OPPOSITION Nо B 3 102 369

The Smiley Company SPRL, Avenue Louise n° 523, 1050 Bruxelles, Belgium (opponent), represented by FPS Partnerschaft von Rechtsanwälten mbB, Grosse Theaterstrasse 31, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Andrea La Rotella, Via Luigiscarambone 33a, 73100 Lecce, Italy (applicant).

On 26/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 102 369 is upheld for all the contested goods.

2. European Union trade mark application No 18 096 321 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods (Class 25) of European Union trade mark application No 18 096 321 for the figurative mark . The opposition is based on, inter alia, international trade mark registration No 686 861 for the word mark ‘SMILEY’ designating Bulgaria, the Czech Republic, Croatia, Latvia, Hungary, Poland, Romania, Slovenia and Slovakia. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PRELIMINARY REMARKS

The opponent indicated that international trade mark registration No 686 861 designates the following territories: Belgium, Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Ireland, Greece, Spain, France, Croatia, Italy, Cyprus, Latvia, Lithuania, Luxembourg, Hungary, Malta, the Netherlands, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden, the United Kingdom and the European Union.

The opponent accepted that the necessary information for this trade mark is imported from the relevant official online database, accessible through TMview, and that this source is used for substantiation purposes without prejudice to its right or obligation to provide any additional information that may be necessary to comply with the substantiation requirements of Article 7(2) and (4) EUTMDR.

The check on the relevant official online database, accessible through TMview, showed that the earlier international trade mark registration No 686 861 designates only the following territories from the abovementioned: Bulgaria, the Czech Republic, Croatia, Latvia, Hungary, Poland, Romania, Slovenia and Slovakia. The opponent also provided an extract from the earlier mark, which clearly demonstrates the designated territories. Therefore, the Opposition Division considers that the designated territories of the earlier international trade mark registration No 686 861 are Bulgaria, the Czech Republic, Croatia, Latvia, Hungary, Poland, Romania, Slovenia and Slovakia.

Furthermore, in its submissions submitted during the substantiation period, but after the opposition period, the opponent made reference to goods in Class 24 of the earlier international trade mark registration No 686 861, which were not indicated in the notice of opposition. According to Article 2(2)(b) EUTMDR, the notice of opposition must contain a clear identification of the earlier mark on which the opposition is based, namely: g) an indication of the goods or services on which each of the grounds of the opposition is based. In this case, the opponent failed to indicate goods in Class 24 of the earlier international trade mark registration No 686 861 in the opposition period. Since the opponent cannot extend the grounds of the opposition once the opposition period has expired, the opposition is not admissible insofar as it is based on Class 24 of the earlier international trade mark registration No 686 861.

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 international trade mark registration No 686 861, designating Poland.

a) The goods

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

Class 25: Clothing, shoes (excluding orthopaedic shoes), swimming costumes, bath robes, bibs, not of paper, berets, hosiery, boots, braces, undershorts, caps, belts (clothing), hats, sports shoes, masquerade costumes, babies’ pants, ear muffs (clothing), neckties, sashes for wear, scarves, gloves, layettes, slippers, soles for footwear, underwear, aprons (clothing), sports clothing.

The contested goods are the following:

