OPPOSITION Nо B 3 111 271

 

Gruner + Jahr GmbH, Am Baumwall 11, 20459 Hamburg, Germany (opponent), represented by Bird & Bird LLP, Am Sandtorkai 50, 20457 Hamburg, Germany (professional representative) 

 

a g a i n s t

 

Gaala Mb, J. Savickio G. 4, 01108 Vilnius, Lithuania (applicant), represented by Laura Beinoriene, Advokates L. Beinorienes Kontora, B.k. Balucio G. 3c, 11311 Vilnius, Lithuania (professional representative).

On 09/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 111 271 is partially upheld, namely for the following contested goods:

Class 14: Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Jewellery boxes and watch boxes; Key rings and key chains, and charms therefor; Time instruments; Chronometric instruments; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Boxes of precious metal; Ceramic discs for use as tokens of value; Coins; Collectible coins; Commemorative boxes of precious metal; Commemorative coins; Commemorative shields; Commemorative statuary cups made of precious metal; Copper tokens; Decorative articles [trinkets or jewellery] for personal use; Decorative boxes made of precious metal; Fancy keyrings of precious metals; Gold bullion; Gold bullion coins; Grave markers of precious metal; Identification bracelets [jewelry]; Identity plates of precious metal; Iridium alloys; Metal tokens used for mass transit; Monetary coin sets for collecting purposes; Non-monetary coins; Objet d'art made of precious stones; Objet d'art of enamelled gold; Objet d'art of enamelled silver; Osmium alloys; Palladium alloys; Prize cups of precious metals; Rhodium alloys; Ruthenium alloys; Silver alloys; Silver objets d'art; Tourmaline gemstones; Trinkets coated with precious metal; Trinkets of bronze; Trophies coated with precious metal alloys; Trophies coated with precious metals; Trophies made of precious metal alloys; Trophies made of precious metals; Works of art of precious metal. Class 18: Umbrellas and parasols; Saddlery, whips and apparel for animals; Luggage, bags, wallets and other carriers; Animal skins; Boxes made of leather; Boxes of leather or leatherboard; Butts [parts of hides]; Card holders made of imitation leather; Card holders made of leather; Cases of leather or leatherboard; Cattle skins; Chamois leather, other than for cleaning purposes; Curried skins; Document cases of leather; Faux fur; Fur; Furs sold in bulk; Girths of leather; Goldbeaters' skin; Harness fittings; Imitation leather; Imitation leather hat boxes; Imitation leather sold in bulk; Industrial packaging containers of leather; Kid; Labels of leather; Leather and imitations of leather; Leather for furniture; Leather for harnesses; Leather for shoes; Leather luggage straps; Leather sold in bulk; Leather straps; Leather, unworked or semi-worked; Leatherboard; Leathercloth; Moleskin [imitation of leather]; Polyurethane leather; Rawhide chews for dogs; Semi-worked fur; Sheets of imitation leather for use in manufacture; Sheets of leather for use in manufacture; Shoulder belts; Shoulder belts [straps] of leather; Shoulder straps; Snakeskin; Straps for skates; Straps made of imitation leather; Toiletry bags sold empty; Worked or semi-worked hides and other leather. Class 25: Clothing; Footwear; Headgear.

2.	European Union trade mark application No 18 144 817 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 (in Classes 14, 18, 25) of European Union trade mark application No 18 144 817 (figurative mark). The opposition is based on German trade mark registrations No 30 630 687, “GALA” (word mark) and No 302 018 017 954 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR for both earlier marks.

 

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.

 

The applicant requested that the opponent submit proof of use of the two German trade marks on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 31/10/2019.

 

Earlier trade mark No 302 018 017 954 was registered on 27/09/2018. Therefore, the request for proof of use is clearly inadmissible.

As to earlier trade mark No 30 630 687, it was registered on 17/07/2006. However, for national marks, it is necessary to determine the date that is equivalent to the ‘registration date’ for EUTMs. In interpreting this term, it should be taken into account that some national trade mark systems, such as the German system, have an opposition procedure after registration.

In view of these differing national proceedings, Article 16(1) of Directive (EU) 2015/2436 refers, as concerns the use requirement for national marks, to the period of ‘five years following the date of the completion of the registration procedure.’

The ‘date of completion of the registration procedure’ that serves for calculating the starting point of the five-year period for the obligation of use for national and international registrations (Article 47(2) and (3) EUTMR) is determined by each Member State according to its own procedural rules (14/06/2007, C-246/05, Le Chef de Cuisine, EU:C:2007:340, § 26-28).

In general, the ‘completion of the registration procedure’ occurs when the trade mark is entered in the register. Pursuant to Article 16(2) of Directive (EU) 2015/2436, where a Member State provides for opposition proceedings following registration, the relevant five-year period must be calculated from the date when the mark can no longer be opposed or, in the event that an opposition has been lodged, from the date when a decision terminating the opposition proceedings becomes final or the opposition is withdrawn. Article 16(4) of Directive (EU) 2015/2436 provides that the date of commencement of the relevant 5-year period must be entered in the register.

In the present case, the evidence submitted on 11/02/2020 by the opponent in relation to earlier German trade mark registration No 30 630 687 showed that the trade mark was subject to post-registration opposition proceedings as per the publication on 14/10/2016 of the rectification text: ‘The opposition proceedings continue. […] There remains an opposition in force’. On 18/12/2020 the opponent filed an extract from the German database which indicated that the opposition against its earlier mark had been withdrawn on 22/10/2020 leading to an update of the DPMA register of the same date, and to the publication of the withdrawal in the Trade Mark journal (Markenblatt) on 27/11/2020.

It follows from the above that the relevant date for the calculation of the grace period is 22/10/2020 and that earlier German trade mark No 30 630 687 is therefore not subject to the proof of use requirement. Therefore, the request for proof of use concerning this earlier mark is also inadmissible.  

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 and services

 

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

Earlier mark 1 (national trade mark registration No 30 630 687)

Class 3: Perfumery, essential oils, cosmetics, hair lotions.

Class 9: Recorded and unrecorded magnetic, optical, magneto-optical, (exposed) electronic image carriers, sound carriers and data carriers, in particular CDs, CD-ROMs, CD-Is, MP3s, DVDs, floppy disks, also for digital data transfer; video tapes; records; magnetic data carriers; computer software, data processing programs, computer operating programs, also for digital data transfer; computer programs (downloadable); electronic publications of all kinds (downloadable). 

