inOPPOSITION Nо B 3 108 629

 

Yours Clothing Limited, Unit B, Finmere Park Southgate Way Orton Southgate, Peterborough PE2 6YG, United Kingdom (opponent), represented by Stobbs, Widenmayerstr. 34, 80538 München, Germany (professional representative) 

 

a g a i n s t

 

Mohr Vertrieb und Service KG, Rendsburger Landstraße 161, 24113 Kiel, Germany (applicant), represented by Prehm & Klare Rechtsanwälte Partnerschaft mbB, Holtenauer Str. 129, 24118 Kiel, Germany (professional representative)

On 28/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 108 629 is partially upheld, namely for the following contested services:

 

	Class 35: Wholesaling and retailing in the field of clothing, footwear, headgear, textile products and publicity objects. Class 40: Embroidering and printing of clothing, footwear, headgear, textile products, chinaware and publicity objects.
2.	European Union trade mark application No 18 118 309 is rejected for all the above services. It may proceed for the remaining services, namely the following: Class 35: Wholesaling and retailing in the field of chinaware.

3.	Each party bears its own costs.

 

REASONS

 

On 13/01/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 118 309 (figurative mark).

The opposition is based on the following earlier rights:

- European Union trade mark registration No 12 840 922, (figurative mark);

- European Union trade mark registration No 12 142 949, ‘YOURS LONDON’ (word mark);

- United Kingdom trade mark registration No 3 054 053, (figurative mark);

- United Kingdom trade mark registration No 2 379 826, ‘YOURS’ (word mark);

- United Kingdom trade mark registration No 2 606 313, ‘YOURS’ (word mark);

- United Kingdom trade mark registration No 3 281 949, ‘YOURS’ (word mark);

- United Kingdom trade mark registration No 2 634 921, ‘YOURS CLOTHING’ (word mark).

The opponent invoked  Article 8(1)(b) EUTMR, Article 8(5) EUTMR in relation to all the earlier marks listed above.

  

On 01/02/2020, the United Kingdom withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of taking the decision.

 

As the opposition no longer has a valid basis as regards the United Kingdom trade marks listed above, it must be dismissed in relation to them. The opposition will therefore proceed based on the earlier European Union trade mark registrations listed above.

 

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 12 840 922, (figurative mark)

 

 

a)  The goods and services

 

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

 

-Class 16: Brochures; posters; plastic carrier bags; labels, tags, swing tags; stickers; writing papers, pens, pencils, cards, notelets, note cards.

Class 25: Articles of clothing, footwear and headgear; articles of outer clothing; articles of under clothing; nightwear; leisurewear; sportswear; bathing costumes; hosiery and socks; neck ties.

Class 35: The bringing together, for the benefit of others, of a variety of clothing, footwear, headgear, cosmetics, toiletries, luggage, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles enabling customers to conveniently view and purchase those goods in a retail store; retail services connected with the sale of clothing, footwear, headgear, cosmetics, toiletries, luggage, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles from an Internet website, through a television shopping channel, or from a mail order catalogue; retail services connected with the sale of clothing, footwear, headgear, belts, hosiery, jewellery, watches, cosmetics, toiletries, luggage, bags, purses, leather goods and textiles; advertising services; direct mail advertising; promotional services relating to the sale or distribution of clothing, footwear, headgear, cosmetics, toiletries, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles; dissemination of advertising material; product information in relation to clothing, footwear, headgear, cosmetics, toiletries, luggage, bags, purses, leather goods, belts, hosiery, jewellery, watches and textiles; product price comparison services; trade shows, exhibitions and events.

The contested services are the following:

Class 35: Wholesaling and retailing in the field of clothing, footwear, headgear, textile products, chinaware and publicity objects.

Class 40: Embroidering and printing of clothing, footwear, headgear, textile products, chinaware and publicity objects.

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 services in class 35

Retailing in the field of clothing, footwear, headgear are identically contained in both lists of services (including synonyms).

The contested wholesaling and retailing in the field of publicity objects falls in the broad category of the opponent's advertising services, since companies offering these latter services have also sometimes the means (e.g. industrial printers) to produce certain publicity objects themselves, and to offer them directly (for sale) to the clients, as part of their services. Therefore, they are identical.

