OPPOSITION Nо B 3 089 791

 

At B.V., Diemermere 1, 1112 TA Diemen, Netherlands (opponent), represented by Arnold & Siedsma, Rembrandt Tower, 28th Floor, Amstelplein 1, 1096 HA Amsterdam, Netherlands (professional representative)

a g a i n s t

Pan Drwal Spółka Z O.O., Zwierzyniecka 3/1, 60-813 Poznań, Poland (applicant), represented by Małgorzata Matyka, Ul. Zielony Stok 12/1u, 80-119 Gdańsk, Poland (professional representative).

On 01/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.		Opposition No B 3 089 791 is partially upheld, namely for the following contested goods and services:
	Class 3: All the contested goods in this class, with the exception of paint stripping preparations. Class 44: Hair salon services; human hygiene and beauty care; hygienic and beauty care; hairdressing.
2.	European Union trade mark application No 18 078 013 is rejected for all the above goods in Class 3 (with the exception of paint stripping preparations) and services. It may proceed for the remaining goods and services, namely Class 3: paint stripping preparations and Class 44: Tattooing.

 

3.	Each party bears its own costs.

 

REASONS

 

On 24/07/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 078 013 ‘Cool Cat’ (word mark), namely against all the goods and services in Classes 3 and 44. The opposition is based on, inter alia, European Union trade mark registration No 10 667 351 ‘COOLCAT’ (word mark). The opponent invoked Article 8(1)(b) EUTMR, 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 in relation to the opponent’s European Union trade mark registration No 10 667 351.

 

a) The goods and services

 

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Retail and wholesale services in the field of soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, glasses, sunglasses, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, bijouterie, precious stones, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks, travelling bags, umbrellas, parasols, walking sticks, whips, harness and saddlery, clothing, footwear, headgear.

The contested goods and services are the following:

Class 3: Adhesives for affixing false eyelashes; dry shampoos; oils for cosmetic purposes; natural essential oils; foot balms (non-medicated -); cleansing masks; sun-tanning oils; lotions for cellulite reduction; non-medicated hair shampoos; body lotions; shower soap; gels for fixing hair; hair spray; scented oils; nail varnish; massage oils and lotions; dentifrices and mouthwashes; hair preparations and treatments; soaps in liquid form; facial soaps; sun care preparations; room scenting sprays; beard dyes; sun tan milk; polishing preparations; lipsticks; feminine deodorant sprays; face packs; adhesives for affixing false eyebrows; toners for cosmetic use; soap solutions; cosmetic preparations for skin renewal; cosmetic creams for firming skin around eyes; tooth polish; cosmetic creams and lotions; facial masks; body masks; oils for perfumes and scents; balms, other than for medical purposes; cosmetics and cosmetic preparations; cosmetic products for the shower; hand oils (non-medicated -); eye make up remover; essential oils of sandalwood; soaps in gel form; make-up removing gels; massage oils; anti-aging moisturizers used as cosmetics; facial cleansing milk; moisturising body lotion [cosmetic]; bath salts, not for medical purposes; cakes of toilet soap; adhesives for false eyelashes, hair and nails; non-medicated bath oils; facial cleansers [cosmetic]; non-medicated toiletries; baby lotions; cosmetic nail care preparations; non-medicated toilet soaps; lip glosses; adhesives for affixing false hair; adhesives for cosmetic purposes; lip balms [non-medicated]; cleaner for cosmetic brushes; skin moisturizer masks; personal deodorants; nail polish top coat; cosmetic preparations for baths; hair desiccating treatments for cosmetic use; spray cleaners for freshening athletic mouth guards; hair emollients; cosmetic nourishing creams; body scrub; body deodorants [perfumery]; antiperspirants [toiletries]; shaving sticks [preparations]; tooth gel; aftershave milk; skin masks [cosmetics]; lip stains [cosmetics]; skin care oils [non-medicated]; cosmetic preparations for skin firming; hair dyes; moisturising preparations; scented oils used to produce aromas when heated; make-up removing preparations; toiletries; body cream soap; perfumed oils for skin care; soap products; dentifrices; hand cleansers; essential oils of lemon; cosmetic moisturisers; bay rums; lotions for cosmetic purposes; cosmetic creams; cleaning sprays; non-medicated cleansing creams; cosmetic products in the form of aerosols for skincare; non-medicated moisturisers; cosmetic preparations for body care; natural oils for cosmetic purposes; cleaning agents for the hands; essential oils of citron; oral hygiene preparations; paint stripping preparations; body gels; bath milk; antiperspirant soap; lip protectors [cosmetic]; skin cleansers; aromatics [essential oils]; cosmetic preparations for skin care; aromatherapy oil; styling gels; deodorants, for personal use in the form of sticks; hydrogen peroxide for cosmetic purposes; suntan oils for cosmetic purposes; leather preservatives [polishes]; non-medicated dentifrices; colour-removing preparations; soap; anti-aging moisturizers; degreasing sprays; hair frosts; face creams for cosmetic use; body oils [for cosmetic use]; cosmetic preparations for use as aids to slimming; sun blocking lipsticks [cosmetics]; toilet cleaners; shampoos; adhesives for affixing artificial fingernails; oils for toilet purposes; gel eye masks; natural oils for cleaning purposes; cosmetic preparations for the hair and scalp; beauty tonics for application to the face; sun blocking preparations [cosmetics]; shampoo-conditioners; deodorants for the feet; hand masks for skin care; after sun creams; distilled oils for beauty care; pores tightening mask packs used as cosmetics; skin cleansers [non-medicated]; hand lotions; deodorants for personal use [perfumery]; non-medicated shampoos; gels for cosmetic use; exfoliants; after-sun lotions; cream soaps; oil baths for hair care; deodorants and antiperspirants; bath soap; body paint (cosmetic); liquid soap used in foot bath; moustache wax; hair straightening preparations; after sun moisturisers; foot masks for skin care; baby shampoo; slimming aids [cosmetic], other than for medical use; cosmetic preparations for slimming purposes; cosmetic foams containing sunscreens; after-shave preparations; hair colour removers; face oils; body mask cream; hair removal and shaving preparations; hair waving preparations; gel sprays being styling aids; aromatic oils for the bath; hair masks; varnish-removing preparations; incense spray; liquid perfumes; skin care oils [cosmetic]; cosmetic kits; cosmetic hair regrowth inhibiting preparations; gel nail removers; beauty tonics for application to the body; hydrogen peroxide for use on the hair; hair protection gels; cosmetic oils for the epidermis; after-sun oils [cosmetics]; hand gels; colorants for toilet purposes; essential oils for the care of the skin; suncare lotions; soaps and gels; perfumes; beauty milk; facial preparations; hair gel; moisturising skin lotions [cosmetic]; face gels; shaving preparations; essential oils for personal use; cotton balls for cosmetic purposes; facial moisturisers [cosmetic]; face paint; make-up removing milks; perfumery and fragrances; hair preservation treatments for cosmetic use; non-medicated oils; mineral oils [cosmetic]; emollients; ethereal essences and oils; nail polish pens; lotions for beards; hair moisturisers; sun tan lotion; anti-perspirant deodorants; skin soap; hairstyling masks; aromatic oils; pomades for cosmetic purposes; body oil spray; skin emollients [non-medicated]; cleansing milk for toilet purposes; shaving balm; sun blocking oils [cosmetics]; perfumed toilet waters; ethereal oils; foaming bath gels; cosmetic hand creams; sunscreen; hand milks; hair bleaching preparations; facial care preparations; dandruff shampoo; roll-on deodorants [toiletries]; detanglers; permanent waving and curling preparations; hair permanent treatments; essential oils of cedarwood; aromatic essential oils; dentifrices in the form of chewing gum; skin emollients; sun-tanning creams and lotions; essential vegetable oils; lip gloss palettes; fair complexion creams; bath gel; cosmetic hair dressing preparations; lip cream; shaving soap; household fragrances; emulsified essential oils; waterless soap; cosmetics for protecting the skin from sunburn; hair balm; oils for hair conditioning; massage oils, not medicated; cleansers for intimate personal hygiene purposes, non medicated; hand soaps; perfumed body lotions [toilet preparations]; cosmetic sun-protecting preparations; cuticle removers; depilatory preparations; terpenes [essential oils]; tissues impregnated with make-up removing preparations; skin cleansers [cosmetic]; douching preparations for personal sanitary or deodorant purposes [toiletries]; skin balms (non-medicated -); pre-moistened towelettes impregnated with a detergent for cleaning; hand lotion (non-medicated -); shaving sprays; blended essential oils; air fragrancing preparations; pastes for razor strops; eau de cologne; natural oils for perfumes; self tanning lotions [cosmetic]; sun-tanning gels; greases for cosmetic purposes; vanilla perfumery; facial washes [cosmetic]; beauty soap; bath oils for cosmetic purposes; cleaning masks for the face; toilet soap; suntanning oil [cosmetics]; perfumed lotions [toilet preparations]; make-up preparations for the face and body; leather polishes; deodorants for body care; shaving gel; tints for the hair; cosmetic breast firming preparations; eyes make-up; lavender water.