Class 25: Clothing; baby bodysuits; baby bibs [not of paper]; babies’ undergarments; babies’ pants [underwear]; babies’ outerclothing; athletics vests; athletic uniforms; athletic tights; ascots (ties); ascots; articles of clothing for theatrical use; arm warmers [clothing]; aprons [clothing]; anti-perspirant socks; adhesive bras; aikido suits; albs; aloha shirts; American football bibs; American football pants; American football shirts; American football shorts; American football socks; anglers’ shoes; ankle socks; bed jackets; beach wraps; beach robes; beach clothes; bathing trunks; bathing suits for men; bathing suits; bathing suit cover-ups; bathing costumes for women; bath robes; basic upper garment of Korean traditional clothes [jeogori]; baselayer tops; baselayer bottoms; baseball uniforms; baby bottoms; baby clothes; baby doll pyjamas; baby tops; balaclavas; ball gowns; ballet suits; ballroom dancing shoes; bandanas [neckerchiefs]; bandeaux [clothing]; barber smocks; bolo ties; boleros; body warmers; body stockings; bodies [clothing]; bodices [lingerie]; boas [necklets]; boas; boardshorts; blue jeans; blousons; blouses; bloomers; bed socks; belts [clothing]; belts made from imitation leather; belts made out of cloth; bermuda shorts; bib overalls for hunting; bib shorts; bib tights; bibs, not of paper; bibs, sleeved, not of paper; bikinis; blazers; caftans; button-front aloha shirts; button down shirts; bustles for obi-knots (obiage-shin); bustle holder bands for obi (obiage); bustiers; bushjackets; burnouses; burkas; bridesmaids wear; bridesmaid dresses; bridal garters; breeches for wear; brassieres; bralettes; bra straps; bolo ties with precious metal tips; bomber jackets; boot cuffs; bottoms [clothing]; bowties; boxer shorts; boxing shorts; boy shorts [underwear]; boys’ clothing; chemise tops; chefs’ whites; chasubles; chaps (clothing); chadors; casualwear; casual trousers; casual shirts; casual jackets; cassocks; cashmere scarves; cashmere clothing; cargo pants; cardigans; cagoules; camiknickers; camisoles; camouflage gloves; camouflage jackets; camouflage pants; camouflage shirts; camouflage vests; capes; car coats; capri pants; coats for men; coats; clothing of leather; clothing of imitations of leather; clothing made of fur; clothing for wear in wrestling games; clothing for wear in judo practices; clothing for skiing; clothing for men, women and children; clothing for martial arts; clothing for horse-riding [other than riding hats]; clothing for gymnastics; clothing for fishermen; clothing containing slimming substances; cloth bibs for adult diners; chemises; chemisettes; cheongsams (Chinese gowns); children’s outerclothing; children’s wear; chino pants; choir robes; christening robes; cloaks; cloth bibs; cuffs; crop tops; crinolines; crew neck sweaters; cravats; cowls [clothing]; coverups; coveralls; cotton coats; costumes for use in role-playing games; costumes for use in children’s dress up play; costumes; corsets [underclothing]; corselets; corduroy trousers; coats for women; coats of denim; collar protectors; collared shirts; collars; collars [clothing]; collars for dresses; combative sports uniforms; corduroy shirts; combinations [clothing]; dresses made from skins; dresses for infants and toddlers; dresses; dress shirts; dress shields; dress pants; down vests; down jackets; donkey jackets; disposable underwear; dinner suits; dinner jackets; detachable neckpieces for kimonos (haneri); detachable collars; desert boots; denims [clothing]; denim jeans; culotte skirts; cummerbunds; cycling shorts; cycling tops; cyclists’ clothing; dance clothing; dance costumes; denim jackets; football jerseys; flying suits; fleeces; fleece vests; fleece tops; fleece shorts; fleece pullovers; fitted swimming costumes with bra cups; fishing vests; fishing shirts; fishermen’s jackets; fingerless gloves; figure skating clothing; fabric belts [clothing]; dressing gowns; driving gloves; duffel coats; dust coats; ear muffs [clothing]; embroidered clothing; evening coats; evening suits; eye masks; evening wear; gloves [clothing]; girls’ clothing; girdles; gilets; gauchos; garters; garments for protecting clothing; gabardines [clothing]; gabardines; furs [clothing]; fur stoles; fur muffs; fur jackets; fur coats and jackets; fur cloaks; functional underwear; footless socks; footless tights; footmuffs, not electrically heated; formal evening wear; formalwear; foulards [clothing articles]; foundation garments; frock coats; full-length kimonos (nagagi); headdresses [veils]; head scarves; handwarmers [clothing]; halter tops; Halloween costumes; hairdressing capes; gym suits; gym shorts; gussets for underwear [parts of clothing]; gussets for tights [parts of clothing]; gussets for stockings [parts of clothing]; gussets for leotards [parts of clothing]; gussets for footlets [parts of clothing]; gussets for bathing suits [parts of clothing]; gussets [parts of clothing]; guernseys; gowns for doctors; golf trousers; golf skirts; golf shorts; golf pants, shirts and skirts; gloves for cyclists; gloves including those made of skin, hide or fur; gloves with conductive fingertips that may be worn while using handheld electronic touch screen devices; golf clothing, other than gloves; housecoats; hunting boot bags; hunting jackets; jockstraps [underwear]; jerseys [clothing]; Japanese traditional clothing; Japanese style socks (tabi); Japanese sleeping robes (nemaki); jackets being sports clothing; jackets [clothing]; jacket liners; infant wear; imitation leather dresses; hunting vests; hunting shirts; hunting pants; heavy coats; heavy jackets; heelpieces for stockings; hijabs; hooded pullovers; hooded sweatshirts; hooded tops; hoods [clothing]; hosiery; Korean traditional women’s waistcoats [baeja]; Korean topcoats [durumagi]; Korean outer jackets worn over basic garment [magoja]; knitwear [clothing]; knitted underwear; knitted gloves; knit tops; knit shirts; knit jackets; knickers; knee-high