OPPOSITION Nо B 3 094 706

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

a g a i n s t

Tasy S.R.O., Mokrá 358, 66404 Mokrá-Horákov, Czech Republic (applicant), represented by Eliška Chobolová, Cihlářská 643/19, 60200 Brno, Czech Republic (professional representative).

On 27/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 706 is partially upheld, namely for the following contested goods and services:

Class 12: All the contested goods in this class.

Class 35: All the contested services in this class.

2. European Union trade mark application No 18 078 220 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 078 220 (figurative mark). The opposition is based on European Union trade mark registration No 49 221 ‘BOSS’ (word mark), European Union trade mark registration No 18 020 098 ‘HUGO BOSS’ (word mark) and European Union trade mark registration No 18 008 465 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR for all the above earlier marks and in relation to European Union trade mark registration No 49 221 ‘BOSS’, Article 8(5) EUTMR.

PROOF OF USE

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

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

In the present case, the request of proof of use, which was filed within the time limit and in a separate document, was only directed against earlier European Union trade mark registration No 18 008 465, which was not registered for five years prior to the filing date of the contested application. In fact, this earlier mark was registered on 10/08/2019 and the filing of the contested trade mark was on 06/06/2019.

Moreover, on 28/07/2020, the applicant requested, in its observations in reply to the opponent’s observations, proof of use of all earlier marks on which the opposition was based. However, the request was not duly submitted by way of a separate document as required by Article 10(1) EUTMDR. Therefore, the request for proof of use for all earlier marks is inadmissible pursuant to Article 10(1) EUTMDR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 18 020 098.

a) The goods and services

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

Class 9: Spectacles and parts therefor; spectacle cases; cell phone cases; laptop cases; smartwatches and software; mobile apps; wearable activity trackers; electronic pens.

Class 10: Condoms; sex aids.

Class 12: Bicycles; e-bikes; golf carts; dollies [hand trucks]; prams; rickshaws; sleighs; land vehicles and conveyances.

Class 14: Precious metals and their alloys and goods of precious metals or coated therewith (included in Class 14), namely agates, amulets [jewellery, jewelry (Am.)], charms for key rings, pins being jewelry, bracelets [jewellery, jewelry (Am.)], brooches [jewellery], gemstones, cloisonné jewellery, precious stones, diamonds, ivory jewelry, jewelry findings, ornaments of jet, semi-precious stones, necklaces [jewellery], chains [jewelry], tie clips, tie pins, works of art of precious metal, beads for making jewelry, cuff links, lockets [jewellery], earrings, pearls [jewellery], platinum [metal], rings [jewellery, jewelry (Am.)], key rings, split rings of precious metal, decorative pins and pendants, jewelry rolls, jewelry boxes, hat jewellery and shoes, clasps for jewelry; jewels; ornaments [jewellery, jewelry (Am,)]; jewellery; clocks and watches; jewellery boxes and watch boxes.

Class 16: Paper, cardboard and goods made from these materials, in particular advertisement board, packing paper, bags [envelopes, pouches] for packaging, packing [cushioning, stuffing] materials, photographs [printed], note books, booklets, calendars, desktop planners, adhesive pads [stationery], note pads, personal organizers, bookmarkers, paper-dips, desk mats, hangtags and stickers; printed matter; containers of plastic, paper or cardboard for packaging; stickers; playing cards; money clips; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; office requisites; stationery.

Class 18: Leather and imitations of leather, and goods made of these materials (included in Class 18), namely trunks and travelling bags, casual bags, brief bags, beach bags, wallets, shopping bags, casings, of leather, for springs, covering of skins (furs), fur blankets, purses, holdalls, suitcase handles, handbags, bum bags, card wallets (leather ware), garment bags for travel, vanity cases, not fitted, credit card cases [wallets], toiletry bags, cosmetic bags sold empty, straps (leather-), animal skins, umbrella handles, traveling sets, backpacks, key bags, satchels, gym bags, bags [envelopes, pouches] of leather, for packaging, leather bags or pouches for packaging purposes, umbrellas and parasols, trunks and travelling bags, bags, umbrellas and parasols, luggage, bags, wallets and other carriers.

Class 20: Furniture, mirrors, frames; hangers; clothing bags of plastic; coathooks; displays, stands and labels (not of metal); textile labels and tags; curtains and drapes.

Class 24: Woven fabrics and textile goods, included in Class 24, in particular handkerchiefs and hand towels; bed and table linen, wall hangings of textile.

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

Class 27: Carpets, wall hangings (non-textile); wall and ceiling coverings; floor coverings; yoga- and fitness-mats.

Class 28: Games and playthings; gymnastic and sporting articles, in particular skis, golf clubs and tennis racquets; balls; gymnastic and sports articles (included in Class 28).

Class 35: Business management, sales consultancy; wholesale and retail services in relation to clothing, footwear, headgear clocks and watches, spectacles, fashion accessories, cosmetics and perfumery, goods of leather, bags, bed linen, home textiles, household articles, stationery, luggage, sporting articles and tobacco goods; marketing services; market research and market analysis; advertising; sales promotion; rental of advertising space; distribution of goods and advertising material for advertising purposes, including via electronic media and via the internet; presentation of goods, in particular shop and shop window dressing; organization of exhibitions, for commercial or advertising purposes; promotion of business relationships by providing of commercial and business contacts; advice and advisory services for consumers; business consultancy and administration; business organisation consulting; professional business consulting; fashion consultancy (business); organization of fashion shows for commercial, industrial and advertising purposes; management of retail stores in relation to clothing, footwear, headgear clocks and watches, spectacles, fashion accessories, cosmetics and perfumery, goods of leather, bags, bed linen, home textiles, household articles, stationery, luggage, sporting articles and tobacco goods; online wholesale and retail services and online ordering services in relation to clothing, footwear, headgear clocks and watches, spectacles, fashion accessories, cosmetics and perfumery, goods of leather, bags, bed linen, home textiles, household articles, stationery, luggage, sporting articles and tobacco goods; mail ordering services and computerized online-ordering services in relation to clothing, footwear, headgear clocks and watches, spectacles, fashion accessories, cosmetics and perfumery, goods of leather, bags, bed linen, home textiles, household articles, stationery, luggage, sporting articles and tobacco goods.

