OPPOSITION Nо B 3 091 531

 

Calzaturificio Aldo's s.r.l., Via del Rio, 12, 51018 Pieve a Nievole (PT), Italy (opponent), represented by Studio Iemmedue - Studio Professionale Associato di Nicla Giraldi e Gabriele Cappellini, Via S. Biagio in Cascheri, 91, 51100 Pistoia, Italy (professional representative) 

 

a g a i n s t

 

Smallable, 42-44 Rue du Faubourg Saint-Antoine, 75012 Paris, France (applicant), represented by T Mark Conseils, 9 Avenue Percier, 75008 Paris, France (professional representative).

On 29/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.

Opposition No B 3 091 531 is partially upheld, namely for the following contested goods: Class 25: Clothing; Footwear; Headgear; Parkas; Bandanas [neckerchiefs]; Rompers; Bibs, sleeved, not of paper; Cloth bibs; Bibs, not of paper; Bermuda shorts; Bikinis; Blazers; Overalls; Blousons; Boas [necklets]; Teddies [underclothing]; Hosiery; Suspenders; Bustiers; Pea coats; Neck scarves [mufflers]; Neck tubes; Ear muffs [clothing]; Cloaks; Hoods [clothing]; Cardigans; Bathing trunks; Bucket caps; Bonnets; Boots; Ankle boots; Pants; Long johns; Skull caps; Belts [clothing]; Hats; Footmuffs, not electrically heated; Shawls; Sweaters; Paper hats [clothing]; Chasubles; Sneakers; Headbands [clothing]; Pumps [footwear]; Bathing caps; Shower caps; Socks; Slippers; Beach shoes; Ski boots; Boots for sports; Shirts; Tights; Coverups; Bathing suits; Neckties; Breeches for wear; Babies' pants [underwear]; Vest tops; Costumes; Costumes for use in children's dress up play; Denims [clothing]; Underwear; Sashes for wear; Esparto shoes or sandals; Scarves; Furs [clothing]; Ski gloves; Gloves [clothing]; Waistcoats; Spats; Skirts; Jerseys [clothing]; Denim jeans; Swaddling clothes; Layettes [clothing]; Leggings [trousers]; Lingerie; Muffs [clothing]; Coats; Fingerless gloves; Deck shoes; Trousers; Dressing gowns; Pyjamas; Dresses; Sandals; Underpants; Shorts; Brassieres; Shoes; Ankle socks; Sweat shirts; Aprons [clothing]; Tee-shirts; Knitwear [clothing]; Jackets [clothing]; Leather dresses; Jogging sets [clothing].

 

2.	European Union trade mark application No 18 064 219 is rejected for all the goods referred to above. It may proceed for the remaining goods, namely: Class 25: Hairdressing capes.

 

3.	Each party bears its own costs.

 

REASONS

 

On 09/08/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 064 219 'Hundred Pieces' (word mark). The opposition is based on European Union trade mark registration No 10 674 083 (figurative mark) and Italian trade mark registration No 1 504 555 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

 

PROOF OF USE

 

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

 

The same provision states that, in the absence of such proof, the opposition will be rejected.

 

The applicant requested that the opponent submit proof of use of both trade marks on which the opposition is based, namely, European Union trade mark registration No 10 674 083 and Italian trade mark registration No 1 504 555 .

The date of filing of the contested application is 13/05/2019. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 13/05/2014 to 12/05/2019.

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

 

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

EUTM No 10 674 083

Class 25: Clothing, footwear, headgear.

Italian trade mark No 1 504 555

Class 25: Dresses; clothing for gymnastics; footwear (to the extent that they are included in class 25); articles of clothing; articles of headwear; knitwear [clothing].  

On 05/06/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 10/08/2020 to submit evidence of use of the earlier trade marks. On 07/08/2020, within the time limit, the opponent submitted evidence of use.

The evidence filed is the following:

Items 1 to 6: 67 non-consecutive invoices, dated from 19/02/2014 to 31/03/2019, issued by the opponent to numerous customers based in different locations in the European Union: Belgium (Bijgaarden, Tildonk, Zwijndrecht), Denmark (Kobenhavn, Aarhus), Germany (Berlin (2), Düsselfdorf (2), Paderborn (2), Köln, München, Saarbrucken), Italy (Bologna, Firenze (2), Verona, Prato (8), La Spezia, Torino (8), Lucca (4), San Giorgio delle Pertiche (3), Milano (3), Pontedera (4), Ancona, Desenzano de Garda, Arezzo (2)), France (Paris, Hossegor), Sweden (Stockholm), Spain (Barcelona), Netherlands (VJ-Assen, Capelle aan den IJssel, Breda, Veghel (2)). The header of the invoices displays the sign in its central part, the opponent's company name, Calzaturificio Aldo's s.r.l, above the same and another figurative sign containing the opponent's company name on its left part.