The contested wholesaling in the field of clothing, footwear, headgear is similar to the opponent's retail services connected with the sale of clothing, footwear, headgear because they have the same purpose, originate from the same kind of undertakings and have the same nature.

Retail services of specific goods and retail services of other goods have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Similarity is found between those retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. However, the degree of similarity between retail of specific goods on the one hand and retail of other goods on the other hand may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors. Following this reasoning, the contested wholesaling and retailing in the field of textile products are similar to a low degree to the opponent's retail services connected with the sale of clothing, footwear, headgear, since the goods in relation to which these confronted services are offered are similar.

The contested wholesaling and retailing in the field of chinaware is dissimilar to the goods and services of the opponent. They are dissimilar to the opponent´s goods and part of the opponent’s services in Class 35 (i.e. those not consisting of wholesale or retail services)because they differ in nature, purpose, method of use and distribution channels/points of sale. They are neither complementary nor in competition, are not directed at the same consumers and are not likely to originate from the same kind of undertakings. They are also dissimilar to the opponent´s retail services in Class 35, since the retail/wholesale services under comparison are not commonly sold together and they target different publics, and therefore the reasoning for finding similarity above does not apply.

Contested services in class 40

The contested services in Class 40 contain a reference to chinaware, being the beginning of the sentence “embroidering and printing of”. However, chinaware cannot be embroidered. Therefore, it is understood that the word “Embroidering” at the beginning of the sentence does not relate to this kind of products, and only “printing” is meant to be related to them.

The contested embroidering and printing of textile products are similar to the opponent's advertising services in Class 35 because they can coincide in purpose, can be directed at the same consumers, can originate from the same kind of undertakings, coincide in distribution channels/points of sale and can be complementary.

The contested embroidering and printing of chinaware and publicity objects are similar to at least a low degree to the opponent's advertising services in Class 35, since the companies offering advertising services sometimes do offer the contested services as part of the advertising strategy planned for the client. Therefore, they can coincide in purpose, can be directed at the same consumers, can originate from the same kind of undertakings, coincide in distribution channels/points of sale, and are complementary.

It constitutes a frequent practice nowadays that the companies producing clothing, footwear and headgear also offer the possibility of customizing them in different ways, in order to offer consumers an exclusive and personalized product. It is therefore considered that the contested embroidering and printing of clothing, footwear, headgear are similar to the at least a low degree to the opponent's articles of clothing, footwear and headgear in Class 25 because they coincide in distribution channels, they can be directed at the same consumers, they are complementary and can originate from the same kind of undertakings.

The opponent has not submitted any arguments in relation to the contested services that have been found dissimilar above.

 

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 identical or similar to varying degrees are directed at both, the public at large and professionals. The degree of attention paid during their purchase is likely to be average.

 

c)  The signs

 

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  elements ‘YOURS’ and ‘YOUR’ are meaningless for Bulgarian-speaking consumers, and therefore of average distinctive character in relation to the goods and services. The Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-speaking part of the public, since from their perspective these words will lead to stronger coincidences between the marks, for the reasons explained below.

The word ‘shirt’ is the English term used to refer to a piece of clothing designed to cover the upper part of the human body. It is perceived as meaningless, and of average distinctive character, by the majority of the Bulgarian-speaking consumers. However, taking into account the kind of services involved, and the fact that it is next to the depiction of a t-shirt, the word is likely to be understood by at least part of the Bulgarian-speaking public as having the concept described above. For them, the word ‘shirt’ is devoid of distinctive character in relation to all the services that can be somehow related to clothing, since clothing includes shirts (e.g. Class 35: Wholesaling and retailing in the field of clothing; Class 40: Embroidering and printing of clothing) and of lower than average distinctive character in relation to the services for which it can be seen as at least allusive of their characteristics (e.g. Class 35: Wholesaling and retailing in the field of textile products, publicity objects; Class 40: Embroidering and printing of textile products and publicity objects) and of average distinctive character in relation to the remaining services, in relation to which the word ‘shirt’ it is neither descriptive nor allusive.

The heart depicted in the earlier mark is not particularly distinctive, since it is not much more than a simple, commonplace, and banal figure, of the type used in countless contexts (04/03/2016, R 804/2015-2, AMO (FIG.) / AM (FIG.), § 32).