Class 42: Planning of offices; IT services; design services, graphic design services; design, hosting and maintenance of websites.

The contested goods and services are the following:

Class 12: Rubber patches for repairing vehicle tyres; adhesive rubber patches for repairing inner tubes; vehicle tires; tire protection chains; wheels and tyres, and continuous tracks for vehicles; vehicle wheel spokes; anti-slide chains for vehicle wheels; pneumatic tires for automobiles; tyre chains (anti-skid -); rims for vehicle wheels; tire snow chains [land vehicle parts]; rubber patches for repairing vehicle inner tubes; pneumatic tyres and inner tubes for motorcycles; patches for inner tubes of tyres; snow chains for motor vehicles; treads for retreading tyres; tire repair patches; non-skid devices for vehicle tyres; solid rubber tyres for vehicle wheels; tire chains [land vehicle parts]; tyres for motorcycles; repair outfits for inner tubes; automobile tyres; tyres for trucks; adhesive rubber patches for repairing tubes or tires; spiked tires to assist the traction of vehicles in snow; solid tyres for vehicle wheels; spikes for tyres; retreaded tyres; tyres for buses; tyres for two-wheeled vehicles; wheel trims; vehicle wheels; snow chains for vehicle wheels; treads for retreading tyres for vehicles used in the civil engineering industry; metal studs for vehicle tyres; spare wheel covers; tyres; balance weights for vehicle wheels; spiked tires to assist the traction of vehicles in icy conditions; inner tubes for pneumatic tyres; anti-skid chains for vehicle tires; hub caps; tyres for the wheels of forestry vehicles; spiked tires for vehicles; covers for tyres.