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

Class 16: Printed matter; calendars; photographs; book binding material; Paper, cardboard and goods made from these materials, not included in other classes; instructional and teaching material (except apparatus); stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes).

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas.

Class 21: Household or kitchen utensils and containers (not of precious metals or coated therewith); glassware, porcelain and earthenware not included in other classes.

Class 24: Textiles and textile goods, not included in other classes; bed covers; table covers.

Class 25: Clothing, except workwear for men and made of fabrics, knit fabrics and knitted fabrics; footwear, headgear.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 35: Conducting fairs for commercial or advertising purposes; organization of exhibitions and fairs for commercial or advertising purposes; the aforementioned services not in the field of gardening, landscaping and sports facilities construction; advertisement.

Class 38: Telecommunications, telecommunications services; telecommunications services, namely transfer of information to others via the Internet; telecommunications services, namely broadcasting information via wireless and / or wire bound networks; services of a content provider, namely providing platforms, information or portals on the internet; providing Internet chat rooms, operating chat lines, chat rooms and forums; broadcasting of radio and (cable based) television programs, including digital data processing; electronic news transmission; rental of access time to global computer networks; services of an access provider, namely arranging and providing right of use and access authorization to telecommunications networks such as the Internet.

Class 39: Travel arrangement. 

Class 41: Education; providing of training; the aforementioned services not in the field of gardening, landscaping and sports facilities construction; entertainment, in particular radio and television entertainment; sporting and cultural activities.

Class 44: Beauty care for human beings; executing massages; services of beauty salons; nutritional advice.

Earlier mark 2 (national trade mark registration No 302 018 017 954)

Class 9: Recorded content; databases; media content; software, in particular apps and multimedia products; CDs, CD-ROMs, DVDs and other digital image and sound carriers and recording media; electronic publications including multimedia publications, e-magazines and e-books; electronic newsletters; photographs and other image files [recorded or downloadable]; audio books, music and other audio files [recorded or downloadable]; videos and other moving image files [recorded or downloadable]; recorded data files [recorded or downloadable]; information technology and audio-visual, multimedia and photographic devices; magnets, magnetizers and demagnetizers; scientific and laboratory devices for treatment using electricity; apparatus, instruments and cables for electricity; optical devices, enhancers and correctors; glasses, sunglasses and contact lenses and cases therefor; safety, security, protection and nameled devices; diving equipment; navigation, guidance, tracking, targeting and map making devices; measuring, detecting and monitoring instruments, indicators and controllers; scientific research and laboratory apparatus, educational apparatus and simulators; parts and fittings for all the aforesaid goods, included in this class; sets and collections of goods containing one or more of the aforesaid goods.

Class 14: Gemstones, pearls and precious metals, and imitations thereof; jewellery; time instruments; clocks; other articles of precious metals and precious stones, and imitations thereof, namely statues and figures made of or coated with precious or semi-precious metals or stones, or imitations thereof, ornaments made of or coated with precious or semi-precious metals or stones, or imitations thereof, coins and tokens, works of art of precious metal; key rings and key chains, and charms therefor; jewellery boxes and watch boxes; sets and other collections of goods containing one or more of the aforesaid goods; parts and fittings for all the aforesaid goods, included in this class.

Class 16: Printed matter, in particular magazines and books; photographs; instructional and teaching materials; stationery; paper and cardboard; posters; calendars; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; decoration and art materials and media; parts and fittings for all the aforesaid goods, included in this class; sets and collections of goods containing one or more of the aforesaid goods.

Class 21: Household or kitchen utensils and containers; tableware, cookware and containers; glassware for household or kitchen purposes; glass tableware; porcelain ware; combs and sponges; scrubbers, brushes and brooms, and other cleaning devices and cleaning articles, material for brush-making; statues, figurines, signs and works of art, included in this class; unworked and semi-worked glass, not specified for use; cosmetic and toilet utensils and bathroom articles; articles for animals, namely aquariums and vivariums, devices for pest and vermin control, bird baths, cages, feeding and drinking articles, goldfish bowls, articles for the care of fur, nesting articles, tags, waste disposal articles; household articles for clothing and footwear, namely boot jacks and shoehorns, button hooks, coatstands, stretchers for clothing, presses and mangles for clothing, shoe polishers, shoe trees [stretchers] and shapers; sets and other collections of goods containing one or more of the aforesaid goods.

Class 29: Meats; fish, seafood and molluscs; dairy products and dairy substitutes; cheese; birds eggs and egg products; oils and fats; processed fruits, fungi and vegetables [including nuts and pulses]; jellies, jams, compotes, fruit and vegetable spreads; soups and stocks, meat extracts; prepared insects and larvae; sausage skins and imitations thereof; sets and other collections of goods containing one or more of the aforesaid goods.

Class 30: Convenience and savory snacks, namely snacks based on corn, cereals, flour and sesame, biscuits and crackers, dumplings, pancakes, pasta, rice and cereal foodstuffs, pies and farinaceous foods, sandwiches and pizzas, spring rolls and seaweed rolls, steamed buns, tortilla dishes; salts, seasonings, flavourings and condiments; savory sauces, chutneys and pastes; syrups and treacles; baked goods and confectionery, chocolate and desserts, namely bread, pastry, cakes, tarts and biscuits, sugar candy [for food], sweetmeats [candy], chocolates, chocolate, chocolate candies, chocolate bars and chewing gum, cereal bars and energy bars; sugar, natural sweeteners, sweet coatings and fillings, bee products [for alimentary purposes]; ice, ice creams, frozen yogurts and sorbets; coffee, tea and cocoa and substitutes therefor; processed grains, starches, and goods made thereof, baking preparations and yeasts; dried and fresh pastas, noodles and dumplings; cereals; yeast and leavening agents; doughs, batters, and mixes therefor; sets and other collections of goods containing one or more of the aforesaid goods.

Class 32: Beer and brewery products; non-alcoholic beverages; nut and soy based beverages; flavoured carbonated beverages; juices; waters; preparations for making beverages; sets and other collections of goods containing one or more of the aforesaid goods.

