept in any of the signs because there the conceptual differences would help consumers to more easily distinguish between the signs and play a more determinant role in the global assessment on likelihood of confusion. The verbal elements ‘BUFF’ and ‘BUFFERSHELL’ respectively would not be linked with a common concept in any territories of the European Union.

The opponent has also based its opposition on grounds of Article 8(1)(b) EUTMR on the following earlier trade marks:

 European Union trade mark registration No 10 496 321 for the figurative mark , for a list of goods in Class 25.

 European Union trade mark registration No. 10 496 404 for the figurative mark for a list of goods in Class 25.

 European Union trade mark registration No. 17 137 019 for the figurative mark for a list of goods in Class 25.

All these earlier marks only cover goods in Class 25 which have already been found dissimilar to the remaining contested goods in Classes 23 and 24 for the reasons set out above under Article 8(5) EUTMR.

As to European Union trade mark registration No 9 201 856 ‘BUFF’ (word mark) covering a list of goods in Class 25 the opponent only invoked Article 8(1)(a) EUTMR in the notice of opposition. However, although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Thus, for the sake of completeness, since the signs are obviously not identical (and the conditions for the application of Article 8(1)(a) clearly cannot thus be fulfilled), the Office will still examine the case under Article 8(1)(b) EUTMR also for this earlier trade mark, which requires at least similarity between signs and goods/services and likelihood of confusion (see Guidelines for Examination in the Office, Part C, Opposition, Section 2, Chapter 1: General Principles, page 5).

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the remaining contested goods in Classes 23 and 24 are dissimilar to the goods in Class 25 of all these earlier trade marks, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected; no likelihood of confusion exists in relation to those goods.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of these other earlier marks in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The opposition is therefore rejected for these remaining contested goods.

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

Sam GYLLING

Julia GARCÍA MURILLO

Michele M. BENEDETTI - ALOISI

 

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.