Class 35: Wholesale services in relation to non-skid devices for vehicle tyres; retail services in relation to tyres for buses; online retail services in relation to anti-skid chains for vehicle tires; retail services in relation to tire snow chains [land vehicle parts]; retail services in relation to spikes for tyres; online retail services in relation to retreaded tyres; retail services in relation to patches for inner tubes of tyres; retail services in relation to non-skid devices for vehicle tyres; wholesale services in relation to spare wheel covers; retail services in relation to covers for tyres; wholesale services in relation to tyres for motorcycles; wholesale services in relation to repair outfits for inner tubes; retail services in relation to adhesive rubber patches for repairing inner tubes; retail services in relation to anti-skid chains for vehicle tires; online retail services in relation to snow chains for motor vehicles; online retail services in relation to spare wheel covers; online retail services in relation to anti-slide chains for vehicle wheels; retail services in relation to hub caps; wholesale services in relation to hub caps; wholesale services in relation to balance weights for vehicle wheels; online retail services in relation to spiked tires to assist the traction of vehicles in snow; online retail services in relation to spiked tires for vehicles; wholesale services in relation to vehicle wheel spokes; online retail services in relation to adhesive rubber patches for repairing inner tubes; online retail services in relation to solid tyres for vehicle wheels; wholesale services in relation to adhesive rubber patches for repairing inner tubes; retail services in relation to spiked tires to assist the traction of vehicles in snow; retail services in relation to treads for retreading tyres for vehicles used in the civil engineering industry; wholesale services in relation to tire repair patches; retail services in relation to tyres; wholesale services in relation to rims for vehicle wheels; online retail services in relation to pneumatic tyres and inner tubes for motorcycles; wholesale services in relation to vehicle wheels; retail services in relation to tire repair patches; wholesale services in relation to wheel trims; online retail services in relation to tyres for the wheels of forestry vehicles; online retail services in relation to non-skid devices for vehicle tyres; online retail services in relation to tire protection chains; wholesale services in relation to covers for tyres; online retail services in relation to tire snow chains [land vehicle parts]; wholesale services in relation to adhesive rubber patches for repairing tubes or tires; wholesale services in relation to inner tubes for pneumatic tyres; online retail services in relation to wheel trims; retail services in relation to anti-slide chains for vehicle wheels; online retail services in relation to rubber patches for repairing vehicle tyres; retail services in relation to tyre chains (anti-skid -); online retail services in relation to inner tubes for pneumatic tyres; retail services in relation to spare wheel covers; wholesale services in relation to spiked tires to assist the traction of vehicles in snow; retail services in relation to vehicle tires; online retail services in relation to hub caps; wholesale services in relation to tyres for trucks; wholesale services in relation to patches for inner tubes of tyres; wholesale services in relation to solid tyres for vehicle wheels; retail services in relation to adhesive rubber patches for repairing tubes or tires; wholesale services in relation to spiked tires for vehicles; retail services in relation to vehicle wheel spokes; retail services in relation to pneumatic tires for automobiles; online retail services in relation to snow chains for vehicle wheels; retail services in relation to treads for retreading tyres; online retail services in relation to vehicle wheel spokes; wholesale services in relation to tyre chains (anti-skid -); wholesale services in relation to pneumatic tires for automobiles; wholesale services in relation to automobile tyres; retail services in relation to spiked tires for vehicles; retail services in relation to solid rubber tyres for vehicle wheels; wholesale services in relation to tyres; wholesale services in relation to rubber patches for repairing vehicle inner tubes; wholesale services in relation to spikes for tyres; wholesale services in relation to vehicle tires; retail services in relation to wheels and tyres, and continuous tracks for vehicles; wholesale services in relation to solid rubber tyres for vehicle wheels; wholesale services in relation to rubber patches for repairing vehicle tyres; retail services in relation to inner tubes for pneumatic tyres; retail services in relation to tire chains [land vehicle parts]; online retail services in relation to adhesive rubber patches for repairing tubes or tires; wholesale services in relation to snow chains for vehicle wheels; online retail services in relation to tyres for trucks; wholesale services in relation to pneumatic tyres and inner tubes for motorcycles; online retail services in relation to patches for inner tubes of tyres; online retail services in relation to balance weights for vehicle wheels; retail services in relation to rubber patches for repairing vehicle inner tubes; retail services in relation to rubber patches for repairing vehicle tyres; wholesale services in relation to anti-skid chains for vehicle tires; online retail services in relation to rubber patches for repairing vehicle inner tubes; online retail services in relation to covers for tyres; online retail services in relation to tyres for two-wheeled vehicles; retail services in relation to tyres for the wheels of forestry vehicles; retail services in relation to rims for vehicle wheels; online retail services in relation to spiked tires to assist the traction of vehicles in icy conditions; retail services in relation to wheel trims; wholesale services in relation to snow chains for motor vehicles; retail services in relation to automobile tyres; online retail services in relation to vehicle tires; wholesale services in relation to tire protection chains; wholesale services in relation to tyres for the wheels of forestry vehicles; retail services in relation to repair outfits for inner tubes; wholesale services in relation to retreaded tyres; wholesale services in relation to anti-slide chains for vehicle wheels; online retail services in relation to tyres for buses; online retail services in relation to pneumatic tires for automobiles; online retail services in relation to treads for retreading tyres for vehicles used in the civil engineering industry; retail services in relation to tire protection chains; retail services in relation to snow chains for motor vehicles; retail services in relation to balance weights for vehicle wheels; wholesale services in relation to tyres for buses; online retail services in relation to tire chains [land vehicle parts]; retail services in relation to snow chains for vehicle wheels; retail services in relation to solid tyres for vehicle wheels; retail services in relation to retreaded tyres; online retail services in relation to wheels and tyres, and continuous tracks for vehicles; retail services in relation to spiked tires to assist the traction of vehicles in icy conditions; wholesale services in relation to tire snow chains [land vehicle parts]; online retail services in relation to vehicle wheels; online retail services in relation to automobile tyres; wholesale services in relation to metal studs for vehicle tyres; retail services in relation to vehicle wheels; retail services in relation to tyres for motorcycles; online retail services in relation to rims for vehicle wheels; wholesale services in relation to treads for retreading tyres; retail services in relation to metal studs for vehicle tyres; online retail services in relation to tyres for motorcycles; online retail services in relation to tire repair patches; online retail services in relation to metal studs for vehicle tyres; online retail services in relation to tyre chains (anti-skid -); online retail services in relation to solid rubber tyres for vehicle wheels; wholesale services in relation to tyres for two-wheeled vehicles; online retail services in relation to tyres; wholesale services in relation to spiked tires to assist the traction of vehicles in icy conditions; wholesale services in relation to wheels and tyres, and continuous tracks for vehicles; wholesale services in relation to tire chains [land vehicle parts]; online retail services in relation to treads for retreading tyres; online retail services in relation to repair outfits for inner tubes; retail services in relation to tyres for two-wheeled vehicles; wholesale services in relation to treads for retreading tyres for vehicles used in the civil engineering industry; retail services in relation to pneumatic tyres and inner tubes for motorcycles; online retail services in relation to spikes for tyres; retail services in relation to tyres for trucks.