Class 33: Preparations for making alcoholic beverages; alcoholic beverages, except beers; spirits and liquors; wines; sparkling wines; cider; pre-mixed alcoholic beverages; sets and other collections of goods containing one or more of the aforesaid goods.

Class 35: Advertising, marketing and promotional services; public relations services; product demonstrations and product display services; trade show and commercial exhibition services; loyalty, incentive and bonus program services; provision of advertising spaces, advertising time and advertising media; distribution of advertising, marketing and promotional materials; advertising, marketing and promotional consultancy, advisory and assistance services; editing and publication of printed and/or electronic customer magazines for advertising purposes; publication and distribution of advertisements; design and production of advertising materials; business assistance, management and administrative services; clerical services; business analysis, research and information services; market research; collection and systematization of business data; collection, systematization, updating and maintenance of data in computer databases; commercial trading and consumer information services, namely auctioneering services, rental of vending machines, commercial intermediation services, business contact services, collective buying services, commercial evaluation services, competition arrangements, distributorship services, import and export services, mediation and negotiation services, ordering services, price comparing services, procurement services for others and subscription services; retail, mail order retail and wholesale services in relation to the following goods: recorded content, databases, media content, software, in particular apps and multimedia products, CDs, CD-ROMs, DVDs and other digital image and sound carriers and recording media, electronic publications including multimedia publications, e-magazines and e-books, electronic newsletters, photographs and other image files, audio books, music and other audio files, videos and other moving image files, recorded data files, information technology and audio-visual, multimedia and photographic devices, magnets, magnetizers and demagnetizers, scientific and laboratory devices for treatment using electricity, apparatus, instruments and cables for electricity, optical devices, enhancers and correctors, glasses, sunglasses and contact lenses and cases therefor, safety, security, protection and nameled devices, diving equipment, navigation, guidance, tracking, targeting and map making devices, measuring, detecting and monitoring instruments, indicators and controllers, scientific research and laboratory apparatus, educational apparatus and simulators, gemstones, pearls and precious metals, and imitations thereof, jewellery, time instruments, clocks, other articles of precious metals and precious stones, and imitations thereof, namely statues and figures made of or coated with precious or semi-precious metals or stones, or imitations thereof, ornaments made of or coated with precious or semi-precious metals or stones, or imitations thereof, coins and tokens, works of art of precious metal, key rings and key chains, and charms therefor, jewellery boxes and watch boxes, printed matter, in particular magazines and books, photographs, instructional and teaching materials, stationery, paper and cardboard, posters, calendars, bags and articles for packaging, wrapping and storage of paper, cardboard or plastics, decoration and art materials and media, household or kitchen utensils and containers, tableware, cookware and containers, glassware for household or kitchen purposes, glass tableware, porcelain ware, combs and sponges, scrubbers, brushes and brooms, and other cleaning devices and cleaning articles, material for brush-making, statues, figurines, signs and works of art, unworked and semi-worked glass, cosmetic and toilet utensils and bathroom articles, articles for animals, devices for pest and vermin control, tags, waste disposal articles, household articles for clothing and footwear, namely boot jacks and shoehorns, button hooks, coatstands, stretchers for clothing, presses and mangles for clothing, shoe polishers, shoe trees [stretchers] and shapers, meats, fish, seafood and molluscs, dairy products and dairy substitutes, cheese, birds eggs and egg products, oils and fats, processed fruits, fungi and vegetables [including nuts and pulses], jellies, jams, compotes, fruit and vegetable spreads, soups and stocks, meat extracts, prepared insects and larvae, sausage skins and imitations thereof, convenience and savory snacks, salts, seasonings, flavourings and condiments, savory sauces, chutneys and pastes, syrups and treacles, baked goods and confectionery, chocolate and desserts, sugar candy [for food], chocolates, chocolate candies, chocolate bars and chewing gum, cereal bars and energy bars, sugar, natural sweeteners, sweet coatings and fillings, bee products [for alimentary purposes], ice, ice creams, frozen yogurts, sorbets, coffee, tea and cocoa and substitutes therefor, processed grains, starches, and goods made thereof, baking preparations and yeasts, dried and fresh pastas, noodles and dumplings, cereals, yeast and leavening agents, doughs, batters, and mixes therefor, beer and brewery products, non-alcoholic beverages, nut and soy based beverages, flavoured carbonated beverages, juices, waters, preparations for making beverages, preparations for making alcoholic beverages, alcoholic beverages, spirits and liquors, wines, sparkling wines, cider, pre-mixed alcoholic beverages, parts and fittings for all the aforesaid goods, sets and collections of goods containing one or more of the aforesaid goods; retail, mail order retail and wholesale services in relation to the following services: advertising, marketing and promotional services, public relations services, product demonstrations and product display services, trade show and commercial exhibition services, loyalty, incentive and bonus program services, editing and publication of printed and/or electronic customer magazines for advertising purposes, business assistance, management and administrative services, clerical services, business analysis, research and information services, market research, collection and systematization of business data, collection, systematization, updating and maintenance of data in computer databases, commercial trading and consumer information services, namely auctioneering services, rental of vending machines, commercial intermediation services, business contact services, collective buying services, commercial evaluation services, competition arrangements, distributorship services, import and export services, mediation and negotiation services, ordering services, price comparing services, procurement services for others and subscription services, telecommunications, in particular providing platforms, portals, blogs, chatrooms, chat lines, communities, social networks and forums on the Internet and other data networks, broadcasting services, computer communications and Internet access services, providing access to content, websites and portals, providing access to databases, services of news agencies, namely collection and transmission of news and information, services of image agencies, namely collection and delivery of images, data services of an online provider, namely electronic transmission of texts, images, videos and other data, provision of access to texts, images, videos and other data, provision of access to software, apps, videos, other multimedia products and databases, providing, as well as telecommunications via, platforms, portals and blogs and on the Internet and other networks, communication services, education, training, entertainment, sporting activities, cultural activities, publishing and reporting, writing of texts, editing and publication of printed and/or electronic publications, including multimedia publications, editing and publication of audio books and other audio publications, editing and publication of printed and/or electronic publications consisting of texts and/or images, also with moving images and/or sound, also as combined works, editing and publication of works consisting of texts and/or moving images and/or sound, in particular multimedia works, providing on-line electronic publications [not downloadable], including multimedia publications, providing on-line texts, images, photographs, videos and audio files [not downloadable], providing on-line music and other audio files [not downloadable], audio, video and multimedia productions, and photography, production of video recordings and of television features and televisions shows, production of music, recording studio services for television, entertainment via radio, television and the Internet, entertainment services in the form of television programmes, production of television features as well as of radio and television programmes, development of formats for television programmes, services of image agencies, namely photography, photographic reporting and provision [rental] of image and film material, services for the showing of video recordings, providing television programs, not downloadable, via video-on-demand services, provision of non-downloadable films and television programs via pay television, providing multi-media entertainment via a website, organization and conducting of conferences, exhibitions and competitions, organization and conducting of conferences, congresses, courses, seminars, trainings, symposiums and colloquiums, organization and conducting of award ceremonies, organization and conducting of gambling activities, lotteries and quizzes, organization and conducting of knowledge tests [education, training, entertainment], provision of games [non-downloadable] on the Internet and other data networks, library services, design and development of computer hardware, conception, design, development, testing, maintenance and updating of computer software, apps, multimedia products, databases and websites, providing temporary use of non-downloadable software, non-downloadable apps, non-downloadable multimedia products, non-downloadable databases and non-downloadable web sites, hosting services, software as a service [SaaS] and rental of software, design services, scientific and technological services and research and design relating thereto, industrial analysis and research services, testing, authentication and quality control, product quality evaluation, certification including awarding test and quality seals, preparation and conducting of scientific and technical reports, temporary accommodation, services for providing food and drink, catering, rental, hire and leasing of objects in connection with the providing of the aforesaid services, included in this class; retail, mail order retail and wholesale services in relation to goods and services in the following fields: printed and digital media, kitchen, household, food and/or beverages; rental, hire and leasing of objects in connection with the providing of the aforesaid services, included in this class; advice, consultancy and information for the aforesaid, included in this class; all the aforesaid services also via media such as television, radio and the Internet.