Class 44: Hair salon services; human hygiene and beauty care; hygienic and beauty care; tattooing; hairdressing.

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.

Contested goods in Class 3

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

However, there is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

Given that all the contested goods in this Class, with the exception of paint stripping preparations, are all either identical or at least similar to soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices that are the object of the opponents retail and wholesale services, the contested goods are, in view of all the foregoing, also at least similar to a low degree to the opponent’s retail services in the field of soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.

However, the same does not apply to the contested paint stripping preparations which are not similar to the opponent’s services in Class 35, i.e. retail and wholesale services in the field of soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, glasses, sunglasses, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, bijouterie, precious stones, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks, travelling bags, umbrellas, parasols, walking sticks, whips, harness and saddlery, clothing, footwear, headgear. Indeed, apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop, and wholesale services is the sale of goods or merchandise to retailers. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here these conditions are not fulfilled, since the opponent’s goods concerned are not sold in the same specialist shops, or the same sections of department stores or supermarkets. Admittedly, like most goods, they can now be found in large retail stores. However, in such outlets the goods at issue are sold in specialist departments which, even though they may be close, are nonetheless separate. In such circumstances, the distribution channels of the goods and services cannot be considered to be the same (04/12/2019, T‑524/18, Billa / BILLABONG et al., EU:T:2019:838, § 51).

These contested goods, namely paint stripping preparations, are also dissimilar to all the opponent’s goods in Classes 18 and 25. They have a different nature, purpose and method of use. They are neither in competition nor complementary. Moreover, the usual commercial origin of the goods, their distribution channels and sales outlets are different.

Contested services in Class 44

The contested hair salon services; human hygiene and beauty care; hygienic and beauty care; hairdressing and the opponent´s retail services in the field of soaps, cosmetics, hair lotions can be offered by the same undertakings with commercial activities in the field of beauty and skincare. They have the same overall purpose: beauty and skincare, their distribution channels can overlap and the target public is the same (26/05/2015, R 1443/2014-4, KOKO NAIL / KIKO et al., § 23). In addition, it is not uncommon that the same provider of retail services of cosmetics also offers the beauty care services in Class 44 in the same place, or vice versa, as an additional service and to boost sales of the products offered at retail (which are commonly used in the beauty care services offered). Therefore, they are at least similar to a low degree.

However, the contested tattooing services and the opponent’s goods and services in Classes 18, 25 and 35 are dissimilar, since they have nothing in common. They clearly have different natures, methods of use and commercial origins, and, as they satisfy different needs, they target different publics. Furthermore, they are neither complementary nor in competition. Therefore, consumers would not expect the opponent’s goods and services to have the same origin as the contested services.

 

b) Relevant public — degree of attention

 

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

In the present case, the goods and services found to be at least similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

 

c) The signs

 

COOLCAT	Cool Cat
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 signs share the same letters. Yet, these form a single word in the earlier mark and two words in the contested sign. However, regardless of this fact, the signs have the same meaning for the English-speaking part of the public whereas they may have no meaning at all for the remaining part of the public for whom they simply contain the same letters placed in the same order and in the same position. As a consequence, the degree of distinctiveness of the signs is the same, irrespective of whether or not their meanings will be perceived by different parts of the public. Therefore, the degree of distinctiveness of the signs has no impact on the comparison of the signs at issue.

Visually, the signs coincide in all their letters ‘C-O-O-L-(*)-C-A-T’ and differ solely in the additional space separating the elements ‘COOL and ‘CAT’ in the contested sign. Therefore, the signs are highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of all their letters regardless of the space separating the elements ‘COOL and ‘CAT’ in the contested sign. Therefore, the signs are identical.

Conceptually, the signs are identical for part of the public whereas a conceptual comparison is not possible for the remaining part of the public, depending on whether or not the signs are understood.

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

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the relevant services from the perspective of the public in the relevant territory. 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).

The contested goods and services are partly at least similar to a low degree and partly dissimilar to the opponent´s goods and services. They target the public at large whose level of attention is average.

The only difference in the signs lies in the space in the contested mark between the verbal components. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 667 351 ‘COOLCAT’ (word mark).

It follows from the above that the contested trade mark must be rejected for the goods and services found to be at least similar to a low degree to the services of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

 

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

 

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods and services, 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 mark enjoyed an enhanced degree of distinctiveness.

 

The opponent has also based its opposition on the following earlier trade marks:

 

- Benelux trade mark registration No 908 498 ‘COOLCAT’ based on goods and services in the following classes:

Class 18: Leather and imitation leather and products made from these materials, not included in other classes; animal skins; travel cases and suitcases; umbrellas, umbrellas and walking sticks; whips and saddlery.

