OPPOSITION No B 3 112 787

Deckers Outdoor Corporation, 250 Coromar Drive, 93117 Goleta, United States of America (opponent), represented by Studio Torta S.P.A., Via Viotti, 9, 10121 Torino, Italy (professional representative)

a g a i n s t

Chunxian Guo, No.9 Tongyang St., Shangkou Village, Nanzhuang Town, Mengzhou City, He'nan Province, The People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo Ang. Via Appiani (corte Del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 21/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 112 787 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 156 704 for the word mark ‘TULEUGG’. The opposition is based on European Union trade mark registration No 1 409 721 for the word mark ‘UGG’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

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

a) The goods

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

Class 25: Footwear, namely, boots, slippers, shoes and clogs, shirts and caps.

The contested goods are the following:

Class 25: Boots; half-boots; ankle boots; lace boots; slippers; sports shoes; furs [clothing]; knitwear [clothing]; outerclothing; suits.

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

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

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.

Boots are identically contained in both lists of goods.

The contested half-boots; ankle boots; lace boots are included in the broad category of the opponent’s boots. Therefore, they are identical.

The contested slippers and sports shoes are included in the broad category of the opponent’s shoes. Therefore, they are identical.

The contested furs [clothing]; knitwear [clothing]; outerclothing; suits are clothing in general and are consequently at least similar to the opponent’s shirts. They have the same nature – because they are various items of clothing – and purpose – because they give some protection against the elements. Moreover, their distribution channels, sales outlets, and manufacturers are the same, and they target the same public.

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 at least similar are directed at the public at large. The degree of attention is considered to be average.

c) The signs

UGG	TULEUGG
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).

Both signs are word marks, coinciding in the string of letters ‘UGG’, which has no meaning for the relevant public and is, therefore, distinctive to an average degree. Contrary to the opponent’s argument, although ‘UGG’ is meaningless, this does not give it a higher degree of inherent distinctiveness. A higher degree of distinctiveness can only be achieved through use.

In the contested sign, the string of letters ‘UGG’ is positioned at the end of the word, following the first four letters ‘TULE***’. Although the word ‘tule’ has the following meaning in English ‘a type of bulrush (Scirpus acutus) found in Western America, esp California, in marshes and beside lakes and ponds’ (information extracted from Collins Dictionary on 14/01/2021 at https://www.collinsdictionary.com/dictionary/english/tule), it is rarely used and then only in the United States of America. It is very unlikely that the public in the relevant territory, even those who speak English, would recognise the abovementioned meaning of ‘TULE’, especially in relation to goods that are not related. ‘TULE’ also means ‘come’ in Estonian and Finish (information extracted from bab.la dictionary on 14/01/2021 at https://en.bab.la/dictionary/finnish-english/tule, and from Google Translate at https://www.google.com/search?client=firefox-b-e&q=google+translate), which has no relation to any characteristics of the relevant goods. Therefore, whether or not it is understood, the component ‘TULE’ is considered distinctive. Furthermore, as the ending ‘GG’ is not found in these languages, the relevant public in Estonia and Finland will instead see it as a fanciful word, which might only allude to the meaning ‘come’.

Therefore, the majority of the relevant public will not dissect the mark into ‘TULE’ and ‘UGG’. The relevant public normally perceives a mark as a whole and does not proceed to analyse its various details. Furthermore, when perceiving a word sign, the relevant public will only break it down into elements which, for them, suggest a specific meaning. However, in this case, as ‘TULE’ has no meaning, except for an insignificant part of the public (English speakers), there is no reason for the relevant public to separate ‘TULE’ and not continue reading it as one word together with ‘UGG’. This is the case for the public in Estonia and Finland. There is also no reason to separate ‘UGG’ from ‘TULEUGG’ as it does not stand out by itself.

