OPPOSITION Nо B 3 116 626

Huber Holding AG, Hauptstr. 17, 6840 Götzis, Austria (opponent), represented by Thurnher Wittwer Pfefferkorn & Partner Rechtsanwälte GmbH, Messestraße 11, 6850 Dornbirn, Austria (professional representative)

a g a i n s t

Texstar Produktions - und Beteiligungs GmbH, Aufeldgasse 66, 3400 Klosterneuburg, Austria (applicant), represented by Barger Prekop S.R.O., Mostová 2, 85101 Bratislava, Slovakia (professional representative).

On 06/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 116 626 is upheld for all the contested goods, namely:

Class 25: Underwear; T-shirts; socks; stockings; leggings [trousers]; clothing containing slimming substances; clothing; tracksuits; sports bras; sports garments; belts made from imitation leather; belts made of leather; belts made out of cloth; belts of textile; waist belts; suspender belts; headgear; gymwear; tank tops; jackets; pullovers; headbands; sweatbands.

2. European Union trade mark application No 18 165 220 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

On 21/04/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 165 220, ‘THE SKINNY WONDER’ (word mark), namely against all the goods in Class 25. The opposition is based on international registration No 682 040, ‘SKINY’ (word mark), designating, inter alia, Germany. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary Remark

On 15/04/2021, after expiry of the time limit for substantiating the earlier mark, and after the applicant’s submissions, the opponent submitted arguments and evidence.

All facts and evidence on which the opponent bases its opposition have to be submitted within the time limit for substantiation established in Article 7(1) EUTMDR. Any fact or evidence submitted after the time limit for substantiation is, therefore, late.

Nevertheless, if the opponent submits facts or evidence to substantiate the opposition after the time limit for substantiation, the Office may exercise its discretionary power and take into account these facts or evidence, pursuant to Article 95(2) EUTMR, subject to the conditions of Article 8(5) EUTMDR.

In that context, it must first be assessed whether the Office can exercise any discretionary power and, second, if so, how to exercise it (i.e whether to admit or reject the late facts or evidence).

According to Article 8(5) EUTMDR, first sentence, the Office may exercise its discretionary power if the late facts or evidence supplement relevant facts or evidence submitted by the opponent in due time (initial facts or evidence).

Therefore, no discretionary power is available if the late facts or evidence relate to an earlier right or ground of opposition in relation to which no initial evidence was filed within the time limit for substantiation.

As explained above, the opponent only submitted observations (in the wrong language) within the relevant time limit. No initial evidence was submitted within the time limit. Therefore, the Office cannot exercise any discretionary power with regard to the evidence submitted late by the opponent to prove its claim that the earlier mark enjoyed enhanced distinctiveness and reputation. The evidence submitted on 15/04/2021, after expiry of the time limit, cannot be taken into account.

SUBSTANTIATION

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

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

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

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered (Article 7(2)(a)(ii) EUTMDR). Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opponent may provide such evidence by making reference to that source (Article 7(3) EUTMDR).

As the opponent had indicated that it accepted online substantiation, the Opposition Division accessed the relevant official database of the World Intellectual Property Organisation via TMview. In this way it established that international trade mark registration No 682 040 had been duly substantiated, at least in respect of Germany . Therefore, even though (as the applicant pointed out) the opponent did not submit any further documents to substantiate international registration No 682 040 within the relevant deadline, the examination of the opposition can, and will, proceed in relation to international trade mark registration No 682 040 in respect of Germany. Only if necessary will the examination of the opposition proceed in relation to international trade mark registration No 682 040 in respect of other EU Member States.

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: Clothing, including underwear and stockings.

The contested goods are the following:

Class 25: Underwear; T-shirts; socks; stockings; leggings [trousers]; clothing containing slimming substances; clothing; tracksuits; sports bras; sports garments; belts made from imitation leather; belts made of leather; belts made out of cloth; belts of textile; waist belts; suspender belts; headgear; gymwear; tank tops; jackets; pullovers; headbands; sweatbands.

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

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

Underwear; stockings; clothing are identically contained in both lists of goods.

The contested T-shirts; socks; leggings [trousers]; clothing containing slimming substances; tracksuits; sports bras; sports garments; belts made from imitation leather; belts made of leather; belts made out of cloth; belts of textile; waist belts; suspender belts; gymwear; tank tops; jackets; pullovers; sweatbands are included in the broad category of the opponent’s clothing, including underwear and stockings. Therefore, they are identical.

Contrary to the applicant’s argument that headgear is ‘not similar or similar to a very low degree’ to clothing, the contested headgear, as well as the contested headbands, have an identical or very similar nature to the opponent’s clothing, including underwear and stockings. They also serve the same purpose – particularly in the case of clothing designed to give protection against the elements – and target the same public. Furthermore, headgear and headbands are not only seen as something worn on the head to protect it against the weather, but also as a fashion article, possibly matching an outfit. for this reason they are sometimes chosen to complement clothing (including sportswear). The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Moreover, many manufacturers and designers will design and produce both clothing and headgear and headbands. Taking all these factors into account, the contested headgear and headbands and the opponent’s clothing, including underwear and stockings are considered similar.