Class 25: Clothing; footwear; headgear.

Class 35: Retail and wholesale services in the field of soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, glasses, sunglasses, precious metals and their alloys and products made or covered therefrom, jewelery, ornaments, precious stones, leather and imitations of leather and products made therefrom, bags, animal skins, travel cases, suitcases, umbrellas, parasols, walking sticks, whips, saddlery, clothing, footwear, headgear.

- Benelux trade mark registration No 395 097 ‘COOL CAT’ based on goods in the following classes:

Class 16: Agendas, notebooks, notepads, postcards and other printed matter.

Class 18: Leather and imitations of leather and products made from these materials and not included in other product classes; animal skins; suitcases and travel bags; umbrellas, umbrellas and walking sticks; whips and saddlery.

Class 25: Clothing; footwear; headgear.

- European Union trade mark registration No 10 029 411 based on goods and services in the following classes:

Class 9: Glasses and sunglasses.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Retail services and wholesale services in the field of soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, glasses, sunglasses, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, leather and imitations of leather, and goods made of these materials, bags, animal skins, hides, trunks, travelling bags, umbrellas, parasols, walking sticks, whips, harness, saddler, clothing, footwear, headgear.

The lists of goods and services in Classes 18, 25, and 35 covered under these earlier trade marks is of a very similar or narrower scope than the that of the list of the earlier mark compared above. Earlier European Union trade mark registration No 10 029 411 and Benelux trade mark registration No 395 097 are also registered for goods in Classes 9, 14 and 16. However, although the scope of protection of these marks is broader in that they include these classes, these additional goods are clearly dissimilar to the goods and services for which the opposition has already been rejected, namely paint stripping preparations in Class 3 and tattooing in Class 44. Indeed, these earlier goods have nothing in common with the remaining contested goods and services as they differ in nature, producer/provider, relevant public, distribution channels and intended purpose. Furthermore, they are not in competition or complementary. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

 

REPUTATION — ARTICLE 8(5) EUTMR

 

The Opposition Division will examine this ground of the opposition in relation to earlier Benelux trade mark registrations No 395 097 and No 908 498; European Union trade mark registrations No 10 667 351 and No 10 029 411, for which the opponent claimed repute in the European Union and Benelux respectively.

 

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

 

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

 

 The signs must be either identical or similar.

 

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

 

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

 

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

 

In the present case, the applicant 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 marks

  

According to the opponent, the earlier trade marks have a reputation in the European Union and the Benelux.

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

In the present case, the contested trade mark was filed on 04/06/2019. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union or Benelux prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely

 

Benelux trade mark registration No 395 097

Class 16: Agendas, notebooks, notepads, postcards and other printed matter.

Class 18: Leather and imitations of leather and products made from these materials and not included in other product classes; animal skins; suitcases and travel bags; umbrellas, umbrellas and walking sticks; whips and saddlery.

Class 25: Clothing; footwear; headgear. 

Benelux trade mark registration No 908 498

Class 18: Leather and imitation leather and products made from these materials, not included in other classes; animal skins; travel cases and suitcases; umbrellas, umbrellas and walking sticks; whips and saddlery.

Class 25: Clothing; footwear; headgear.

Class 35: Retail and wholesale services in the field of soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, glasses, sunglasses, precious metals and their alloys and products made or covered therefrom, jewelery, ornaments, precious stones, leather and imitations of leather and products made therefrom, bags, animal skins, travel cases, suitcases, umbrellas, parasols, walking sticks, whips, saddlery, clothing, footwear, headgear.

European Union trade mark registration No 10 667 351

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Retail and wholesale services in the field of soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, glasses, sunglasses, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, bijouterie, precious stones, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks, travelling bags, umbrellas, parasols, walking sticks, whips, harness and saddlery, clothing, footwear, headgear.

European Union trade mark registration No 10 029 411

Class 9: Glasses and sunglasses.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Retail services and wholesale services in the field of soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, glasses, sunglasses, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, leather and imitations of leather, and goods made of these materials, bags, animal skins, hides, trunks, travelling bags, umbrellas, parasols, walking sticks, whips, harness, saddler, clothing, footwear, headgear.

 

The opposition remains directed against the following goods and services for which the opposition was rejected under the ground of Article 8(1)(b) EUTMR:

 

Class 3: Paint stripping preparations.

Class 44: Tattooing.