stockings; knee warmers [clothing]; kimonos; kilts; jodhpurs; jogging sets [clothing]; jogging tops; judo uniforms; jumper dresses; jumper suits; karate uniforms; kendo outfits; kerchiefs [clothing]; khakis; khimars; long-sleeved shirts; long underwear; long sleeved vests; long sleeve pullovers; long johns; long jackets; liveries; lingerie; linen clothing; light-reflecting jackets; leotards; leisurewear; leisure suits; leggings [trousers]; leggings [leg warmers]; leather waistcoats; leather suits; leather jackets; laboratory coats; ladies’ clothing; ladies’ dresses; ladies’ underwear; layettes [clothing]; leather belts [clothing]; leather dresses; men’s and women’s jackets, coats, trousers, vests; maternity tops; maternity smocks; maternity sleepwear; maternity shorts; maternity shirts; maternity pants; maternity lingerie; maternity leggings; maternity dresses; maternity clothing; maternity bands; masquerade costumes; masquerade and Halloween costumes; lounge pants; loungewear; lounging robes; lumberjackets; martial arts uniforms; mantles; mankinis; maniples; maillots [hosiery]; maillots; mackintoshes; neck scarves [mufflers]; neck scarves; nappy pants [clothing]; muumuus; muffs [clothing]; mufflers [clothing]; motorists’ clothing; motorcyclists’ clothing of leather; motorcycle riding suits; motorcycle jackets; motorcycle gloves; morning coats; monokinis; money belts [clothing]; men’s socks; men’s suits; men’s underwear; menswear; miniskirts; mock turtleneck shirts; mock turtleneck sweaters; mock turtlenecks; moisture-wicking sports bras; moisture-wicking sports pants; moisture-wicking sports shirts; over-trousers; outerclothing for men; outerclothing for girls; outerclothing for boys; outerclothing; open-necked shirts; one-piece suits; one-piece playsuits; one-piece clothing for infants and toddlers; oilskins [clothing]; nurse pants; nurse overalls; nurse dresses; non-slip socks; neck tubes; neck warmers; neckbands; neckerchiefs; neckties; neckwear; negligees; nighties; nightwear; nipple pasties; niqabs; pinafores; petticoats; petti-pants; pelisses; pelerines; pedal pushers; pea coats; party hats [clothing]; parkas; paper hats for use as clothing items; paper hats [clothing]; paper clothing; paper aprons; pantsuits; pants; overalls; overalls for infants and toddlers; overcoats; overshirts; padded pants for athletic use; padded shirts for athletic use; padded shorts for athletic use; pajama bottoms; pantaloons; pantie-girdles; raincoats; rain slickers; rain ponchos; quilted vests; quilted jackets [clothing]; pyjamas [from tricot only]; pyjamas; puttees; printed t-shirts; pram suits; pop socks; ponchos; polo sweaters; polo shirts; pirate pants; plastic aprons; plastic baby bibs; playsuits [clothing]; pleated skirts; pleated skirts for formal kimonos (hakama); plush clothing; pocket squares; pockets for clothing; polar fleece jackets; polo knit tops; sash bands for kimono (obi); sarongs; saris; salopettes; sailor suits; sailing wet weather clothing; safari jackets; running vests; running suits; rugby tops; rugby shorts; rompers; roll necks [clothing]; riding jackets; rainproof jackets; rainwear; ramie shirts; rash guards; ready-made clothing; ready-made linings [parts of clothing]; referees uniforms; religious garments; replica football kits; reversible jackets; riding gloves; short-sleeved t-shirts; short-sleeve shirts; short sets [clothing]; short petticoats; short overcoat for kimono (haori); shirts for suits; shirts and slips; shirts; shirt-jacs; shirt yokes; shirt fronts; shift dresses; shell suits; shell jackets; sheepskin jackets; sashes for wear; scarves; school uniforms; scrimmage vests; shapewear; shawls; shawls [from tricot only]; shawls and headscarves; shawls and stoles; sheepskin coats; sleeveless jerseys; sleeveless jackets; sleeved jackets; sleepsuits; sleep masks; slacks; skorts; skirts; skirt suits; ski trousers; ski suits for competition; ski jackets; ski gloves; short trousers; shortalls; shorts; shoulder scarves; shoulder wraps [clothing]; shoulder straps for clothing; shrugs; silk clothing; silk scarves; ski balaclavas; skating outfits; silk ties; sports jackets; sports clothing [other than golf gloves]; sports bras; sports bibs; sport coats; spats; socks for infants and toddlers; socks and stockings; socks; sock suspenders; soccer bibs; snowboard trousers; snowboard mittens; snowboard jackets; sliding shorts; slipovers; slipovers [clothing]; slipper socks; slips [underclothing]; smoking jackets; snap crotch shirts for infants and toddlers; snow boarding suits; snow pants; snow suits; snowboard gloves; sweat-absorbent stockings; sweat-absorbent socks; swaddling clothes; suspenders; suspender belts for men; surfwear; sunsuits; sundresses; suits; suit coats; suede jackets; stuff jackets [clothing]; string fasteners for haori (haori-himo); stretch pants; strapless bras; stoles; sports jerseys; sports jerseys and breeches for sports; sports pants; sports shirts with short sleeves; sports singlets; sports socks; sportswear; stocking suspenders; stockings; tennis shorts; tennis shirts; tennis pullovers; tennis dresses; tee-shirts; teddies [underclothing]; tap pants; tankinis; tank tops; tailleurs; taekwondo suits; synthetic fur stoles; tabards; swimming trunks; swim wear for gentlemen and ladies; swim wear for children; swim shorts; sweatpants; sweaters; sweatbands; sweat bands for the wrist; sweat jackets; sweat shirts; sweat shorts; sweat-absorbent underwear; trousers; trouser straps; trouser socks; triathlon clothing; trews; trench coats; tracksuit tops; tracksuit bottoms; track jackets; tops [clothing]; togas; toe socks; tights; tightening-up strings for kimonos (datejime); three piece suits [clothing]; tennis skirts; tennis socks; tennis sweatbands; tennis wear; theatrical costumes; thermal socks; thermal underwear; thermally insulated clothing; thobes; thongs; vest tops; veils [clothing]; V-neck sweaters; unitards; union