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 are directed at the public at large.

Contrary to the applicant’s argument that there is a ‘higher degree of attention and inclination to exercise brand loyalty’, and in line with consistent case-law (inter alia, 25/05/2012, T‑233/10, Jumpman, EU:T:2012:267, § 22; 08/03/2013, T‑498/10, David Mayer, EU:T:2013:117, § 53; 18/06/2013, T‑338/12, K9 Products, EU:T:2013:327, § 18), the degree of attention for the goods in question (clothing and headgear) is average.

c) Distinctiveness of the earlier mark and comparison of the signs

SKINY	THE SKINNY WONDER
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).

In addition, the distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for the reasons explained above, the evidence filed by the opponent to prove this claim cannot be taken into account (as it was filed late). Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se.

Both signs are word marks, depicted in upper case. The earlier mark is the five-letter verbal element ‘SKINY’. This has no meaning in German, and therefore has a normal degree of distinctiveness for the relevant public. The contested sign comprises a verbal element containing three words, ‘THE SKINNY WONDER’. ‘THE’ is merely a definite article, which is ancillary to the words that follow (‘SKINNY WONDER’), and has less distinctiveness (23/03/2017, T‑216/16, Le Val (fig.) / VIÑA DEL VAL et al., EU:T:2017:201, § 46-47; 28/09/2016, T‑593/15, THE ART OF RAW / * art (fig.) et al., EU:T:2016:572, § 28). The relevant public will perceive ‘WONDER’ as a laudatory reference to ‘a feeling of amazement and admiration, caused by something beautiful, remarkable, or unfamiliar’, as it has a close equivalent in German (wunder) with the same meaning, (information extracted from Collins Dictionary on 27/07/2021 at https://www.collinsdictionary.com/dictionary/english-german/wonder). It is therefore distinctive to a below-average degree at most. Part of the public may perceive that, given its position between a definite article (‘THE’) and a noun (‘WONDER’), ‘SKINNY’ is an adjective. However, it will not be associated with any meaning, because it is not a basic English word that can be presumed to be understood in Germany, and it has no close equivalents in German. It is therefore distinctive to an average degree.

Visually and aurally, the second word of the contested sign (‘SKINNY’) coincides in all five of the letters of the earlier mark (and in their sound) – with the identical string of letters (‘SKIN’) in their beginnings, and the letter ‘Y’ at their ends. This word and the contested sign differ, visually, in the repetition of the letter ‘N’, which is placed towards the middle of the contested sign’s second word, and not present in the earlier mark. This repetition does not result in any aural difference for the relevant public. The signs further differ in the first and third word of the contested sign, ‘THE’ and ‘WONDER’ respectively (and their sound), which have no counterpart in the earlier mark.

As the applicant pointed out, the presence of the contested sign’s additional words causes it to be considerably longer and to ‘have a different number of words, and thus syllables’. However, it is important to note that the earlier mark is almost identically reproduced in the contested sign as a readily identifiable (and its most distinctive) element. This must be given due weight in the comparison.

Therefore, the signs are visually and aurally similar to (at least) a below-average degree.

Conceptually, although the relevant public will perceive the meaning of the contested sign’s words ‘THE’ and ‘WONDER’ as explained above, the earlier mark has no meaning for the relevant public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, the effect of the conceptual difference on the consumers’ perception of the signs is somewhat reduced, because the differentiating concept conveyed by the word ‘WONDER’ (the definite article ‘THE’ will not convey a concept) is laudatory, and therefore has a reduced degree of distinctiveness.

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

d) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The interdependence principle is of crucial importance for the assessment of likelihood of confusion in this case, because the signs are not conceptually similar. However, they are visually and aurally at least similar to a below-average degree, and the goods were found to be partly identical and partly similar. The earlier mark enjoys an average degree of inherent distinctiveness, which affords it a normal scope of protection. Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The differences identified between the signs are insufficient to outweigh the similarity resulting from the quasi-identity of the element ‘SKIN(N)Y’, which plays an independent role in the contested sign as its most distinctive element, and is the entirety of the earlier mark. Moreover, although the signs are not conceptually similar for the relevant public, the impact of the differentiating concept of the contested sign’s additional word ‘WONDER’, is reduced.

Therefore, when encountering the trade marks in question, the average consumer may believe that the goods found to be identical or similar come from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public under analysis. As international trade mark registration No 682 040 in respect of Germany leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine international trade mark registration No 682 040 in respect of other EU Member States.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 682 040 designating Germany. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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

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

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

The Opposition Division

Richard BIANCHI

Christophe DU JARDIN

Benoit VLEMINCQ

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.