The contested sign contains various figurative elements, namely a shield shape acting as a frame and containing the rest of the elements forming the mark, the depiction of a t-shirt and the letters “YS” inside it. The shield-shaped frame is frequently used in marketing goods and services, and fulfills the function of framing and focusing consumer´s attention on the elements on or inside it. With respect to the t-shirt depiction, the same findings explained above, as regards the distinctiveness of the word “SHIRT” for the part of the public that understands it, are applied to it. The letters “YS” are perceived as the first letters of the words “YOUR SHIRT”, and are of average distinctive character.

As claimed by the opponent, 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, in the present case the figurative elements are of less visual impact than the verbal elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. It is therefore relevant to note that the signs coincide in their first letters “Y-O-U-R”.

Visually, the signs coincide in ‘Y-O-U-R’ and in the presence of a letter ‘S’ that, despite being part of a different word in the contested mark, it does appear immediately following that coinciding sequence of letters. ‘YOUR’ forms the entire first word of the contested mark, and, with the additional ‘S’, the entire sole word of the earlier mark.

The signs differ in the heart depiction of the earlier mark. They also differ in the rest of letters of the contested mark and in the shield-shaped frame, the t-shirt depiction and the letters ‘YS’ inside that same sign.

Taking into account the impact and the degree of distinctive character of each of the elements, for the reasons described above, it is considered that the signs are visually similar to at least a low degree.

Aurally, the signs coincide in the sound of the sequence of letters ‘Y-O-U-R’ and of the letter ‘S’ immediately following the coinciding sequence in both marks. The signs differ aurally in the sound of ‘SHIRT’ of the contested sign. In this latter sign, the t-shirt depiction contains letters ‘YS’. However, it is unlikely that consumers will pronounce them in any way, since they are perceived as a mere pattern in the t-shirt, referring to the first letters of the verbal elements above it.

Therefore, taking into account the degree of distinctiveness (and weight) of each of the elements forming the marks, 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. The earlier mark is perceived as having the concept of a heart (lowly distinctive) and the contested sign as having the concept of the t-shirt (with varying degrees of distinctiveness, depending on the specific services it is used in relation to) and of the shield frame. Therefore, the signs are not conceptually 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 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 and services in question from the perspective of the public under analysis 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 compared are partly identical, partly similar (to varying degrees) and partly dissimilar. They are directed at both the public at large and professionals. The degree of attention paid during their purchase is likely to be average.

The signs are visually similar to at least a low degree, aurally similar to an average degree and not conceptually similar. The earlier mark is of average distinctive character.

The signs coincide in the sequence of letters ‘YOUR’ and in the presence of a letter ‘S’ immediately following that coinciding sequence. These coincidences are found in the sole verbal element forming the earlier mark and in the elements of greater impact in the signs for the various reasons explained above (i.e. degree of distinctiveness, position within the signs, greater impact of verbal elements over figurative elements, etc.)

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 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).

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian-speaking 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 12 840 922, . 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 services found to be identical or similar (to varying degrees, including a low degree) to those of the earlier trade mark.

 

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.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

 

In the present case, the previous cases referred to by the opponent do not make any reference to the goods and services found to be dissimilar above. Since these are the only ones in relation to which the opposition is not upheld, the decisions referred to are not relevant to the present proceedings.

The opponent has also based its opposition on -European Union trade mark registration No 12 142 949, ‘YOURS LONDON’ (word mark). Since this mark covers the same or a narrower scope of goods and services, the outcome cannot be different with respect to the services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

The opposition will now proceed with the examination of Article 8(5)EUTMR, invoked by the opponent in relation to the European Union trade mark registrations No 12 840 922, and No 12 142 949.

 

REPUTATION — ARTICLE 8(5) EUTMR

 

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.

 

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

 

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

 

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

 

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks. On 5/02/2020 the opponent was given two months, commencing after the end of the cooling-off period, to submit said material. This time limit expired on 10/06/2020 and was later extended until 10/08/2020. The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

 

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

 

 

 

The Opposition Division

 

 

Sofía SACRISTÁN MARTÍNEZ

María del Carmen SUCH SANCHEZ

Kieran HENEGHAN

 

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.