Class 37: Repair and maintenance of spiked tires to assist the traction of vehicles in icy conditions; installation services of tyres for trucks; repair and maintenance of wheel trims; installation services of tire chains [land vehicle parts]; repair and maintenance of wheels and tyres, and continuous tracks for vehicles; installation services of vehicle wheels; installation services of wheel trims; repair and maintenance of tyres for the wheels of forestry vehicles; installation services of tire snow chains [land vehicle parts]; installation services of tyres for motorcycles; installation services of rubber patches for repairing vehicle inner tubes; installation services of vehicles and conveyances; installation services of adhesive rubber patches for repairing tubes or tires; repair and maintenance of spiked tires for vehicles; installation services of solid rubber tyres for vehicle wheels; repair and maintenance of non-skid devices for vehicle tyres; repair and maintenance of adhesive rubber patches for repairing inner tubes; installation services of tire repair patches; installation services of pneumatic tires for automobiles; installation services of tyres for the wheels of forestry vehicles; installation services of tyre mounts; installation services of snow chains for motor vehicles; installation services of automobile tyres; installation services of treads for retreading tyres; installation services of spare wheel covers; repair and maintenance of tyres; installation services of anti-skid chains for vehicle tires; installation services of vehicle tires; repair and maintenance of hub caps; installation services of spiked tires to assist the traction of vehicles in snow; installation services of retreaded tyres; installation services of wheels and tyres, and continuous tracks for vehicles; repair and maintenance of adhesive rubber patches for repairing tubes or tires; repair and maintenance of spiked tires to assist the traction of vehicles in snow; installation services of metal studs for vehicle tyres; repair and maintenance of snow chains for vehicle wheels; repair and maintenance of tire protection chains; installation services of tyres for buses; installation services of pneumatic tyres and inner tubes for motorcycles; installation services of anti-slide chains for vehicle wheels; repair and maintenance of rubber patches for repairing vehicle tyres; installation services of non-skid devices for vehicle tyres; installation services of rims for vehicle wheels; installation services of adhesive rubber patches for repairing inner tubes; installation services of covers for tyres; repair and maintenance of tire repair patches; installation services of rubber treads for tires; repair and maintenance of anti-skid chains for vehicle tires; installation services of tyres for two-wheeled vehicles; repair and maintenance of vehicle wheel spokes; repair and maintenance of treads for retreading tyres for vehicles used in the civil engineering industry; installation services of tyres; repair and maintenance of anti-slide chains for vehicle wheels; repair and maintenance of vehicle wheels; installation services of patches for inner tubes of tyres; repair and maintenance of tyres for two-wheeled vehicles; installation services of vehicle wheel spokes; repair and maintenance of solid rubber tyres for vehicle wheels; installation services of tyre chains (anti-skid -); repair and maintenance of tyre chains (anti-skid -); installation services of rubber patches for repairing vehicle tyres; repair and maintenance of tyres for motorcycles; installation services of spiked tires to assist the traction of vehicles in icy conditions; repair and maintenance of repair outfits for inner tubes; repair and maintenance of solid tyres for vehicle wheels; repair and maintenance of pneumatic tires for automobiles; installation services of spiked tires for vehicles; repair and maintenance of vehicle tires; repair and maintenance of tyres for trucks; repair and maintenance of retreaded tyres; repair and maintenance of automobile tyres; installation services of snow chains for vehicle wheels; repair and maintenance of tyres for buses; installation services of inner tubes for pneumatic tyres; repair and maintenance of inner tubes for pneumatic tyres; repair and maintenance of snow chains for motor vehicles; repair and maintenance of tire snow chains [land vehicle parts]; installation services of hub caps; repair and maintenance of patches for inner tubes of tyres; repair and maintenance of metal studs for vehicle tyres; installation services of balance weights for vehicle wheels; repair and maintenance of spare wheel covers; repair and maintenance of balance weights for vehicle wheels; repair and maintenance of treads for retreading tyres; repair and maintenance of tire chains [land vehicle parts]; repair and maintenance of rubber patches for repairing vehicle inner tubes; installation services of solid tyres for vehicle wheels; installation services of spikes for tyres; repair and maintenance of rims for vehicle wheels; installation services of tyre-pressure measurers; installation services of treads for retreading tyres for vehicles used in the civil engineering industry; repair and maintenance of pneumatic tyres and inner tubes for motorcycles; repair and maintenance of spikes for tyres; installation services of tire protection chains; repair and maintenance of covers for tyres; installation services of repair outfits for inner tubes.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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.

Contested goods in Class 12

The contested goods in this class are all parts and fittings for land vehicles. Therefore, they are similar to the opponent’s land vehicles in the same class, as they usually coincide in relevant public and distribution channels. Furthermore, they are complementary. In some cases, such as the contested rubber patches for repairing vehicle tyres or rims for vehicle wheels the goods can also be produced by the same undertakings.

Contested services in Class 35

The contested services in this class are retail (including online) and wholesale services in relation to parts and fittings for land vehicles.

There is a low degree of similarity between the retail services concerning specific goods and other specific highly similar or similar goods, because of the close connection between them on the market from the consumer’s 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 consumer.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services or internet shopping in Class 35.

The retail services of the specific goods and the goods covered by the earlier mark are closely connected from the consumer’s perspective as they belong to the same market sector and it is customary practice to market such goods together. They are commonly sold in the same specialised shops or in the same sections of department stores or supermarkets.

Therefore, the contested retail services (including online) and wholesale services in relation to parts and fittings for land vehicles are similar to a low degree to the opponent’s land vehicles in Class 12.

Contested services in Class 37

The contested services in this class are repair, maintenance and installation services of parts and fittings for land vehicles. The closest opponent’s goods are land vehicles in Class 12.

The goods and services at issue have a different nature, since goods are tangible goods while services refer to intangible activities. In addition, their purpose is also different, since the repair services of vehicle parts are intended to fix breakdowns, while vehicles are intended to transport people or goods. The same applies to their use; a vehicle is used to drive, while the services involve repairs to damaged parts of vehicles (15/12/2010, T‑451/09, Wind, EU:T:2010:522, § 23) and maintenance and installation of parts of vehicles. Although there is a certain complementarity between the goods and services in question, according to settled case-law, complementary products are those that are closely linked, in the sense that one is essential or important for the use of the other, so consumers may think that the same company is responsible for both (24/09/2008, T‑116/06, O Store, EU:T:2008:399, § 52).

In this regard, no consumer will presume that companies that provide repair, maintenance and installation services manufacture and sell vehicles that are the same brand as the services. Therefore, consumers would not be led to believe that the repair and mechanical service provider is responsible for the manufacture of the vehicles, or vice versa (15/12/2010, T‑451/09, Wind, EU:T:2010:522, § 30). In particular, land vehicle parts and fittings and other such components usually are high precision parts, the assembly and manufacture of which requires highly specialised machine tools. Such parts are not usually manufactured by garages, but rather by specialised component suppliers. Despite these goods sometimes being offered at the same premises, the public will therefore not consider them to come from the same source as the repair, maintenance and installation services. Consequently, these goods and services are dissimilar.