Class 38: Telecommunications, in particular providing platforms, portals, blogs, chatrooms, chat lines, communities, social networks and forums on the Internet and other data networks; broadcasting services; computer communications and Internet access services; providing access to content, websites and portals; providing access to databases; services of news agencies, namely collection and transmission of news and information; services of image agencies, namely collection and delivery of images; data services of an online provider, namely electronic transmission of texts, images, videos and other data; provision of access to texts, images, videos and other data; provision of access to software, apps, videos, other multimedia products and databases; providing, as well as telecommunications via, platforms, portals and blogs and on the Internet and other networks; communication services; rental, hire and leasing in connection with the aforesaid, included in this class; advice, consultancy and information for the aforesaid, included in this class; all the aforesaid services also via media such as television, radio and the Internet.

Class 41: Education; sporting activities; publishing and reporting; writing of texts; editing and publication of printed and/or electronic publications, including multimedia publications; editing and publication of audio books and other audio publications; editing and publication of printed and/or electronic publications consisting of texts and/or images, also with moving images and/or sound, also as combined works; editing and publication of works consisting of texts and/or moving images and/or sound, in particular multimedia works; providing on-line electronic publications [not downloadable], including multimedia publications; providing on-line texts, images, photographs, videos and audio files [not downloadable]; providing on-line music and other audio files [not downloadable]; audio, video and multimedia productions, and photography; production of music; recording studio services for television; services of image agencies, namely photography, photographic reporting and provision [rental] of image and film material; services for the showing of video recordings; providing television programs, not downloadable, via video-on-demand services; provision of non-downloadable films and television programs via pay television; organization and conducting of conferences, exhibitions and competitions; organization and conducting of conferences, congresses, courses, seminars, trainings, symposiums and colloquiums; organization and conducting of award ceremonies; organization and conducting of gambling activities, lotteries and quizzes; organization and conducting of knowledge tests [education, training, entertainment]; provision of games [non-downloadable] on the Internet and other data networks; library services; rental, hire and leasing of objects in connection with the providing of the aforesaid services, included in this class; advice, consultancy and information for the aforesaid, included in this class; all the aforesaid services also via media such as television, radio and the Internet.

Class 42: Design and development of computer hardware; conception, design, development, testing, maintenance and updating of computer software, apps, multimedia products, databases and websites; providing temporary use of non-downloadable software, non-downloadable apps, non-downloadable multimedia products, non-downloadable databases and non-downloadable web sites; hosting services, software as a service [SaaS] and rental of software; design services; scientific and technological services and research and design relating thereto; industrial analysis and research services; testing, authentication and quality control; product quality evaluation; certification including awarding test and quality seals; preparation and conducting of scientific and technical reports; rental, hire and leasing of objects in connection with the providing of the aforesaid services, included in this class; advice, consultancy and information for the aforesaid, included in this class; all the aforesaid services also via media such as television, radio and the Internet.

Class 43: Temporary accommodation; rental, hire and leasing of objects in connection with the providing of the aforesaid services, included in this class; advice, consultancy and information for the aforesaid, included in this class; advice and consultancy in relation to all the aforesaid services also via media such as television, radio and the Internet.

The contested goods are the following:

 

Class 14: Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Jewellery boxes and watch boxes; Key rings and key chains, and charms therefor; Time instruments; Chronometric instruments; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Boxes of precious metal; Ceramic discs for use as tokens of value; Coins; Collectible coins; Commemorative boxes of precious metal; Commemorative coins; Commemorative shields; Commemorative statuary cups made of precious metal; Copper tokens; Decorative articles [trinkets or jewellery] for personal use; Decorative boxes made of precious metal; Fancy keyrings of precious metals; Gold bullion; Gold bullion coins; Grave markers of precious metal; Identification bracelets [jewelry]; Identity plates of precious metal; Iridium alloys; Meditation beads; Metal tokens used for mass transit; Misbaha [prayer beads]; Monetary coin sets for collecting purposes; Non-monetary coins; Objet d’art made of precious stones; Objet d’art of enameled gold; Objet d’art of enameled silver; Osmium alloys; Palladium alloys; Prayer beads; Prize cups of precious metals; Rhodium alloys; Rosaries; Ruthenium alloys; Silver alloys; Silver objets d’art; Tourmaline gemstones; Trinkets coated with precious metal; Trinkets of bronze; Trophies coated with precious metal alloys; Trophies coated with precious metals; Trophies made of precious metal alloys; Trophies made of precious metals; Works of art of precious metal.

