OPPOSITION No B 3 097 429

Perry Ellis International Europe Limited, Olympic House, Pleasants Street, Dublin 8, Ireland (opponent), represented by Taylor Wessing, Isartorplatz 8, 80331 München, Germany (professional representative)

a g a i n s t

Yuanfan Zheng, 209 Building 17, No. 60, Lane 1, Baomin 1^st Road, Baoan District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center, Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 06/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 097 429 is partially upheld, namely for the following contested goods:

Class 20: Computer keyboard trays.

2. European Union trade mark application No 18 082 022 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 082 022 for the figurative mark . The opposition is based on European Union trade mark registrations No 4 572 665, No 15 272 677 and No 13 313 705, all three for the word mark ‘FARAH’. The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier marks, and Article 8(5) EUTMR in relation to the earlier European Union trade mark registration No 4 572 665.

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.

a) The goods

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

European Union trade mark registration No 4 572 665

Class 18: Bags, wallets, purses, trunks and travelling bags.

Class 25: Clothing, footwear, headgear; belts; braces; suspenders.

European Union trade mark registration No 15 272 677

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps, bath soaps; shower gel; fragrances, perfumes and perfumery, colognes; personal deodorants; essential oils; hair lotions; bath lotion and creams; bath oil; body lotion; bath powder; body scrub; face powder; cosmetics; eau de toilette; eau de toilette spray; aftershave balm; eau de toilette gift sets consisting primarily of shower gel, eau de toilette spray, and after shave balm; dentifrices; shampoos; skin moisturizer; hair gel; hair mousse; hair styling spray; sun care lotions; sun tan gel; sun tan lotion, sun tan oil and sun block lotion.

Class 9: Optical products and electronic accessories, namely, cases specially adapted for electronic equipment, namely, mobile phones, smart phones, handheld mobile digital electronic devices and tablet computer, headphones, earbud and computer stylus, CD cases, cell phone holders parts and fittings, namely, clips, holders, stands, mounts for cell phones, small electronic devices, namely, MP3 players and blank USB flash drives.

Class 14: Horological and chronometric instruments, including watches, watch cases and time pieces; clocks, jewelry, namely necklaces, bracelets, earrings, jewelry pins, rings, anklets, cufflinks, tie bars, tie tacs, tie pins, pendants, pill boxes of precious metal, precious metals and their alloys.

European Union trade mark registration No 13 313 705

Class 8: Manicure sets for gift sets; handyman tool sets for gift sets; beard trimmers for gift sets.

Class 9: Phone chargers for gift sets; electronic tablet cases for gift sets; phone cases for gift sets.

Class 14: Key rings for gift sets.

Class 15: Harmonicas for gift sets.

Class 16: Stationary; zip portfolio cases, notebooks and pens for gift sets.

Class 18: Umbrellas for gift sets.

Class 21: Hip flasks for gift sets: shoe polish sets consisting of brushes and shoe polish for gift sets.

Class 28: Playing card games sets for gift sets; chess sets for gift sets.

The contested goods are the following:

Class 20: Personal compact mirrors; shaving mirrors; hand-held mirrors [toilet mirrors]; mirrors enhanced by electric lights; silvered glass [mirrors]; mirrors [looking glasses]; bathroom mirrors; locker mirrors; computer keyboard trays; pillows.

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

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

However, the term ‘namely’, used also in the opponent’s list of goods 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 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.

The moot points are whether the relevant public would perceive the goods or services concerned as having a common commercial origin (04/11/2003, T‑85/02, Castillo, EU:T:2003:288, § 38) and whether consumers would consider it normal for the goods or services to be marketed under the same trade mark, ‘which normally implies that a large number of producers or providers are the same’ (11/07/2007, T‑150/04, Tosca Blu, EU:T:2007:214, § 37).

The contested computer keyboard trays are similar to a low degree to the opponent’s electronic accessories, namely, cases specially adapted for electronic equipment, namely, mobile phones, smart phones, handheld mobile digital electronic devices and tablet computer, headphones, earbud and computer stylus, CD cases, cell phone holders parts and fittings, namely, clips, holders, stands, mounts for cell phones, small electronic devices, namely, MP3 players and blank USB flash drives in Class 9 (EUTM No 15 272 677). These goods are all accessories and supporting tools for electronic devices, including computers, and may be produced by the same undertakings. Moreover, they are sold through the same distribution channels and target the same relevant public.

The contested personal compact mirrors; shaving mirrors; hand-held mirrors [toilet mirrors]; mirrors enhanced by electric lights; silvered glass [mirrors]; mirrors [looking glasses]; bathroom mirrors; locker mirrors are dissimilar to all the opponent’s goods in Classes 3, 8, 9, 14, 15, 16, 18, 21, 25 and 28.

Contrary to the opponent’s argument, the fact that some of the goods (for example, some of the contested mirrors and the opponent’s cosmetics) might on some occasions be sold through the same distribution channels and target the same relevant public does not in itself make them similar. Furthermore, although it is true that on some occasions certain goods, for example cosmetics and hand mirrors, might be offered by the same undertakings under the same mark, as shown by the opponent, this is exceptional and certainly not the rule.