A fortiori, these contested services are also dissimilar to all the remaining opponent’s goods and services, since they do not have any relevant criteria in common. In fact, the contested services in this class do not share any commonalities with goods and services in Classes 9 (mainly spectacles and their cases; cell phone and laptop cases; smartwatches and software; mobile apps; wearable activity trackers and electronic pens), 10 (condoms; sex aids), 12 (mainly bicycles, golf carts, dollies, prams, rickshaws, sleighs and conveyances), 14 (mainly precious metals and goods made thereof, jewelry, gemstones and ornaments, key rings, clocks and watches and their boxes), 16 (mainly paper, cardboard and goods made from these materials; stickers; playing cards; money clips; bags and articles for packaging, wrapping or storage; office requisites; stationery), 18 (mainly leather and imitations of leather, and goods made thereof), 20 (mainly furniture), 24 (mainly woven fabrics and textile goods), 25 (mainly clothing, headgear and shoes), 27 (mainly carpets; wall, ceiling and floor coverings; yoga- and fitness-mats), 28 (mainly games, playthings, gymnastic and sports articles), 35 (mainly business management; wholesale and retail services in relation to the goods listed in the previous classes and also tobacco goods; advertising; advice and advisory services for consumers; business consultancy and administration), and 42 (planning of offices; IT services; design services, graphic design services; design, hosting and maintenance of websites).

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 similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

c) The signs

HUGO BOSS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The 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 common element ‘BOSS’ of the signs is an English word that will be understood by a part of the public as referring to the person who is in charge of an organisation (e.g. in French, information extracted from Larousse Dictionary on 25/01/2021 at https://www.larousse.fr/dictionnaires/francais/boss/10299). Another part of the public in the European Union (EU) will not understand it. Finally, it could be perceived by part of the public as a family name (albeit not a common one). The word ‘BOSS’ does not have any meaning in relation to the goods and services in question and is therefore considered to have a normal degree of distinctiveness. Since ‘BOSS’ can have several meanings, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that will perceive ‘BOSS’ as a family name in both signs.

The element preceding ‘BOSS’ in the earlier mark, ‘HUGO’, will be perceived as a traditional given name that has become quite popular in several Member States, including France, Germany, Portugal, Spain (where it was the most popular male first name in 2018) and the United Kingdom. As it has no meaning in relation to the relevant goods, it has a normal degree of distinctiveness. However, family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first name may belong to a great number of people who have nothing in common, whereas the presence of the same surname, provided it is not common in the relevant territory, could imply the existence of some link between them (e.g. identity of the persons or a family link).

The contested sign’s element ‘BOSS’ is preceded by another element, the French word ‘PNEU’, which will be identified as a separate word due to the use of a different colour (black in contrast to the colour red of the word ‘BOSS’). For the French-speaking public at least, it will be identified as the abbreviation of pneumatique (tyre), which refers to a rubber covering, typically inflated or surrounding an inflated inner tube, placed round a wheel to form a soft contact with the road (information extracted from Larousse Dictionary on 25/01/2021 at https://www.larousse.fr/dictionnaires/francais/pneu/61852). Considering that the relevant goods and services are related to tyres of vehicles, this element is non-distinctive for the goods and services at issue, as it directly describes their nature or the characteristics.

The contested sign, although composed of one verbal element without spaces, will be perceived as two words: ‘PNEU’ and ‘BOSS’, by at least the French-speaking consumers, because, in addition to the different colour of the two words, as mentioned above, consumers usually break signs 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). Therefore, the Opposition Division will focus the comparison of the signs on the French-speaking part of the public.

The figurative element of the contested sign is placed at the end of the sign and consumers normally focus on the beginning of a sign. It depicts a stylised image of a man’s head with a hat. As it has no correlation with the goods and services at issue, it is considered distinctive to a normal degree. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the verbal element ‘BOSS’, which has a higher intrinsic value and is distinctive to a normal degree, but differ in the verbal element ‘HUGO’ of the earlier mark, which has a lower intrinsic value as an indicator of the origin of goods or services, as explained above, and ‘PNEU’ of the contested sign, which is non-distinctive. The signs also differ in the contested sign’s colours, which have a mere decorative function, and its figurative element, which has a lower impact than the verbal elements and is placed at the end.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘BOSS’, present identically in both signs. The pronunciation differs in the sound of the words ‘HUGO’ of the earlier mark, which has less intrinsic value, and ‘PNEU’ of the contested sign, which is non-distinctive.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the significant part of the relevant public of the territory that will interpret ‘BOSS’ in both marks in the same way, the signs coincide in this meaning. Considering that the contested sign’s additional word ‘PNEU’ is non-distinctive, the figurative element has a reduced impact, and the given name ‘HUGO’ of the earlier mark is quite common, the signs are conceptually similar to an average degree.

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

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case under this ground (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 goods and services in question 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 goods and services are partly similar (to varying degrees) and partly dissimilar. The goods and services found to be similar to varying degrees target the general and professional public with a degree of attention varying from average to high.

The earlier mark enjoys a normal degree of distinctiveness.

The signs are visually, aurally and conceptually similar to an average degree. Although there are some differing elements in the signs at issue, they coincide in the element ‘BOSS’, which, from the point of view of the relevant public, has a normal degree of distinctiveness in relation to the goods and services at issue. Furthermore, it is the element with a higher intrinsic value when perceived as a family name and has a higher impact than the figurative element of the contested sign. Moreover, the element ‘PNEU’ of the contested sign is non-distinctive for the relevant goods and services, as they relate to tyres and wheels.

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. Indeed, it is highly conceivable that the relevant consumer, even when displaying a high degree of attention, 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 or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), for example to designate a new line for pneumatic tyres.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public that will perceive ‘BOSS’ as a family name in both signs and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 18 020 098. 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 and services found to be similar to those of the earlier trade mark, including those similar only to a low degree.