Visually, the signs coincide in the string of letters ‘UGG’, which is the entire earlier sign and the last three letters of the contested sign, following ‘TULE’. The signs differ in the string of letters ‘TULE’, which is at the beginning of the contested sign. As consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, the initial part is the one that first catches the attention of the reader. As there are no other visual differences between the signs, they are considered to be visually similar to a low degree at most.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the string of letters ‘UGG’, which is the entire earlier sign and the last three letters of the contested sign ‘TULEUGG’. However, as ‘UGG’ will not be perceived as an independent element in the contested sign, the sign will be pronounced as one word. Therefore, part of the public, such as the English- and German-speaking public will read the letters ‘*/EU/*’ not as two separate vowels but as one compound with the sound of /oi/ .

As it will be read as one word, even though ‘UGG’ is contained in the contested sign, it will be pronounced differently (as stated above), because it will be almost ‘absorbed’ by the beginning of the word (‘TULE’). Consequently, the signs are aurally similar to a very low degree, mainly due to their last letters.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Although for part of the public (Estonian and Finnish) the contested sign’s component ‘TULE’ has a meaning, the other sign has no meaning in that territory, and it will be considered a fanciful word. Since one of the signs will not be associated with any meaning, 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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with all the goods for which it is registered, specifically footwear, namely, boots, slippers, shoes and clogs, shirts and caps. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent must prove enhanced distinctiveness of the word mark ‘UGG’ for footwear, namely, boots, slippers, shoes and clogs, shirts and caps before the date of filing of the contested sign, which was filed on 25/11/2019 in the European Union.

The opponent submitted the following evidence.

 Annex 1: printout, dated 29/07/2020, from the website www.ugg.com/eu with delivery information and prices in euros. The sign ‘UGG’ is visible. However, from the printout it is not clear which goods might be shipped.

 Annex 2: statutory declaration of the Assistant Secretary of the opponent, dated 30/06/2020, stating that the ‘UGG’ sign has been in continuous commercial use since 1978. It furthermore states that from 1990 to 2005, the opponent produced annual catalogues that were provided to retailers and customers. They were discontinued after 2005 and the current lines of the opponent’s products are published on their website. The statement includes annual worldwide sales figures for ‘UGG’ branded products between 2005 and 2019. In the EU, the UGG trade mark has been used since 2003 for footwear and other related goods. In addition, the statement mentions that the ‘UGG’ brand has received numerous awards from several leading publications and firms, attaching some examples and specific statements as exhibits.

o E1: Wayback Machine printouts from www.uggaustralia.com from various months and years between 2000 and 2016 showing the ‘UGG’ sign on footwear.

o E2: screenshots of the opponent’s websites www.uggaustralia.com and www.ugg.com dated April 2016, in which the sign ‘UGG’ and the footwear products are visible.

o E3: copy of the last printed catalogue dated 2005 in which the sign ‘UGG’ and footwear products are visible. The prices are in USD.

o statement in the statutory declaration: the opponent has over 350 trade mark registrations worldwide for the ‘UGG’ sign.

o statement in the statutory declaration: table of the annual worldwide sales figures for ‘UGG’ branded products. However, which products are included is not specified:

.

o E4: screenshot of the Wayback Machine, dated 23/03/2010, in which the opponent’s online retail store was available to customers in multiple countries in the EU.

o statement in the statutory declaration: since 2012, the opponent has had annual sales worth over USD 100 million in the EU for ‘UGG’ products (although which products is not specified).

o E5: copy of publications reporting on a list of awards including, but not limited to: ‘Product of the year’, Time Magazine for 2004; 2011 The Plus Award, Company of the Year and Brand of the Year and Boots by Footwear Plus. These are in English and seem to refer predominantly to the US market.

o E6-8: copy of The Plus Awards: Boots and Launch of the Year (UGG Men’s) by Footwear Plus for the years 2012, 2014 and 2015.

o E9: copy of media coverage of UGG footwear with film stars, most of them dated 2003, from www.people.com and a US Weekly article.