The goods sold are referenced to by model codes, sizes, descriptions evidencing that the use concerns footwear - 'CALZATURE HUOMO IN PELLE' (men's leather shoes) and 'CALZATURE DONA IN PELLE' (women's leather shoes) -, quantities and price per unit/pair. The physical quantities indicated in the invoices range from a unit/pair to 219 pairs of a specific model included in an invoice and they attest sales of over one million euros. All the invoices except for one (19/02/2014) are dated within the relevant period.

Items 7 to 10 are documents issued by a company, A.N.C.I. Servizi srl (Fiera de Milano), under the header 'MICAM' and addressed to the opponent. They consist of:

(7) A document dated 29/05/2017 confirming the assignment of stand N02, as per the opponent's application to exhibit at MICAM⁸⁴ trade show taking place from 17 to 20/09/2017 (Fiera de Milano Rho), indicating the charges for, inter alia: registration fee, catalog entry for additional stand, smart catalog-exhibitors online catalog; and containing a reference to 'Catalog entries: HUNDRED + ALDO'S HUNDRED'. Advanced payment receipt dated 19/04/2017 and invoice dated 30/06/2017, concerning the above cited charges.

(8) Opponent's request dated 18/10/2017 to participate in MICAM⁸⁵, Milan fair taking place in Rho between 11 and 14/02/2018. Advanced payment receipt dated 24/10/2017. Document dated 30/11/2017, confirming the assignment of stand N02, indicating the charges for such participation and containing a reference to catalog entries: 'HUNDRED + ALDO'S HUNDRED'. Payment invoice dated 16/01/2018.

(9 and 10)  Opponent's request to participate in MICAM⁸⁶ and MICAM⁸⁷, taking place in Rho from 16 to 19/09/2018 and from 10 to 13/02/2019, respectively, containing a reference to 'Catalog advertisement inserted at the time of joining the fair with documents upload: HUNDRED, ALDO'S HUNDRED'. Advanced payment receipts dated 07/05/2018 and 31/10/2018 and invoices dated 29/06/2018 and 18/12/2018 concerning the charges involved in the participations.

Item 11: Undated photographs of a leather label, bags and shoe boxes:

For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the evidence in relation to the opponent’s European Union trade mark registration No 10 674 083 .

Assessment of the evidence

According to Article 10(3) EUTMDR, the indications and evidence required to provide proof of use must concern the place, time, extent and nature of use of the opponent’s trade marks for the relevant goods and services. These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 31). Therefore, the sufficiency of the indication and proof as regards the place, time, extent and nature of use has to be considered in view of the evidence submitted in its entirety.

The applicant argues that the items of evidence are in Italian, that only some elements have been translated into the language of the opposition proceedings and that they do not provide serious proof of use of the earlier mark for the goods for which it is registered.

First of all, it must be pointed out that the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that are considered relevant for the present proceedings – in particular invoices – and their self-explanatory character, the Opposition Division considers that there is no need to request a complete translation. Moreover, the opponent did provide translations of the most relevant parts of all the documents filed, including the invoices.

Secondly, the applicant’s argument is based on an individual assessment of each item of evidence regarding the relevant factors. However, as already mentioned, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use. All the items submitted by the opponent need to be assessed in the context of each other. Consequently, even if the photographs (Item 11) are undated, they can still be taken into account to establish the nature of use of the mark, as will be discussed below.

Finally, in as much as documents 7 to 10 are concerned, the Opposition Division agrees with the applicant in that, in the absence of any information regarding the meaning or content of the 'MICAM' fair in which, according to the documents filed, the opponent participated from 2017 to 2019, it is not possible to determine the goods that the opponent exhibited in such fair.

Turning to the relevant factors of proof of use, the invoices show that the place of use is the European Union. This can be inferred from the languages of the documents (Italian), the currency mentioned (euros) and the customers’ addresses in various European Union locations, in particular addresses in Belgium, Denmark, Germany, Italy, France, Spain and the Netherlands. Therefore, the evidence relates to the relevant territory.