The rest of the contested 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 services cannot be successful.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘BOSS’. In support of its argument the applicant refers to several trade mark registrations in the European Union.

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

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

 European Union trade mark registration No 49 221 for the word mark ‘BOSS’ for the following goods and services:

Class 3: Essential oils, bleaching preparations and other substances for laundry use; fragrant sprays; perfumery, deodorising preparations for personal use; soaps; cosmetics; hair care preparations including hair lotions; dentifrices; oral hygiene preparations, not for medical purposes.

Class 9: Spectacles and parts therefor.

Class 10: Condoms.

Class 12: Bicycles.

Class 14: Precious metals and their alloys and goods of precious metals or coated therewith (included in Class 14); jewellery; clocks and watches.

Class 16: Paper, cardboard and goods made from these materials (included in Class 16); printed matter; containers of plastic, paper or cardboard for packaging; stickers; playing cards.

Class 18: Leather and imitations of leather, and goods made of these materials (included in Class 18), in particular small leather goods; trunks and travelling bags; bags; umbrellas and parasols.

Class 20: Furniture, mirrors, picture frames; clothes hangers; protective covers of plastic for clothing.

Class 24: Woven fabrics and textile goods, included in Class 24, in particular handkerchiefs and hand towels; bed and table linen, wall hangings of textile.

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

Class 27: Carpets; non-textile wall hangings.

Class 28: Gymnastic and sporting articles, namely skis, snow boards, surf boards, golf clubs and tennis rackets.

Class 29: Jams, fruit sauces; eggs, milk; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, tapioca, sago, artificial coffee; flour, bread, pastry and confectionery; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments), spices, chocolate and chocolate goods, sugar confectionary.

Class 31: Agricultural, horticultural and forestry products as well as grains (as far as contained in Class 31); fresh fruits and vegetables; natural plants and flowers.

Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 35: Advertising, business management, business administration, sales consultancy.

Class 42: Planning of offices.

 European Union trade mark registration No 18 008 465 for the figurative mark for the following services:

Class 35: Business management; sales promotion consulting; wholesale and retail services in relation to clothing, watches, spectacles, fashion accessories, cosmetics and perfumery, goods of leather, namely trunks and travelling bags, casual bags, brief bags, beach bags, wallets, shopping bags, casings, of leather, for springs, covering of skins (furs), fur blankets, purses, holdalls, suitcase handles, handbags, bum bags, card wallets [leather ware], garment bags for travel, vanity cases, not fitted, credit card cases [wallets], toiletry bags, cosmetic bags sold empty, straps (leather-); animal skins, umbrella handles, traveling sets, backpacks, key bags, satchels, gym bags, bags [envelopes, pouches] of leather, for packaging, leather bags or pouches for packaging purposes, umbrellas and parasols, home textiles, luggage, sporting articles and tobacco goods; marketing services; market research; market analysis; advertising; rental of advertising space; distribution of goods and advertising material for advertising purposes, including via electronic media and via the internet; presentation of goods, in particular shop and shop window dressing; exhibitions (organization of-) for commercial or advertising purposes; promotion of business relationships by providing of commercial and business contacts; advice and advisory services for consumers; business consultancy and administration; business organisation consulting; professional business consulting.

Class 42: IT services; design services.

Since these marks cover the same or a narrower scope of goods and services or even goods and services that are clearly different to those applied for in the contested trade mark (such as cosmetics and soaps in Class 3; foodstuffs in Classes 29 and 30; agricultural, horticultural and forestry products in Class 31; waters and other non-alcoholic drinks in Class 32 or planning of offices in Class 42), the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent claimed repute in the European Union in relation to earlier European Union registration No 49 221 for goods in Class 25: clothing for men, women and children; stockings; headgear; underwear; nightwear; swimwear; bathrobes; belts; belts of leather; shawls; accessories, namely headscarves, neck scarves, shawls, dress handkerchiefs; ties; gloves; shoes.

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

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

 The signs must be either identical or similar.

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

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

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

In the present case, the applicant 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 a reputation in the European Union.

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

In the present case, the contested trade mark was filed on 06/06/2019. 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: Clothing for men, women and children; stockings; headgear; underwear; nightwear; swimwear; bathrobes; belts; belts of leather; shawls; accessories, namely headscarves, neck scarves, shawls, dress handkerchiefs; ties; gloves; shoes.

The opposition is directed against the following remaining services:

Class 37: Repair and maintenance of spiked tires to assist the traction of vehicles in icy conditions; installation services of tyres for trucks; repair and maintenance of wheel trims; installation services of tire chains [land vehicle parts]; repair and maintenance of wheels and tyres, and continuous tracks for vehicles; installation services of vehicle wheels; installation services of wheel trims; repair and maintenance of tyres for the wheels of forestry vehicles; installation services of tire snow chains [land vehicle parts]; installation services of tyres for motorcycles; installation services of rubber patches for repairing vehicle inner tubes; installation services of vehicles and conveyances; installation services of adhesive rubber patches for repairing tubes or tires; repair and maintenance of spiked tires for vehicles; installation services of solid rubber tyres for vehicle wheels; repair and maintenance of non-skid devices for vehicle tyres; repair and maintenance of adhesive rubber patches for repairing inner tubes; installation services of tire repair patches; installation services of pneumatic tires for automobiles; installation services of tyres for the wheels of forestry vehicles; installation services of tyre mounts; installation services of snow chains for motor vehicles; installation services of automobile tyres; installation services of treads for retreading tyres; installation services of spare wheel covers; repair and maintenance of tyres; installation services of anti-skid chains for vehicle tires; installation services of vehicle tires; repair and maintenance of hub caps; installation services of spiked tires to assist the traction of vehicles in snow; installation services of retreaded tyres; installation services of wheels and tyres, and continuous tracks for vehicles; repair and maintenance of adhesive rubber patches for repairing tubes or tires; repair and maintenance of spiked tires to assist the traction of vehicles in snow; installation services of metal studs for vehicle tyres; repair and maintenance of snow chains for vehicle wheels; repair and maintenance of tire protection chains; installation services of tyres for buses; installation services of pneumatic tyres and inner tubes for motorcycles; installation services of anti-slide chains for vehicle wheels; repair and maintenance of rubber patches for repairing vehicle tyres; installation services of non-skid devices for vehicle tyres; installation services of rims for vehicle wheels; installation services of adhesive rubber patches for repairing inner tubes; installation services of covers for tyres; repair and maintenance of tire repair patches; installation services of rubber treads for tires; repair and maintenance of anti-skid chains for vehicle tires; installation services of tyres for two-wheeled vehicles; repair and maintenance of vehicle wheel spokes; repair and maintenance of treads for retreading tyres for vehicles used in the civil engineering industry; installation services of tyres; repair and maintenance of anti-slide chains for vehicle wheels; repair and maintenance of vehicle wheels; installation services of patches for inner tubes of tyres; repair and maintenance of tyres for two-wheeled vehicles; installation services of vehicle wheel spokes; repair and maintenance of solid rubber tyres for vehicle wheels; installation services of tyre chains (anti-skid -); repair and maintenance of tyre chains (anti-skid -); installation services of rubber patches for repairing vehicle tyres; repair and maintenance of tyres for motorcycles; installation services of spiked tires to assist the traction of vehicles in icy conditions; repair and maintenance of repair outfits for inner tubes; repair and maintenance of solid tyres for vehicle wheels; repair and maintenance of pneumatic tires for automobiles; installation services of spiked tires for vehicles; repair and maintenance of vehicle tires; repair and maintenance of tyres for trucks; repair and maintenance of retreaded tyres; repair and maintenance of automobile tyres; installation services of snow chains for vehicle wheels; repair and maintenance of tyres for buses; installation services of inner tubes for pneumatic tyres; repair and maintenance of inner tubes for pneumatic tyres; repair and maintenance of snow chains for motor vehicles; repair and maintenance of tire snow chains [land vehicle parts]; installation services of hub caps; repair and maintenance of patches for inner tubes of tyres; repair and maintenance of metal studs for vehicle tyres; installation services of balance weights for vehicle wheels; repair and maintenance of spare wheel covers; repair and maintenance of balance weights for vehicle wheels; repair and maintenance of treads for retreading tyres; repair and maintenance of tire chains [land vehicle parts]; repair and maintenance of rubber patches for repairing vehicle inner tubes; installation services of solid tyres for vehicle wheels; installation services of spikes for tyres; repair and maintenance of rims for vehicle wheels; installation services of tyre-pressure measurers; installation services of treads for retreading tyres for vehicles used in the civil engineering industry; repair and maintenance of pneumatic tyres and inner tubes for motorcycles; repair and maintenance of spikes for tyres; installation services of tire protection chains; repair and maintenance of covers for tyres; installation services of repair outfits for inner tubes.

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 17/05/2020 the opponent submitted the following evidence:

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

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

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

 A Google search for ‘HUGO BOSS’ and ‘BOSS clothing’ showing, according to the opponent, a significant number of entries. The screenshots are dated 22/04/2020 (enclosure 5).

 A ‘mafoScorecard’ from BrandFeel in German (enclosure 6), which gives a ‘mafo score’ of 7.2 (out of 10) for the trade mark ‘BOSS’ in the fashion sector, and 9.8 (out of 10) for the mark’s awareness level, from a survey conducted in 2011 among 512 respondents.

 An online survey in eight key markets, including Germany, France, Spain, Italy and the United Kingdom, dated November 2011 (enclosure 7), conducted by the company ‘Werbestolz’ (Germany) in English. The study, ‘Status of HUGO BOSS and Competitors – Awareness and Image of HUGO BOSS Product Lines’, was conducted among men aged 25-49 and women aged 21-49; the sample size of each market was between 1 004 and 1 015 participants, with a total of 8 074 participants. As regards spontaneous brand awareness (‘Which brands of clothing in the premium or luxury segment do you know, even if only by name?’) in all markets, the mark ‘HUGO BOSS’ was in 8th place, immediately after the mark ‘LOUIS VUITTON’ (page 17). In Germany, the mark was in 1st place; in France, in 3rd place; in Italy, in 12th place; in Spain in 8th place; in the United Kingdom in 6th place (page 18). The study also provides relevant information on the aided awareness of the mark in the five EU countries, the brand possession, purchase intention, aided advertising recall and the awareness of different product lines under the ‘HUGO BOSS’ mark.

 A judgment from the District Court of Cologne, Germany (enclosure 8), dated September 1996, confirming that the mark ‘BOSS’ is well known in relation to clothing, based on the facts and figures presented in conjunction with the documents, supported by a private GFK survey of early 1994.

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

 A judgment from the Paris Court of First Instance (enclosure 10), dated March 2007, based on an opinion poll relating to the ‘BOSS/HUGO BOSS’ trade mark that led the Court to confirm that it was a ‘renowned’ trade mark.