suits; uniforms for nurses; uniforms for commercial use; uniforms; underwear; undershirts for kimonos (koshimaki); undershirts for kimonos (juban); undershirts; underpants; underarm gussets [parts of clothing]; trousers for children; trousers of leather; trousers shorts; trunks; tube tops; tunics; turtleneck shirts; turtleneck sweaters; turtlenecks; tutus; twin sets; zoot suits; yoga tops; yoga socks; wetsuit gloves; wetsuits for surface watersports; white coats for hospital use; wind pants; wind suits; wind vests; windproof clothing; windshirts; winter coats; winter gloves; women’s ceremonial dresses; women’s suits; womens’ outerclothing; yoga shirts; yoga pants; yashmaks; yashmaghs; wrist warmers; wrap belts for kimonos (datemaki); woven shirts; woven clothing; work clothes; woollen tights; woollen socks; woolen clothing; wet suits for windsurfing; wet suits for water-skiing and sub-aqua; wet suits for water-skiing; wet suits for surfing; wet suits; wedding dresses; weatherproof pants; weatherproof clothing; weather resistant outer clothing; waterproof trousers; waterproof suits for motorcyclists; waterproof outerclothing; waterproof clothing; waterproof capes; water socks; visors being headwear; volleyball jerseys; waist belts; waist cinchers; waist strings for kimonos (koshihimo); waistcoats; walking breeches; warm-up jackets; warm-up pants; warm-up tops; footwear; ankle boots; aqua shoes; army boots; athletic shoes; baby boots; baby sandals; ballet slippers; baseball shoes; basketball sneakers; bath sandals; bath slippers; beach shoes; climbing footwear; climbing boots [mountaineering boots]; cleats for attachment to sports shoes; children’s footwear; casual footwear; canvas shoes; boxing shoes; bowling shoes; boots for sports; boots for motorcycling; boots; bootees (woollen baby shoes); boot uppers; galoshes; footwear uppers; footwear not for sports; footwear made of vinyl; footwear for women; footwear for men and women; footwear for men; footwear [excluding orthopedic footwear]; football shoes; foam pedicure slippers; flip-flops; flat shoes; fittings of metal for footwear; cycling shoes; dance shoes; deck shoes; disposable slippers; dress shoes; driving shoes; embossed heels of rubber or of plastic materials; embossed soles of rubber or of plastic materials; esparto shoes or sandals; fishing boots; fishing footwear; Japanese style sandals of leather; Japanese style clogs and sandals; Japanese split-toed work footwear (jikatabi); Japanese footwear of rice straw (waraji); intermediate soles; insoles for footwear; insoles [for shoes and boots]; inner soles; inner socks for footwear; infants’ footwear; infants’ boots; golf footwear; gym boots; gymnastic shoes; half-boots; handball shoes; heel inserts; heel protectors for shoes; heelpieces for footwear; heels; hidden heel shoes; high rain clogs (ashida); high-heeled shoes; hockey shoes; hunting boots; plastic slippers; pedicure slippers; pedicure sandals; non-slipping devices for footwear; non-slipping devices for boots; mules; mukluks; mountaineering shoes; mountaineering boots; military boots; metal fittings for Japanese style wooden clogs; men’s sandals; low wooden clogs (koma-geta); low wooden clogs (hiyori-geta); leisure shoes; leather slippers; leather shoes; ladies’ sandals; Japanese style sandals (zori); Japanese style sandals of felt; Japanese style wooden clogs (geta); Japanese toe-strap sandals (asaura-zori); knitted baby shoes; lace boots; ladies’ boots; shoes soles for repair; shoes for foot volleyball; shoes; shoe uppers; shoe straps; shoe soles; shoe inserts for non-orthopedic purposes; shoe covers, other than for medical purposes; sandals and beach shoes; sandals; sandal-clogs; running shoes; rugby boots; rubbers [footwear]; platform shoes; polo boots; protective metal members for shoes and boots; pullstraps for shoes and boots; pumps [footwear]; rain boots; rainshoes; riding shoes; roller shoes; rubber fishing boots; rubber soles for jikatabi; toe straps for Japanese style wooden clogs; toe straps for Japanese style sandals [zori]; toe boxes; tips for footwear; thong sandals; tennis shoes; tap shoes; studs for football boots; stiffeners for shoes; stiffeners for boots; sports shoes; spiked running shoes; soles for Japanese style sandals; soles for footwear; shoes with hook and pile fastening tapes; ski and snowboard shoes and parts thereof; ski boot bags; ski boots; slip-on shoes; slipper soles; slippers; sneakers; snow boots; snowboard shoes; zori; yoga shoes; work shoes; work boots; wooden supports of Japanese style wooden clogs; wooden shoes; wooden main bodies of Japanese style wooden clogs; women’s foldable slippers; winter boots; welts for footwear; wedge sneakers; tongues for shoes and boots; training shoes; uppers for Japanese style sandals; uppers of woven rattan for Japanese style sandals; valenki [felted boots]; volleyball shoes; waders; walking shoes; waterproof boots; waterproof boots for fishing; waterproof shoes; headgear; baseball caps; bathing caps; beach hats; berets; boaters; bobble hats; bonnets; bonnets [headwear]; bucket caps; cap peaks; caps being headwear; fezzes; fedoras; fashion hats; fascinator hats; fake fur hats; earbands; cycling caps; cloche hats; children’s headwear; chefs’ hats; caps with visors; nursing shoes; nightcaps; mitres [hats]; millinery; mantillas; leather headwear; knot caps; knitted caps; fishing headwear; flat caps; fur hats; garrison caps; golf caps; hat frames [skeletons]; hats; head sweatbands; headbands [clothing]; thermal headgear; tams; tam o’shanters; sun visors [headwear]; sun visors; sun hats; sports headgear [other than helmets]; sports caps and hats; sports caps; snoods [scarves]; small hats; skull caps; ski hats; paper hats for wear by chefs; paper hats for wear by nurses; peaked caps; peaked headwear; rain hats; sedge hats (suge-gasa); shower caps; woolly hats; wimples; waterpolo caps; visors; turbans; toques [hats]; top hats.