All the invoices (67) except for one are dated within the relevant period covering the years 2014-2019. Therefore, the time of use is also proved.

Furthermore, the invoices provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. In particular, the physical volumes and the value of the sales transactions as shown in the invoices are sizeable. There is no room for doubt that the sales were carried out with a number of customers located throughout the relevant territory. Furthermore, the invoices refer to commercial activities spanning the entire relevant period, which is clearly sufficient for demonstrating continuous use of the trade mark.

Finally, nature of use in the context of Article 10(3) EUTMDR requires, inter alia, that the earlier trade mark is used as a trade mark that is for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers. Contrary to the applicant’s argument, simultaneous use of the company name and the trade mark on invoices is rather common and may, when the two indications can be clearly distinguished, prove use of the sign as an indicator of the commercial origin of the goods/services provided, irrespective of the fact that the invoices may also show other sub-brands (03/10/2019, T-666/18, ad pepper (fig.), EU:T:2019:720, § 82-84). In the present case, contrary to the applicant’s statement, the visual configuration of the header of the invoices allows to conclude that the sign , positioned under the opponent’s company name and next to (but clearly separated visually from) another figurative sign containing the opponent's company name, is an indicator of commercial origin of the goods listed in the invoices, i.e. men and women's footwear.

Furthermore, as indicated previously, the combination of the invoices with the undated photographs (Item 11), and in particular the photographs of shoe boxes bearing the earlier mark prove that the sign is used, publicly and outwardly, in accordance with its function (i.e. to identify the commercial origin of the goods) and as registered. 

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

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the earlier trade mark for all of the goods on which the opposition is based.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services. 

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 25: Footwear.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

 

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 674 083.

a) The goods

 

The goods on which the opposition is based are, after assessment of the proof of use, the following:

Class 25: Footwear.

The contested goods are the following:

Class 25: Clothing; Footwear; Headgear; Parkas; Bandanas [neckerchiefs]; Rompers; Bibs, sleeved, not of paper; Cloth bibs; Bibs, not of paper; Bermuda shorts; Bikinis; Blazers; Overalls; Blousons; Boas [necklets]; Teddies [underclothing]; Hosiery; Suspenders; Bustiers; Pea coats; Neck scarves [mufflers]; Neck tubes; Ear muffs [clothing]; Cloaks; Hairdressing capes; Hoods [clothing]; Cardigans; Bathing trunks; Bucket caps; Bonnets; Boots; Ankle boots; Pants; Long johns; Skull caps; Belts [clothing]; Hats; Footmuffs, not electrically heated; Shawls; Sweaters; Paper hats [clothing]; Chasubles; Sneakers; Headbands [clothing]; Pumps [footwear]; Bathing caps; Shower caps; Socks; Slippers; Beach shoes; Ski boots; Boots for sports; Shirts; Tights; Coverups; Bathing suits; Neckties; Breeches for wear; Babies' pants [underwear]; Vest tops; Costumes; Costumes for use in children's dress up play; Denims [clothing]; Underwear; Sashes for wear; Esparto shoes or sandals; Scarves; Furs [clothing]; Ski gloves; Gloves [clothing]; Waistcoats; Spats; Skirts; Jerseys [clothing]; Denim jeans; Swaddling clothes; Layettes [clothing]; Leggings [trousers]; Lingerie; Muffs [clothing]; Coats; Fingerless gloves; Deck shoes; Trousers; Dressing gowns; Pyjamas; Dresses; Sandals; Underpants; Shorts; Brassieres; Shoes; Ankle socks; Sweat shirts; Aprons [clothing]; Tee-shirts; Knitwear [clothing]; Jackets [clothing]; Leather dresses; Jogging sets [clothing].

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Footwear is identically contained in both lists of goods.