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

 

On 23/03/2020 the opponent submitted the following evidence:

Annex 1: Publications from 2011 until 2018 of Dutch Newspapers and Dutch gossip and fashion magazines showing the exposure of the ‘COOL CAT’, marks in the medias in relation to clothing. The publication includes, inter alia, the following:

- Extracts from the magazines ‘AD’, ‘Fashionista’, ‘Cosmo Girl’, ‘Fashionchick’, ‘Girlz, Glamour’, ‘Hitkrant’, ‘Bizz’, ‘Tina’.

- Extracts from the newspapers ‘Metro’, ‘NRC Next’, ‘fd.nl’, 'The Telegraph’.

Annex 2: Contains several documents with pictures of ‘COOLCAT’ hangtags and a brand Guide of ‘COOLCAT’.

Annex 3: Pictures of COOLCAT products such as jackets, schoolbags, t-shirts, hats, pullovers, paper bags, notebooks, stickers.

Annex 4: Pictures of storefronts and store displays products in which it can be seen the earlier ‘COOL CAT’, marks.

Annex 5: Market surveys conducted by GfK, a well-known market research institute, showing, among others, the market share of different stores regarding the retail of upper wear for people over two years and of kids upperwear from two to eleven years old, in the Netherlands and since February 2015 until January 2018. As per these surveys ‘COOLCAT’ had a market share of 4,3% from August 2017 until January 2018 on kids upperwear, and 1,2% of total upperwear.

Annex 6: Copy of the Financial statements for the years 2016 and 2017 of COOLCAT FASHION B.V.. As per this document, ‘COOL CAT’ owned 122 stores in 2016 and 112 in 2017 and had the following net turnover in 2015, 2016 and 2017:

Having examined the material listed above, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

To establish whether or not the earlier marks have a reputation, it is important to determine whether or not the documents listed above show recognition on the part of the relevant public. Such an assessment must be based on the evidence analysed as a whole. In this assessment, account should be taken, in particular, of the mark’s inherent characteristics, including whether or not it contains an element that is descriptive of the goods or services for which it is registered, the mark’s market share, how intensive, geographically widespread and long-standing the mark’s use has been, the amount invested by the undertaking to promote the mark, the proportion of the relevant section of the public that identifies the goods or services as originating from a particular undertaking due to the mark and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

The documents submitted by the opponent are mainly advertisements of products under the earlier marks, pictures of the products themselves and some storefronts and store displays where the earlier marks can be seen. The magazines or newspapers where the earlier trade marks are shown do not refer to the recognition of the earlier trade marks by the public, they merely contain advertisements of products. The fact that the opponent advertises its marks through magazines and newspapers cannot in itself be seen as evidence of reputation since it does not imply that the earlier marks are known by a significant part of the public in relation to the relevant goods. In this regard, it is also noted that there is no information whatsoever on the amounts invested in promoting the marks or on the degree of recognition of the marks. Although the opponent filed two market surveys conducted by GfK (Annex 5), an independent party, these documents are insufficient to reflect clearly and objectively the opponent’s trade mark’s precise position in the market. Indeed, while it can be drawn from these documents that ‘COOLCAT’ had a market share of 4,3% from August 2017 until January 2018 on kids upperwear for kids between 2 and 11 years, and 1,2% of total upperwear for kids older than 2 years, it is not clear from the surveys whether these percentages refer to the whole market in relation to these specific products, or if it is in relation to the trade marks listed, regardless of the specific goods, since the sum of all the percentages does not reach 100%. Moreover, no additional explanations from the opponent have been provided in order to shed a light on the information provided by these surveys.

Moreover, the net turnovers given in Annex 6 are part of the Financial statements for the years 2016 and 2017 of ‘COOLCAT FASHION B.V’. However, these documents originate from the opponent itself and therefore they are insufficient to establish that the earlier marks enjoy reputation in the relevant territories. The documents refer respectively to other reports from KPMG dated 17/07/2017 and another July 2018 but these reports have not been submitted and the financial statements are not corroborated by additional independent evidence, nor is there verified information about the intensity of its use or the size of the investments made by the undertaking in promoting the marks.

The opponent could have submitted other evidence such as declarations drawn by independent parties attesting to the mark’s reputation, opinion polls, certifications, awards, newspapers referring to the reputation of the marks and other commercial documents, audits and inspections.

In view of the foregoing, the evidence, as a whole, does not provide sufficient indications of the degree of recognition of the trade marks by the relevant public in the relevant territories. It does not indicate any sales volumes of the trade mark in the relevant territories, neither does it show the extent to which the trade mark has been promoted in the relevant territories, namely the European Union and the Benelux.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade marks have a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected. 

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Richard BIANCHI

Cristina CRESPO MOLTO

Martina GALLE

 

 

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.