The vast majority of the contested goods are directly covered by the opponent’s clothing, shoes (excluding orthopaedic shoes), swimming costumes, bath robes, bibs, not of paper, berets, hosiery, boots, braces, undershorts, caps, belts (clothing), hats, sports shoes, masquerade costumes, babies’ pants, ear muffs (clothing), neckties, sashes for wear, scarves, gloves, layettes, slippers, soles for footwear, underwear, aprons (clothing), sports clothing and are, therefore, identical (as they are either identically contained in both lists or the opponent’s goods include the contested goods).

The remaining goods, which are not covered by the opponent’s broad terms, are at least similar to a low degree to these opponent’s goods as they usually coincide at least in producers and distribution channels. In particular:

 Accessories for kimonos, namely bustles for obi-knots (obiage-shin); bustle holder bands for obi (obiage); string fasteners for haori (haori-himo); tightening-up strings for kimonos (datejime); waist strings for kimonos (koshihimo), are articles which improve and enable the use of kimonos (which fall within the broad category of the opponent’s clothing in Class 25). As kimono accessories fulfil a useful technical or decorative purpose, it is common that they are also produced by the manufacturer of the main product. Consequently, the consumer may expect that the main product and the accessories are produced under the control of the same entity, especially as they are commonly distributed through the same channels. These goods are similar.