The contested boots; ankle boots; sneakers; pumps [footwear]; slippers; beach shoes; ski boots; boots for sports; esparto shoes or sandals; deck shoes; sandals; shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested general categories of clothing; headgear as well as the contested itemised goods parkas; bandanas [neckerchiefs]; rompers; bibs, sleeved, not of paper; cloth bibs; bibs, not of paper; bermuda shorts; bikinis; blazers; overalls; blousons; boas [necklets]; hosiery; suspenders; pea coats; neck scarves [mufflers]; neck tubes; ear muffs [clothing]; cloaks; hoods [clothing]; cardigans; bathing trunks; bucket caps; bonnets; belts [clothing]; skull caps; hats; footmuffs, not electrically heated; shawls; sweaters; paper hats [clothing]; chasubles; headbands [clothing]; bathing caps; shower caps; socks; shirts; tights; coverups; bathing suits; neckties; breeches for wear; vest tops; costumes; costumes for use in children's dress up play; denims [clothing]; sashes for wear; scarves; furs [clothing]; ski gloves; gloves [clothing]; waistcoats; spats; skirts; jerseys [clothing]; denim jeans; swaddling clothes; layettes [clothing]; leggings [trousers]; muffs [clothing]; coats; fingerless gloves; trousers; dresses; shorts; ankle socks; sweat shirts; aprons [clothing]; tee-shirts; knitwear [clothing]; jackets [clothing]; leather dresses; jogging sets [clothing] serve the same purpose as the opponent’s footwear. They are all used for covering and protecting parts of the human body and as fashion articles. The distribution channels for these goods coincide and their sales outlets or the retail departments are often either the same or at least closely connected. They target the same public. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa, the same applies for headgear. Moreover, many manufacturers and designers produce and design footwear, clothing and headgear. Therefore, these goods are similar.

The contested clothing items that are/ belong to underwear, namely, teddies [underclothing]; bustiers; pants; long johns; babies' pants [underwear]; underwear; lingerie; underpants; brassieres and those which correspond to nightwear and comfortable garments for wearing at home, namely, dressing gowns; pyjamas are at least similar to a low degree to the opponent’s footwear since these goods usually coincide in producer, relevant public and distribution channels. The producers of the contested goods usually include in the product ranges slippers and other types of shoes for wearing at home. Furthermore, underwear includes underwear for babies and young children (bodies, bodysuits etc.), and the companies that produce or retail baby-wear also deal in footwear for babies.

The contested hairdressing capes do not perform the same function as the opponent’s footwear. In particular, the contested goods are used in hairdressing salons, in order to protect the customer's body and clothing from the hair and chemicals or products used within the haircutting or styling process. Furthermore, the producers, relevant public and sale outlets are different since they are usually sold to professionals in the hairdressing sector. Moreover, they are not goods in competition or complementary. Therefore, the goods are dissimilar.

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 and similar to varying degrees to those of the earlier mark are directed at the public at large whose degree of attention is average. 

c) The signs

 

	Hundred Pieces
Earlier trade mark	Contested sign

 

The relevant territory is the European Union.

 

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The sign’s verbal elements convey a meaning in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a figurative mark composed of the verbal element ‘hundred’ and of the cardinal number ‘100’ placed below it. ‘hundred’ is underlined and both elements are depicted in standard characters.

 

The contested sign is a word mark consisting of the verbal elements 'Hundred Pieces'. Since in word marks it is the word as such that is protected and not its written form, it is irrelevant whether the sign is represented in upper- or lower-case characters unless it combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’). The fact that the two verbal elements of the contested sign are capitalized does not depart from the usual way of writing, being therefore irrelevant for the purposes of the comparison.

The signs’ common verbal element, ‘hundred’, will be perceived by the relevant consumers as ‘the number 100’ (information extracted from Cambridge Dictionary on 17/06/2021 at https://dictionary.cambridge.org/dictionary/english/hundred). This coinciding verbal element is distinctive to a normal degree as its meaning bears no relationship to the relevant goods or their characteristics.

The earlier mark’s numeral element ‘100’, placed below the equivalent verbal element ‘hundred’, will be perceived as such, it is therefore distinctive to a normal degree for the same reasons outlined above. The underlining has a purely decorative function and is, therefore, devoid of trade mark significance.

The earlier mark has no elements which can be considered dominant (visually more striking than other elements).

The contested sign’s second verbal element ‘pieces’ is the plural form of ‘PIECE’ which designates inter alia ‘an item of clothing, especially one that is expensive, fashionable, or individually made’ (information extracted from Cambridge Dictionary on 17/06/2021 at https://dictionary.cambridge.org/dictionary/english/piece). Bearing in mind that the goods at issue are clothing, as well as footwear and headgear items to which the cited meaning can be equally applied, this element is considered to have a lower than normal distinctiveness, as it is laudatory and denotes desirable characteristics and qualities of the goods.