Class 18: Walking sticks; Umbrellas and parasols; Saddlery, whips and apparel for animals; Luggage, bags, wallets and other carriers; Animal skins; Boxes made of leather; Boxes of leather or leatherboard; Butts [parts of hides]; Card holders made of imitation leather; Card holders made of leather; Cases of leather or leatherboard; Casings, of leather, for springs; Cattle skins; Chamois leather, other than for cleaning purposes; Chin straps, of leather; Curried skins; Document cases of leather; Faux fur; Fur; Furniture coverings of leather; Furs sold in bulk; Girths of leather; Goldbeaters’ skin; Harness fittings; Imitation leather; Imitation leather hat boxes; Imitation leather sold in bulk; Industrial packaging containers of leather; Kid; Labels of leather; Leather and imitations of leather; Leather cord; Leather for furniture; Leather for harnesses; Leather for shoes; Leather luggage straps; Leather sold in bulk; Leather straps; Leather twist; Leather, unworked or semi-worked; Leatherboard; Leathercloth; Moleskin [imitation of leather]; Polyurethane leather; Rawhide chews for dogs; Reins for guiding children; Semi-worked fur; Sheets of imitation leather for use in manufacture; Sheets of leather for use in manufacture; Shoulder belts; Shoulder belts [straps] of leather; Shoulder straps; Snakeskin; Straps for skates; Straps for soldiers’ equipment; Straps made of imitation leather; Studs of leather; Tefillin [phylacteries]; Toiletry bags sold empty; Trimmings of leather for furniture; Valves of leather; Worked or semi-worked hides and other leather.

Class 25: Clothing; Footwear; Headgear.

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 term ‘in particular’, used in the opponent’s list of goods and services, indicates 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, 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 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 14

Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Jewellery boxes and watch boxes; Key rings and key chains, and charms therefor; Time instruments; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Coins; Works of art of precious metal are identically contained in both lists of goods (earlier mark 2).

The contested chronometric instruments are synonymous with the opponent’s time instruments (earlier mark 2). Therefore, they are identical.

The contested tourmaline gemstones are included in the broad category of the opponent’s gemstones (earlier mark 2). Therefore, they are identical.

The contested fancy keyrings of precious metals are included in the broad category of the opponent’s key rings (earlier mark 2). Therefore, they are identical.

The contested ceramic discs for use as tokens of value; Collectible coins; Commemorative coins; Copper tokens; Gold bullion coins; Metal tokens used for mass transit; Monetary coin sets for collecting purposes; Non-monetary coins are included in the broad categories of the opponent’s coins and tokens (earlier mark 2). Therefore, they are identical.

The contested identification bracelets [jewelry]; Decorative articles [trinkets or jewellery] for personal use are included in the broad category of, or overlap with, the opponent’s jewellery (earlier mark 2). Therefore, they are identical.

Precious metals are rare, naturally occurring metals of high commercial value and include gold, silver, platinum and other metals belonging to the platinum group such as iridium, osmium, palladium, rhodium and ruthenium. Consequently, the contested Gold bullion; Iridium alloys; Osmium alloys; Palladium alloys; Rhodium alloys; Ruthenium alloys; Silver alloys are included in the broad category of the opponent’s precious metals and their alloys (earlier mark 1). Therefore, they are identical.

The contested  commemorative statuary cups made of precious metal; Prize cups of precious metals; Trinkets coated with precious metal; Trinkets of bronze; Trophies coated with precious metal alloys; Trophies coated with precious metals; Trophies made of precious metal alloys; Trophies made of precious metals are included in the broad category of, or overlap with, the opponent’s statues and figures made of or coated with precious or semi-precious metals or stones, or imitations thereof (earlier mark 2). Therefore, they are identical.

The contested objet d’art of nameled gold; Objet d’art of nameled silver; Silver objets d’art are included in the broad categories of the opponent’s works of art of precious metal (earlier mark 2). Therefore, they are identical.

The contested objet d’art made of precious stones are highly similar to the opponent’s works of art of precious metal (earlier mark 2). The goods coincide in all criteria and only differ in the material they are made of. However, both materials have in common that they are valuable goods (precious stones versus precious metal).

The contested boxes of precious metal; Commemorative boxes of precious metal; Decorative boxes made of precious metal are similar to the opponent’s jewellery (earlier mark 2) as they usually coincide in producer, relevant public and distribution channels.

The contested commemorative shields; grave markers of precious metal; Identity plates of precious metal are at least similar to a low degree to the opponent’s statues and figures made of or coated with precious or semi-precious metals or stones, or imitations thereof (earlier mark 2). The goods have the same nature insofar as they are goods which may be made of precious metals. Furthermore, it is reasonable to assume that the goods may be produced by the same companies, given that the required know-how and machinery (to work the precious metal) may also be the same.

Finally, the contested Meditation beads; Misbaha [prayer beads]; Prayer beads; Rosaries are dissimilar to all of the opponent’s goods and services in Classes 3, 9, 14, 16, 18, 21, 24, 25, 28, 35, 38, 39, 41 and 44 (earlier mark 1) or Classes 9, 14, 16, 21, 29, 30, 32, 33, 35, 38, 41, 42 and 43 (earlier mark 2). Apart from having a different nature, purpose and method of use, the goods and services under comparison are manufactured or provided by companies belonging to different sectors. They do not coincide in their distribution channels or end users. Finally, they are neither in competition with each other nor complementary to each other.

Contested goods in Class 18

Umbrellas are identically contained in both lists of goods (earlier mark 1).

The contested  luggage, bags and other carriers are identical to the opponent’s trunks and travelling bags (earlier mark 1), either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested toiletry bags sold empty are highly similar to the to the opponent’s travelling bags (earlier mark 1), as they have the same purpose and nature. They usually coincide in producer, relevant public, distribution channels and method of use.

The contested wallets; card holders made of imitation leather; card holders made of leather; cases of leather or leatherboard; document cases of leather are similar to the to the opponent’s travelling bags (earlier mark 1), as they usually coincide in producer, relevant public and distribution channels.

The contested parasols are similar to the opponent’s umbrellas (earlier mark 1), as they have a similar purpose and nature. They usually coincide in producer, relevant public and distribution channels.