 Bags, namely hunting boot bags; ski boot bags, are related to the opponent’s clothing, boots in Class 25. This is because consumers are likely to co-ordinate the abovementioned contested goods with the boots and outer clothing, such as boots and clothing for hunting, skiing and even consider them as accessories. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing and/or boots for hunting or skiing to directly produce and market hunting boot bags or ski boot bags, respectively. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

 Footwear accessories, namely insoles for footwear; insoles [for shoes and boots]; inner soles; inner socks for footwear; heel inserts; shoe inserts for non-orthopedic purposes; studs for football boots; parts thereof (of ski and snowboard shoes), are complementary to the opponent’s shoes (excluding orthopaedic shoes). Consumers search for such goods in the same sales outlets and expect them to be produced under the control of the same entity. These goods are similar. The contested shoe covers, other than for medical purposes are protective coverings for shoes or disposable coverings that fit over shoes. These goods are similar at least to a low degree to the opponent’s shoes (excluding orthopaedic shoes). The goods may be produced by the same companies and sold together in the same outlets to the same end consumers.

 The opponent’s soles for footwear are parts to be used in the manufacture of footwear, which target professionals in the fashion industry. These goods are similar to other parts used in the manufacture of footwear, namely cleats for attachment to sports shoes; boot uppers; footwear uppers; fittings of metal for footwear; embossed heels of rubber or of plastic materials; heel protectors for shoes; heelpieces for footwear; heels; non-slipping devices for footwear; non-slipping devices for boots; metal fittings for Japanese style wooden clogs; shoe uppers; protective metal members for shoes and boots; pullstraps for shoes and boots; toe straps for Japanese style wooden clogs; toe straps for Japanese style sandals [zori]; toe boxes; tips for footwear; stiffeners for shoes; stiffeners for boots; wooden supports of Japanese style wooden clogs; wooden main bodies of Japanese style wooden clogs; welts for footwear; tongues for shoes and boots; uppers for Japanese style sandals; uppers of woven rattan for Japanese style sandals.

 It is not uncommon in the fashion industry that the same undertakings offer clothing, headgear and footwear. It must be considered that different parts of clothing and different parts of headgear, namely collar protectors; dress shields; gussets for underwear [parts of clothing]; gussets for tights [parts of clothing]; gussets for stockings [parts of clothing]; gussets for leotards [parts of clothing]; gussets for footlets [parts of clothing]; gussets for bathing suits [parts of clothing]; gussets [parts of clothing]; jacket liners; heelpieces for stockings; pockets for clothing; ready-made linings [parts of clothing]; shirt yokes; shirt fronts; underarm gussets [parts of clothing]; cap peaks; hat frames [skeletons], are similar to a low degree to the opponent’s parts for footwear, namely soles for footwear, as these goods all target the same public (professionals in the fashion industry) and are offered through the same distribution channels.

 Eye masks; sleep masks are similar to a low degree to the opponent’s clothing, as the former are usually sold in the nightwear sections of clothing shops to the same consumers as clothing. Therefore they usually coincide in producers and distribution channels.

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 identical or similar to varying degrees are directed at the public at large and professionals in the fashion industry. The degree of attention is considered average since the goods that target the professionals are routine parts used in the manufacture process.

c) The signs

SMILEY
Earlier trade mark	Contested sign

The relevant territory is Poland.