o E10: representative sample of television and film exposure including: 2004, Sex and the City episode; 2004, Raising Helen; printout of Oprah’s Favorite Things.

o E11-12: copy of publications with worldwide circulation such as Vogue (2003, 2005, 2015), InStyle (2008), UK Elle (2007), German Elle (2008), UK Glamour (2009, 2015).

o E13: printouts of social media platforms including Facebook with 3.1 million followers, Twitter with 108 000 followers, YouTube with 9 035 subscribers, Pinterest with 44 917 followers between 2009 and the present.

o E14-23: copy of decisions worldwide stating that the ‘UGG’ sign is a famous mark, a well-known mark, or a mark with a high reputation in several territories:

 China 2011, with English translation;

 Netherlands 2008, with English translation;

 Turkey 2011, with English translation;

 Latvia 2017, with English translation;

 EUIPO, Invalidity (28/02/2013, ICD 6 942);

 EUIPO, Opposition (31/01/2013, B 1 964 595);

o E23: copy of a Default Judgement Order dated 15/03/2018. The opponent filed 82 lawsuits in the United States of America against over 57 000 websites selling counterfeit ‘UGG’ footwear.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use or reputation.

Both enhanced distinctiveness and reputation require recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including whether or not it contains an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

The documents submitted by the opponent indicate certain use of the earlier marks in the European Union.

However, for establishing that an earlier mark has acquired an enhanced distinctive character or reputation, not only has use of the mark to be shown, but a certain threshold, in terms of the relevant public’s knowledge of the mark, must also be reached.

Despite being voluminous, the evidence does not give any objective indication of the degree of recognition of the trade mark by the relevant public in the European Union.

The evidence proving use of the sign in the EU is based on website printouts, including the Wayback Machine (Annex 1 and E1, E2, E4), press coverage (E5, E11, E12), media coverage (E9 and E10) and printouts of social media (E13). These do not demonstrate the degree of recognition by the relevant public of the earlier mark. At most, they show that the public has encountered the sign through some advertisements. However, it is important to note that most of this evidence is dated 2003-2005 with a few around 2015-2016 (E6-8, E11-12, E13 and the decision from Latvia from the year 2017). Consequently, most of the evidence submitted is related to information 10 years before the application date of the contested mark. The few pieces of evidence that are dated within the last five years are mostly advertisements in a few publications, albeit important ones such as Vogue and UK Glamour. However, very limited evidence was submitted. The screenshots of the opponent’s presence on social media and its own website have little relevance as regards reputation in the EU as they refer to worldwide numbers and not specifically to the European Union.

Furthermore, some of evidence only relates to the US market, such as the product catalogue (E3, in which the prices appear in USD), some of the publications (such as The Plus Award or Footwear Plus: E5-9), and the copy of the Default judgement order from the US (E23), dated 15/03/2018.

As far as the statutory declaration (Annex 2) is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Therefore, it is necessary to assess the remaining evidence to see whether the contents of the declaration are supported by the other items of evidence.

The statements included in the statutory declaration (Annex 2) regarding the worldwide and European sales numbers were not corroborated by third party information such as invoices or market shares. Consequently, their probative value is rather restricted.

Based on the advertisements submitted, the mark seems to have been widely promoted in the early 2000s until 2010, but then its presence on the market became limited.

With respect to the prior decisions submitted (E14-23), some of those issued within the relevant territory, namely the Netherlands, Latvia and the European Union, are older decisions, dating from 2008 and 2013. Although the national decisions are, in principle, admissible as evidence, and may have evidentiary value, especially if they originate from a Member State, the opponent failed to submit sufficient information, in particular about the evidence on which the judgement/decisions were based, as well as on the factual and legal background of the decisions. There may be differences between the substantive and procedural conditions applicable in national proceedings and those applied in opposition proceedings before the Office. Firstly, there may be differences as to how the requirement of reputation is defined or interpreted. Secondly, the weight the Office gives to the evidence is not necessarily the same as the weight given to it in national proceedings. Therefore, the quotations from judgments and decisions provided by the opponent cannot be automatically transferred to the case at hand. Moreover, the cases and evidence refer to a different time period.