The contested animal skins; Butts [parts of hides]; Cattle skins; Chamois leather, other than for cleaning purposes; Curried skins; Faux fur; Fur; Furs sold in bulk; Goldbeaters’ skin; Imitation leather; Imitation leather sold in bulk; Kid; Leather and imitations of leather; Leather for furniture; Leather for harnesses; Leather for shoes; Leather sold in bulk; Leather, unworked or semi-worked; Leatherboard; Leathercloth; Moleskin [imitation of leather]; Polyurethane leather; Semi-worked fur; Sheets of imitation leather for use in manufacture; Sheets of leather for use in manufacture; Snakeskin; Worked or semi-worked hides and other leather are identical to the opponent’s leather and imitations of leather (earlier mark 1), either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested leather luggage straps; Leather straps [which include leather luggage straps]; Straps made of imitation leather [which include imitation leather luggage straps]; Labels of leather [which include luggage labels]; Shoulder belts; Shoulder belts [straps] of leather; Shoulder straps are similar to the opponent’s travelling bags (earlier mark 1), as they usually coincide in producer, relevant public and distribution channels.

The contested girths of leather are similar to the opponent’s trunks (earlier mark 1), as they usually coincide in producer, relevant public and distribution channels.

The contested  boxes made of leather; Boxes of leather or leatherboard; Imitation leather hat boxes; Industrial packaging containers of leather are at least similar to a low degree to the opponent’s bags and articles for packaging, wrapping and storage of paper, cardboard or plastics in Class 16 of earlier mark 2, since the goods coincide in their purpose (packaging and/or storage) and end users. Furthermore, they are in competition with each other.

The contested rawhide chews for dogs are treats for dogs and the contested apparel for animals is clothing for animals. The contested  saddlery, whips; harness fittings are goods for handling horses and horseback riding. All these contested goods are normally sold in specialized shops that sell animal foodstuffs and other accessories for the care and handling of animals. There is a low degree of similarity to the opponent’s articles for animals, namely (…) devices for pest and vermin control, (…) feeding and drinking articles, (…) articles for the care of fur, (…) (in Class 21 of earlier mark 2). The goods coincide in their distribution channels and relevant public (pet owners). Finally, they may even coincide in their producers, for example companies specialized in treats and accessories for dogs.

The contested straps for skates are similar to a low degree to the opponent’s gymnastic and sporting articles not include in other classes (Class 28 of earlier mark 1). The earlier goods comprise skates and consequently, the goods in conflict are complementary and coincide in their end users and distribution channels.

The contested walking sticks are dissimilar to all of the opponent’s goods and services in Classes 3, 9, 14, 16, 18, 21, 24, 25, 28, 35, 38, 39, 41 and 44 (earlier mark 1) or Classes 9, 14, 16, 21, 29, 30, 32, 33, 35, 38, 41, 42 and 43 (earlier mark 2). Apart from having a different nature, purpose and method of use, the goods and services under comparison are manufactured or provided by companies belonging to different sectors. They do not coincide in their distribution channels or end users. Finally, they are neither in competition with each other nor complementary to each other.

Finally, although the remaining contested goods Casings, of leather, for springs; Chin straps, of leather; Furniture coverings of leather; Leather cord; Leather twist; Reins for guiding children; Straps for soldiers' equipment; Studs of leather; Tefillin [phylacteries]; Trimmings of leather for furniture; Valves of leather are goods made of (imitation) leather, they are dissimilar to the opponent’s goods made of these materials [i.e. leather and imitations of leather] and not included in other classes in Class 18 (earlier mark 1) for the following reasons:

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings v1.1 (20/02/2014), the term goods made of these materials [i.e. leather and imitations of leather] and not included in other classes, as such, does not provide a clear indication of what goods are covered, as it simply states what the goods are made of, but not what the goods are. Unclear and imprecise terms can only be taken into account in their most natural and literal sense but cannot be construed as constituting a claim to goods that cannot be recognised by this meaning without further specification. While the opponent’s unclear and imprecise term goods made of these materials [i.e. leather and imitations of leather] and not included in other classes can be understood in its natural meaning as referring to things that are made to be sold manufactured with (imitations of) treated animal skin, this abstract meaning does not sufficiently reveal its specific commercial nature, that is to say to what goods or types of goods they relate. It covers a wide range of goods that may have very different characteristics and/or purposes, may require very different levels of technical capabilities and know-how to be produced and/or used, and could target different consumers, be sold through different distribution channels and therefore relate to different market sectors.

As a result, when comparing the opponent’s unclear and imprecise term goods made of these materials [i.e. leather and imitations of leather] and not included in other classes with the remaining contested goods, they cannot be construed as relating to the same goods when such qualities or methods of use have not been expressly identified in the specification and cannot be understood from its natural and literal meaning. Therefore, while the terms may be compared and considered to have the same abstract nature insofar as they are articles made of (imitation) leather, they cannot, on the basis of the insufficient information and facts provided by the imprecise specification of earlier mark 1, be considered to have the same purpose or methods of use, or to be complementary to each other or in competition. Furthermore, they cannot be considered to target the same relevant public, share the same distribution channels or usually be produced by the same undertakings. Consequently, in the absence of a further specification (by way of a partial surrender) of the unclear and imprecise term goods made of these materials [i.e. leather and imitations of leather] and not included in other classes, these goods cannot be considered to share sufficient relevant factors with the contested remaining goods for a finding of any similarity between them.

The remaining contested goods are also dissimilar to the remaining goods in Class 18 and to all of the opponent’s other goods and services in Classes 3, 9, 14, 16, 21, 24, 25, 28, 35, 38, 39, 41 and 44 (earlier mark 1) or Classes 9, 14, 16, 21, 29, 30, 32, 33, 35, 38, 41, 42 and 43 (earlier mark 2). Apart from having a different nature, purpose and method of use, the goods and services under comparison are manufactured or provided by companies belonging to different sectors. They do not coincide in their distribution channels or end users. Finally, they are neither in competition with each other nor complementary to each other.

Contested goods in Class 25

Footwear; headgear are identically contained in both lists of goods (earlier mark 1).