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 common verbal element ‘SMILEY’ means a simple pictogram or ideogram representing a smiling human face, used in mail and other forms of electronic communication (information extracted from Słownik języka polskiego PWN on 26/01/2021 at https://sjp.pwn.pl/szukaj/smiley.html). This meaning has no relation to the goods in question. Therefore, the common element ‘SMILEY’ has a normal degree of distinctiveness.

The contested sign’s verbal element ‘STREET’ is a basic English word, which means, inter alia, ‘of or relating to urban counterculture’ (information extracted from Collins English Dictionary on 26/01/2021 at https://www.collinsdictionary.com/dictionary/english/street). This meaning will be understood by the relevant public, also because a Polonized version of this word is used in the fashion industry, ‘streetowy’. This verbal element will convey the idea that the relevant goods are casual, associated with urban culture. Therefore, it is at most weak. Although this verbal element is positioned closely to the other verbal element of the sign, ‘SMILEY’, they are identifiable as separate elements. Moreover, as explained above, both elements are meaningful, which further assists the relevant public in recognising them, without any mental effort.

The contested sign’s verbal elements ‘STREET’ and ‘SMILEY’ do not form an expression which has a different meaning than that of the sum of its parts.

The contested sign’s figurative element is a drawing of a human face, which will be considered as a smiley. Therefore, it reinforces the meaning of the verbal element ‘SMILEY’. Similarly, it is not related to the relevant goods and has, therefore, a normal degree of distinctiveness.

Although the contested sign is composed of several identifiable components, none of them can be considered clearly dominant. Even if the figurative element were regarded as dominant, as stated above, it complements and reinforces the verbal element ‘SMILEY’.

Visually and aurally, the signs coincide in the distinctive element ‘SMILEY’, which constitutes the entirety of the earlier mark and the second element of the contested sign. However, the signs differ in the verbal element ‘STREET’, positioned at the beginning of the contested sign, which is, however, at most weak.

Although the initial part of the marks may be liable to attract the consumer’s attention more than the following parts, the additional verbal element at the beginning of the contested sign, which is at most weak, is not enough to counteract the similarity between the signs, resulting from the incorporation of the earlier mark in the contested sign as an independent and distinctive element.

The signs differ visually in the contested sign’s figurative element. However, it merely reinforces the meaning of the coinciding verbal element.

Furthermore, the signs differ visually in the contested sign’s moderate stylised font. However, this figurative aspect has less impact because 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).

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since both signs will convey the concept of a smiley, which is further reinforced by the contested sign’s figurative element, and the additional verbal element ‘STREET’ of the contested sign is at most weak, the signs are conceptually highly similar.

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

d) Distinctiveness of the earlier mark

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

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness due to reputation but did not file any evidence in order to prove such a claim.

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

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).

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.

The goods are identical or similar to varying degrees and target the general and professional public, whose degree of attention is average. The degree of distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree, aurally similar at least to an average degree and conceptually highly similar, as they share the verbal element ‘SMILEY’, which is the sole element of the earlier mark and is included in its entirety in the contested sign. Moreover, this element plays an independent and distinctive role within the contested sign. Furthermore, the common verbal element ‘SMILEY’ is further reinforced by the contested sign’s figurative element depicting a smiley. In an overall assessment of the marks, the contested sign’s moderate stylised font and differing verbal element ‘STREET’, although the latter is positioned at the beginning of the sign, are not of such an impact as to counteract the similarities and to enable the relevant public to safely distinguish between the signs, even in relation to goods that are similar only to a low degree.

Therefore, it is highly conceivable that, owing to the inclusion of the sole element of the earlier mark in the contested sign, the relevant consumers will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates. Indeed, it is a common practice for companies in the fashion industry to make small variations to their brands, for example, by altering their font or colour and/or by adding terms or elements, to create a modernised version of the brand.

The applicant argued that his ‘brand is not aimed for commercial purposes or competition’ and that his mission is to ‘represent the apathy that society holds for the unfortunate members of our local communities’ [sic]. However, by applying for an EUTM, the applicant has expressed his will to own a trade mark, whose main function is to distinguish the goods or services of one undertaking from those of other undertakings (Article 4 EUTMR) and which is to be used in trade.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 686 861, designating Poland. It follows that the contested trade mark must be rejected for all the contested goods.

As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marta Maria CHYLIŃSKA

Lidiya NIKOLOVA

Gonzalo BILBAO TEJADA

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.