All these goods have a different nature, purpose and method of use. The opponent’s argument that the purpose of the applicant’s mirrors is the same as the opponent’s cosmetics in Class 3 cannot be upheld. Although these goods might be used at the same time, the purpose of the mirrors is clearly to reflect an image, while the purpose of the opponent’s goods in Class 3 is personal hygiene and beautification. Furthermore, these goods are not complementary (as the use of one is not indispensable for the use of the other) nor in competition. Therefore, the relevant public will not perceive the goods concerned as having a common commercial origin.

The contested pillows are dissimilar to all the opponent’s goods in Classes 3, 8, 9, 14, 15, 16, 18, 21, 25 and 28. These goods have a different nature, purpose and method of use. They are neither complementary nor in competition. Furthermore, they are not provided by the same undertakings. Contrary to what is argued by the opponent, it is not common practice for companies selling goods in Class 25 to also offer pillows. Although it might be true that some companies in the fashion sector are extending their business to home accessories, this is not a common practice and only applies to larger, more successful companies.

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 found to be similar to a low degree are directed at the public at large. The degree of attention is average.

c) The signs

FARAH
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a word mark. The protection of a word mark concerns the word as such. Therefore, it is irrelevant, for the purposes of the comparison, whether it is written in upper- or lower-case letters or a combination thereof.

The common element of the signs, ‘FARAH’, will be understood by part of the public as an Arabic female first name. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The additional element ‘La’ in the contested sign will be perceived by part of the public as a definite article which is less distinctive than the element ‘FARAH’ that follows. Another part of the relevant public will perceive it as meaningless and distinctive.

Visually, the signs coincide in the verbal element ‘FARAH’, which is the sole element in the earlier mark and the second and longest element in the contested sign. However, they differ in the addition of the word ‘La’ in the contested sign, which is shorter, and for part of the relevant public less distinctive than the element ‘FARAH’. Furthermore, the signs differ in the slight stylisation of the verbal elements in the contested sign. This slight stylisation is rather common and not particularly imaginative or striking.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the verbal element ‘FARAH’, present identically in both signs. The pronunciation differs in the sound of the additional word ‘La’ of the contested sign, which has no counterpart in the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For a part of the relevant public neither of the signs has a meaning in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

For the part of the relevant public that will only perceive the element ‘La’ in the contested sign with a specific meaning, the signs are not conceptually similar.

The remaining part of the relevant public will associate both signs with a similar meaning on account of the female name ‘FARAH’, while the additional element ‘La’ will be perceived as meaningless or less distinctive. For this part of the relevant public, the signs are conceptually similar to a high degree.

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

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark EUTM No 15 272 677, which is the only relevant one in this assessment of likelihood of confusion, as some of its goods are similar to a low degree to some of the contested goods, has inherently at least an average degree of distinctive character and has been extensively used.

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 goods 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

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

Such an assessment implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, ‘Canon’, EU:C:1998:442, § 17).

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).

The goods are partly similar to a low degree and partly dissimilar. The relevant public is the public at large, and the degree of attention is average.

The signs are visually and aurally similar at least to an average degree. Conceptually, they are similar to a high degree. The earlier mark is of an average degree of distinctiveness.

Taking into account the striking similarities between the signs, the relevant public might be led to believe that the relevant goods come 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 15 272 677.

Pursuant to the interdependence principle mentioned above, the low degree of similarity between the goods is counterbalanced by the higher degree of similarity between the signs, in particular the high degree of conceptual similarity. It follows from this and from the explanations above that the contested trade mark must be rejected for the goods that are similar to a low degree to those of the earlier trade mark.

The rest of the contested goods 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 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 extensive use or reputation as claimed by the opponent and in relation to similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

REPUTATION — ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) EUTMR in relation to the earlier European Union trade mark registration No 4 572 665 for the word mark ‘FARAH’.

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.

Reputation of the earlier trade mark

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

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 14/06/2019. 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, footwear, headgear; belts; braces; suspenders.

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 27/02/2020 the opponent submitted the following evidence:

 Exhibit 1: excerpts dated 27/02/2020, from the opponent’s website farah.co.uk showing the earlier mark in relation to i.a. clothing articles;

 Exhibit 2: excerpts, dated 27/02/2020, from the webpages tkmaxx.com and zalando.de showing the earlier mark in relation with i.a. clothing articles;

 Exhibit 3: results from the store locator on farah.co.uk, including pictures of the three stores in Covent Garden, Brighton and Leeds;

 Exhibit 4: screenshot from the ‘FARAH’ Twitter account, dated 27/02/2020, showing that it has over 15 000 followers on Twitter (@farahmenswear);

 Exhibit 5: screenshot from the ‘FARAH’ Facebook account (not dated), showing more than 201 000 likes;

 Exhibit 6: excerpts from ‘FARAH’ on Youtube, dated 27/02/2020;

 Exhibit 7: screenshot from ‘FARAH’ Pinterest account, dated 27/02/2020;

 Exhibit 8: screenshot from the ‘FARAH’ Instagram account, dated 27/02/2020.

All the evidence is either undated or dated in 2020 and does not refer in any relevant way to the use and recognition of the mark before the relevant date, namely before 14/06/2019.

Moreover, despite showing some use of the trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Although the social media evidence gives some indication of the number of people that encountered the mark, the numbers are not high enough to show that the mark has obtained a certain degree of recognition or is reputed. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark had a reputation before 14/06/2019.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María del Carmen SUCH SÁNCHEZ

Saida CRABBE

Chantal VAN RIEL

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.