The contested clothing includes, as a broader category, the opponent’s clothing, except workwear for men and made of fabrics, knit fabrics and knitted fabrics (earlier mark 1). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

 

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 at business customers with specific professional knowledge or expertise (for example raw materials such as leather).

 

The degree of attention may vary from average to high, depending in particular on the price and the frequency of the purchase or the highly specialised nature of the goods.

 

For example, as to certain goods in Class 14, in its decision of 09/12/2010, R 900/2010-1, Leo Marco (fig.) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

 

c) The signs

 

earlier mark 1: GALA (word mark) earlier mark 2:
Earlier trade mark	Contested sign

  

The relevant territory is  Germany.

 

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 element ‘Gala’ of the earlier signs will be associated with ‘festive clothing prescribed for a special occasion’ or a ‘special occasion’ in the sense of a ‘theater, opera performance, concert event, performance by entertainers or the like [in a festive setting]‘ (see Standard German Dictionary Duden Online: ‘für einen besonderen Anlass vorgeschriebene festliche Kleidung; Theater-, Opernaufführung, Konzertveranstaltung, Auftritt von Unterhaltungskünstlern o. Ä. [in festlichem Rahmen]‘). Bearing in mind that the relevant goods could be worn on special occasions or, in the case of raw materials, could serve to be turned into something to be worn on special occasions, this element alludes to a superior quality and is thus weak for all of the goods due to its laudatory meaning.

 

As to the contested sign, the letter ‘Â’ does not exist in the German alphabet. However, since the sign in its entirety is very close to the German word ‘Gala’, the relevant public will clearly associate it with this meaning. Consequently, the above applies regarding the weak character of this laudatory term.

As regards the earlier figurative sign, it is composed of a verbal element and a less distinctive figurative element of a purely decorative nature in the form of a non-distinctive red rectangular background. Therefore, the verbal element is more distinctive than the figurative element.

Moreover, 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).

 

The signs have no element that could be considered clearly more dominant than other elements.   

 

Visually, the signs coincide in the string of letters ‘GA(*)LA’, even though in the case of earlier mark 2 the letters ‘ALA’ are represented in lower-case. The signs differ in the letter ‘Â’ of the contested sign and in the figurative elements of earlier mark 2, which are, however, non-distinctive.

  

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

Aurally, the pronunciation of the signs coincides in the sound of the two syllables ‛GA-LA’. The pronunciation does not differ to a noticeable extent due to the additional vowel ‘A’ with the circumflex accent because this letter does not exist in German and therefore it would be pronounced just like the vowel ‘A’. The duplication of the a vowel ‘A’ in the contested sign simply means a lengthening of the first syllable. Likewise, in the earlier marks the first syllable ‘GA’ of the word ‘Gala’ also constitutes a long syllable in German, despite the fact that there is only a single vowel ‘A’.

Consequently, the presence of the additional vowel in the contested sign has no perceivable impact and the signs are aurally identical. 

   

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The words ‘GALA’/’Gala’ and ‘GAÂLA’ are pronounced identically and therefore convey the same meaning when perceived aurally. 

 

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 marks

 

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

 

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for all of the goods in question.

 

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 and services are partly identical, partly similar (to varying degrees) and partly dissimilar. They are directed at the public at large and at business customers whose degree of attention may vary from average to high.

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

The earlier marks have a low degree of distinctiveness per se. However, their verbal element ‘GALA’ is entirely included in the contested sign which merely inserts an additional letter in the middle of the sign, i.e. the position that consumers pay less attention to. In addition, the additional letter is merely a duplication of the previous vowel, albeit with the circumflex accent.

Consequently, the visual, aural and conceptual coincidences are overwhelming and there is a likelihood of confusion because the differences between the signs are confined to less distinctive figurative elements (earlier mark 2) or secondary elements such as the additional letter ‘Â’ in the middle of the contested sign.

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).

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to varying degrees) to those of the earlier trade marks. Due to the principle of interdependence, the high similarity of the signs outweighs the low degree of similarity of some of the contested goods.

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 marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

 

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

 

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.

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.

 

a) Reputation of the earlier trade marks

 

According to the opponent, both earlier marks have a reputation in Germany.

Reputation requires a knowledge threshold which is only reached when the earlier marks are known by a significant part of the relevant public for the goods they cover. The relevant public is, depending on the goods marketed, either the public at large or a more specialized public.

In the present case, the contested trade mark was filed on 31/10/2019. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the relevant goods in Class 16, namely:

earlier mark 1

Printed matter; calendars; photographs; book binding material; Paper, cardboard and goods made from these materials, not included in other classes; instructional and teaching material (except apparatus); stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes).

earlier mark 2:

Printed matter, in particular magazines and books; photographs; instructional and teaching materials; stationery; paper and cardboard; posters; calendars; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; decoration and art materials and media; parts and fittings for all the aforesaid goods, included in this class; sets and collections of goods containing one or more of the aforesaid goods.

The opposition is directed against the remaining contested goods:

Class 14: Meditation beads; misbaha [prayer beads]; prayer beads; rosaries.

Class 18: Walking sticks; Casings, of leather, for springs; Chin straps, of leather; Furniture coverings of leather; Leather cord; Leather twist; Reins for guiding children; Straps for soldiers' equipment; Studs of leather; Tefillin [phylacteries]; Trimmings of leather for furniture; Valves of leather.

In order to determine the earlier marks’ 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 marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

The opponent submitted the following evidence:

Annex O 1 Product presentation regarding the print magazine “Gala”;

Annex O 2 Examplary „Gala“ magazine covers 1997 – 2020;

Annex O 3 „Gala“ object profile 2019;

Annex O 4 Average weekly circulation figures of „Gala” magazine from 2003 to 2019 according to IVW (Informationsgemeinschaft zur Feststellung der Verbreitung von Werbeträgern e.V.) in Germany and abroad taken from www.pz-online.de (including partial translation);

Annex O 5 Source information from www.pz-online.de (including partial translation);

Annex O 6 Average circulation figures of various weekly people and lifestyle magazines in Germany from 2013 to 2018 according to IVW and taken from www.pz-online.de (including partial translation);

Annex O 7 English Wikipedia excerpt on Institut für Demoskopie Allensbach, a well-known independent institute for opinion polls;

Annex O 8 Company information regarding Institut für Demoskopie Allensbach (in English, taken from its website);