 An affidavit signed by an employee of the opponent on 22/05/2018 (enclosure 11) on the net sales of the ‘HUGO BOSS Group’ in 2011-2015 in relation to ‘fashion and clothing accessories as well as bags and leather goods for adults in some exemplary countries of the European Union’ stating that these sales were steadily increasing and quite significant, especially in France, Germany and the United Kingdom, and on the advertising expenditure for the mark ‘BOSS’ in some EU countries in 2013 and 2014, which reflects the sales figures, confirming the highest expenditures for France, Germany and the United Kingdom.

 A chart on brand reputation in Europe and worldwide, posted on www.rankingthebrands.com (enclosure 12). According to the opponent, this chart shows that ‘BOSS’ is amongst the world’s most important trade marks: for example, in the ‘Top 50 European Love List’ ‘BOSS’ is in 41st place, while ‘BVLGARI’ is 45th and ‘LACOSTE’ is 47th. Although the screenshots are dated 22/04/2020, they give a brand overview of the trade mark ‘HUGO BOSS’ (often used as ) per year (2009-2019), per ranking institution and per country (e.g. Germany, the Netherlands, the ‘EU5’).

 Interbrand 2015 (enclosure 13) showing that is in 96th position.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in the European Union.

The survey conducted in 2011 shows a high spontaneous brand awareness of the earlier mark for clothing in a substantial part of the European Union: France, Germany, Italy, Spain and the United Kingdom (enclosure 7). Furthermore, the brand awareness of the mark ‘BOSS’ in relation to clothing is 93 % in Germany, as can be inferred from the 2011 survey ‘BOSS/HUGO – Results of Outfit 7.0’ (enclosure 4). The French and German Court decisions also demonstrate a certain degree of recognition of the mark (enclosures 8 and 10). Although they date back to 1996 and 2007, respectively, when viewed in conjunction with the materials as a whole – particularly with the surveys and news articles from 2012 and 2014 – they do offer important, indirect information proving the longevity of the mark in a sector that has a high turnaround. This information is confirmed by the chart on brand reputation (enclosure 12), which gives an up-to-date picture of the mark in the context of other market players, and the Interbrand publication of 2015 (enclosure 13).

Although the evidence is most comprehensive and detailed with regard to Germany, the opponent submitted evidence for a number of other EU Member States, such as France, Spain and Italy. It is sufficient if the reputation exists in a substantial part of the EU (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 28; 06/10/2009, C‑301/07, Pago, EU:C:2009:611, § 30) and a reputation proved in Germany is already sufficient to assume a reputation in the whole of the EU (considering that in the judgements of 14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 28 and 06/10/2009, C‑301/07, Pago, EU:C:2009:611, § 30 the territories of Benelux and Austria were considered to be sufficient). Therefore, a reputation in Germany, France, Spain and Italy would be more than sufficient.

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

b) The signs

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

c) The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

In light of the abovementioned criteria, the signs are visually, aurally and conceptually similar to an average degree, the earlier mark is intrinsically distinctive, and the opponent has proved that it enjoys a reputation for clothing. However, the goods and services at issue are not only dissimilar, but they also pertain to market sectors that are very different and not connected in any plausible way. While clothing refers to items worn to cover the body, the contested repair, maintenance and installation of parts and fittings of vehicles (including mainly tyres) are services generally provided in the lifecycle of land vehicles such as cars, bicycles and buses. Indeed, the dissimilarity of the goods and services also means there will be no likelihood of confusion on the part of the public, which, as noted above, is a relevant factor when assessing the link.

The majority of the goods and services target a completely different public. That is, the goods for which the opponent has a reputation target the general public, who have an average degree of attention, while some of the contested services target professionals in the vehicle industry, who have a high degree of attention (e.g. installation of parts and fittings for vehicles).

While the relevant section of the public for some of the goods and services covered by the conflicting marks is the same or overlaps to some extent (e.g. repair of parts of vehicles), those goods and services are so different that the contested mark is unlikely to bring the earlier mark to the relevant public’s mind. The link requires a certain connection between the goods and services at issue. Even when there is an overlap of the public or a major reputation, the market sectors concerned by the goods and services at issue may be so very different that association is unlikely. This is the case here.

The opponent claims that the ‘relevant goods of the contested trademark application that create the link from the point of view of consumers are in the commercial segment of designer’s articles lato sensu’.

However, this argument must be put aside. The goods and services not only clearly differ in nature, purpose and method of use, but also in their distribution channels. The contested services in Class 37 are commonly used in garages and cannot usually be rendered without the assistance of mechanics or vehicle parts dealers in general. They are also usually highly regulated, considering that they have an impact on road safety. Therefore, while some of the contested services may target the same general public as the reputed goods, a high degree of attention will be displayed when purchasing them, due to their impact on safety of the vehicle receiving the service. Finally, the consumer of the contested services will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 39-42). There is no market reality that indicates that producers of clothing would also diversify into such a differing field and, given the lack of any commonalities, it could even be construed as highly unlikely. Furthermore, the opponent has not adduced any particularities that would alter this finding.

While it is true that Article 8(5) EUTMR is applicable to situations where the goods and services are dissimilar, this provision does not give blanket protection but rather depends on the interplay of the relevant factors. The greater the divergence between the goods and services, as in this case, the more similar the marks and the stronger the reputation will need to be in order for the relevant public to associate the marks. As argued above, the sectors to which the goods and services pertain are very different, and there is no market reality that would indicate otherwise. Furthermore, even the average consumer is reasonably observant and circumspect and will clearly be aware of the market reality. As such, they would not make any association between the marks and the goods and services at issue.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and 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

Karin KLÜPFEL

Valeria ANCHINI

Monika CISZEWSKA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.