As regards the EUIPO decisions, the Office notes that even though its previous decisions are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. The invalidity and cancellation decisions submitted by the opponent were decided in 2013, six years before the present opposition, in which case the dates of the evidence would have been weighed differently based on the facts at hand, because a different time period is relevant. Consequently, the outcome of these previous cases cannot be relevant to the present proceedings, which will be based on the evidence and facts submitted hereto.

In conclusion, from the evidence submitted, it is not possible to evaluate the degree of recognition of the mark amongst the relevant public around the year 2019. The articles from 2000-2010 are dated approximately nine years before the application of the contested mark. No evidence was provided for the year 2019 or the relevant period before that. The evidence is rather old, and reputation is something that changes, particularly in the fashion industry. Consequently, without any strong evidence related to the last ten years, it is very difficult to establish that the mark still enjoys the claimed reputation. Therefore, these materials do not contain sufficient proof of a significant intensity and a broad geographical extent of use of the earlier mark, and cannot justify a finding that the earlier trade mark has reached a certain threshold of knowledge by a significant part of the relevant public. Similarly, the social media platforms and the official websites of the opponent are not conclusive indications as to the degree of awareness of the opponent´s mark within the relevant territory for the relevant goods.

In summary, the evidence submitted does not demonstrate that the earlier mark was widely known and recognised by the public in the relevant territory during the relevant time before 2019. Neither does it contain information on the proportion of the relevant section of the public which, because of the mark ‘UGG’, identifies the relevant goods as originating from a particular undertaking.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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

The goods are partly identical and partly at least similar. The degree of attention is average and the earlier mark is inherently distinctive to a normal degree.

The signs are visually similar to a low degree at most and aurally similar to a very low degree. Moreover, as the signs have no meaning for the majority of the relevant public, the conceptual aspect will not affect the comparison. For the limited part of the public that might perceive a meaning for ‘TULE’, the signs are conceptually not similar. If the word ‘TULE’ is understood, it is still distinctive for the relevant goods. Moreover, it is positioned at the beginning of the contested sign. Consequently, not even the relevant public in Estonia and Finland will proceed to dissect the contested sign and will rather see it as a fanciful word (although it might allude to the meaning ‘come’). Therefore, even under these premises, the Opposition Division does not consider that there is any likelihood of confusion between the signs.

Given that the earlier sign has a normal degree of distinctiveness, because the opponent has not proved enhanced distinctiveness based on use or reputation, the general consumer will not separate ‘UGG’ from ‘TULEUGG’, but will see the latter as a fanciful word. Moreover, there are no other visual differences which would lead the relevant public to dissect this word. Consequently, although the signs coincide in the component ‘UGG’, there is no likelihood of confusion as this is hardly perceptible in the contested trade mark and because of the additional distinctive component at the beginning of the sign, namely ‘TULE***’.

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). Moreover, although the choice of items of clothing is generally made visually and the visual aspect plays a greater role in the global assessment, based on the distinctive component at the beginning of the contested sign (‘TULE’) and the normal degree of distinctiveness of ‘UGG’ (which will not stand out from the rest of the letters), the signs are visually similar to at most a low degree, which will not lead the relevant public to a likelihood of confusion.

Considering all the above, even for identical and similar goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition based on Article 8(1)(b) EUTMR must be rejected.

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 above mentioned 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 mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined 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.

Reference is made, therefore, to the findings set out under Article 8(1)(b) EUTMR, which apply mutatis mutandis to the assessment of the reputation of the earlier mark. In view of those considerations, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier mark has acquired a reputation for the purposes of Article 8(5) EUTMR either.

b) Conclusion

It is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on Article 8(5) EUTMR.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Renata COTTRELL

Astrid Victoria WÄBER

Claudia MARTINI

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.