Annex O 9 Excerpts from the so-called AWA surveys (AWA stands for Allensbacher Markt- und Werbeträgeranalysen) conducted by the Institut für Demoskopie Allensbach regarding the reputation of a range of printed media in Germany 2013 - 2020 (in German);

Annex O 9a Partial translation of Annex O 9, i.e. excerpts from AWA surveys 2013 - 2020 by Institut für Demoskopie Allensbach;

Annex O 10 Exemplary covers of Gala line extensions 2014 – 2018;

Annex O 11 „Gala STYLE“ object profile 2019 ;

Annex O 12 Product presentation regarding “Gala” app;

Annex O 13 Product presentation regarding „Gala“ ePaper and subscription options (partial translation included);

Annex O 14 Product presentation regarding online magazine at www.gala.de;

Annex O 15 Screenshots from online magazine “Gala” at www.gala.de (created on 12/02/2019);

Annex O 16 Monthly visits and page impressions on www.gala.de from 01/2009 to 03/2019 according to IVW and taken from www.pz-online.de (including partial translation);

Annex O 17 Excerpt from the website of the German association for online research AGOF in English;

Annex O 18 AGOF study profile relating to the daily digital facts (as of 1 February 2019);

Annex O 19 AGOF’s summary of the key results of the daily digital facts for the time period January 2019 (partial translation included);

Annex O 20 Screenshots of the website at www.gala.de/beauty-fashion/, created on 25 February 2020 (partial translation included);

Annex O 21 Screenshot of www.gala.de with the jewelry “favorites of the editorial office” (created on 21 February 2020) and “the most beautiful autumn pieces” (created on 08 June 2020) (partial translation included);

Annex O 22 Press releases and screenshots regarding “Gala Shopping Nights” (2008 – 2019);

Annex O 23 Screenshots regarding „Gala Fashion Brunch” (2009 – 2016).

Having examined the material listed above, the Opposition Division concludes that the earlier trade marks have acquired a reputation through their use and recognition on the market.

Notwithstanding the fact that some of the documents are dated back 22 years before the relevant date, the evidence submitted in Annex 9 and 9a (AWA surveys on reputation) clearly show that the earlier trade marks have reached a knowledge threshold of 66% to 76% in Germany for a long period of time prior to the relevant date. The magazine covers from 1997 to 2020 and the circulation figures attest that large quantities of the magazine had been sold every week in Germany for many years prior to the relevant date, namely between 189.000 and 305.000 copies per week during 2003 and 2019.

It is noted that some evidence (such as the above AWA studies) contain only the verbal element ‘Gala’ of the earlier marks and other evidence refers to the figurative mark ‘Gala’ (earlier mark 2). However, it is considered that the inclusion or omission of the figurative elements is an acceptable variation of the earlier marks since these variations do not alter the distinctive character of the earlier marks. This is because the word element ‘Gala’ is the same and the figurative elements are of a purely decorative nature.

The evaluation of the evidence as a whole shows that there is sufficient objective information from third parties to corroborate the assertions made by the opponent regarding the reputation of its marks. This is determined by the fact that the surveys were conducted by independent and trustworthy companies among reasonably large and widespread samples of different kinds of real and potential customers via reliable methods. Therefore, the earlier marks have a reputation for magazines. However, the evidence submitted does not include any relevant information for goods other than the above-mentioned magazines in Class 16. As to the online magazines and internet entertainment in the form of an online magazine for which the opponent also claims reputation in its observations of 20/07/2020, these goods and services are not included in class 16 for which the earlier marks are registered and therefore this claim cannot be taken into account.

The evidence submitted by the opponent is sufficient in itself to prove conclusively the substantial degree of recognition of the earlier marks amongst the relevant public. In this context it must be noted that according to the Court ‘a Community trade mark must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the European Community, and that, in view of the facts of the main proceedings, the territory of the Member State in question may be considered to constitute a substantial part of the territory of the Community’ (06/10/2009, C-301/07, Pago, EU:C:2009:611). In view of the current circumstances, the Opposition Division considers that the reputation proven in Germany can be considered to constitute a substantial part of the European Union.

On the basis of the above, the Office concludes that the earlier trade marks have a reputation in the European Union for magazines.

 

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

 

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.

 

While the relevant section of the public for the goods covered by the conflicting marks is the same or overlaps to some extent, those goods are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public when purchasing the contested goods.

The remaining contested goods are: meditation beads; misbaha [prayer beads]; prayer beads; rosaries (Class 14) and walking sticks; Casings, of leather, for springs; Chin straps, of leather; Furniture coverings of leather; Leather cord; Leather twist; Reins for guiding children; Straps for soldiers' equipment; Studs of leather; Tefillin [phylacteries]; Trimmings of leather for furniture; Valves of leather (Class 18).

These are essentially religious objects, sticks with a curved handle used for support when walking and finished goods made of (imitation) leather.

The opponent’s marks have a reputation for magazines (Class 16). These are periodical publications containing articles and photos, often on a particular subject or aimed at a particular readership.

The goods in conflict do not coincide in any relevant criteria and are dissimilar as explained in section a) above. Moreover, the degree of dissimilarity is very high since the goods are of an entirely different nature and they are manufactured by companies belonging to completely different industries. The goods in conflict cannot be found in the same sales outlets and they are directed at end users with different needs. The purpose of the goods and their methods of use do not coincide. Finally, they are neither in competition with each other nor complementary to each other.

The opponent claims that its magazines are closely linked to the fashion and accessory sectors. However, the remaining contested goods do not belong to these sectors but constitute religious objects, walking sticks and goods made of (imitation) leather without any link to fashion and its accessories.

Because of this high degree of dissimilarity it is not plausible that the public would be reminded of the earlier marks when purchasing the contested goods bearing the contested mark.

In addition, when consideration is given to the goods in question, it is clear that the similarities between the signs in dispute relate to the element ‘Gala’ that is per se weak for the relevant goods. This is because this term has a laudatory meaning. Therefore, in view of the inherent weak distinctive character of the element ‘Gala’, the similarities between the contested trade mark and the earlier trade marks are all the more unlikely to bring the earlier trade marks to the mind of the average consumer.

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

 

 

 

The Opposition Division

 

 

Katarzyna ZANIECKA

Beatrix STELTER

Christian STEUDTNER

 

 

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.