The applicant claims that the combined words in the contested sign “Hundred Pieces” refer to ‘hundreds of items’ whereas the term ‘hundred’ in the earlier mark is a mere number. On the one hand, it is relevant to note that since ‘Hundred’ is not written in plural in the contested sign, the Opposition Division does not see why the public should consider that it refers to ‘hundreds of’ and the applicant has not provided any evidence or convincing arguments that may support this interpretation. On the other hand, whether alone or combined with another term, ‘hundred’ corresponds to and has the meaning of the number 100 in both signs.

Furthermore, in the assessment of the visual and aural similarity of the marks in question it has to be borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive verbal element ‘hundred’, which is the sole verbal element of the earlier mark and is fully included at the beginning of the contested sign as an independent element. However, they differ in the additional second verbal element in the contested sign, ‘pieces’, which has a lower than normal distinctiveness and in the additional elements in the earlier mark; the line underlining ‘hundred’ (which has a purely decorative function) and number ‘100’ placed under the same which, reinforces the verbal element ‘hundred’ and is, in any case, not of such a nature as to detract the consumers’ attention away from the verbal element itself. Therefore, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‛hundred’, present identically and as the initial element in both signs. The pronunciation differs in the sound of the second verbal element of the contested sign, ‘pieces’, and in the reiterated sound of hundred in the earlier mark, if pronounced. The applicant claims that the earlier mark will be pronounced as ‘hundred hundred’, ‘hundred out of hundred’ or ‘hundred over hundred’. The Opposition Division does not agree with this assertion, in fact, it is likely that the cardinal number ‘100’ in the earlier mark will not be pronounced at all, as it is a mere repetition of the initial verbal element ‘hundred’. Therefore, the signs are aurally similar to an above average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs common component ‘hundred’ and the earlier mark’s cardinal number ‘100’ convey the identical concept of ‘the number 100’. However, they differ in the meaning conveyed by the contested sign’s element ‘pieces’, which has a lower than normal distinctiveness. As the signs will be associated with a similar meaning, the signs are conceptually similar to a high degree.

 As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) Distinctiveness of the earlier mark

 

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

 

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

 

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account must be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the goods have been found partly identical, partly similar to varying degrees and partly dissimilar. They target the general consumers which will pay an average degree of attention.

The signs have been found visually and aurally similar to an above average degree and conceptually similar to a high degree. Specifically, the earlier trade mark’s sole and meaningful distinctive verbal element is entirely included in the initial and most distinctive part of the contested sign.

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

Contrary to the applicant's opinion, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

As regards the goods that are similar to a low degree only, it must be kept in mind that 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). In the present case, the degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between some of the goods, specially bearing in mind the average degree of attention paid in relation to them.

The applicant refers to previous decisions of the Office which it considers similar to the case at hand and in which no likelihood of confusion was found, namely:

 30/08/2011, B 1 598 021 ( versus Gourmet Garage);

 15/09/2016, B 2 472 747 (BOOSTER versus );

 20/01/2015, R 697/2014-2 ( versus ).

However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

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

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

The cases referred to by the applicant are not relevant to the present proceedings. In all three cases, the word elements that the signs had in common (GOURMET, BOOSTER and GALERIA) were weak in relation with the respective relevant goods/services and their relevance in the assessment of likelihood of confusion was low, whereas, in the present case ‘HUNDRED’ is distinctive to a normal degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 674 083. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

The opponent has also based its opposition on another earlier right, namely, Italian trade mark registration No 1 504 555 (figurative mark). This other earlier right covers dresses; clothing for gymnastics; footwear (to the extent that they are included in class 25); articles of clothing; articles of headwear; knitwear [clothing]. However, as indicated previously in this brief, the applicant also requested proof of use of this other earlier right and, as the list of proof of use reveals, the evidence filed does not contain any reference whatsoever to goods other than footwear. Therefore, for the purposes of the examination of the opposition, this earlier Italian trade mark would at most be deemed to be registered in respect only of the same goods as the earlier right which has been examined (i.e. footwear), which are dissimilar to the remaining contested goods, so the outcome would not be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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

Alicia BLAYA ALGARRA

Helena GRANADO CARPENTER

Maria del Carmen COBOS PALOMO

 

 

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.