OPPOSITION Nо B 3 113 775

Zalando SE, Valeska-Gert-Str. 5, 10243 Berlin, Germany (opponent), represented by Freshfields Bruckhaus Deringer Rechtsanwälte Steuerberater PartG mbB, Feldmühleplatz 1, 40545 Düsseldorf, Germany (professional representative)

a g a i n s t

Weidong Li, Room 1507, Building 5, Kaixuanjinniufang, Jianggan District, 310000 Hangzhou, People’s Republic of China (applicant), represented by Jiongjie Ma, calle Guzman el Bueno 133 9D Edificio Britania, 28003 Madrid, Spain (professional representative).

On 29/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 113 775 is upheld for all the contested goods.

2. European Union trade mark application No 18 177 610 is rejected in its entirety.

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

REASONS

On 10/03/2020, the opponent filed an opposition against all the goods (Class 25) of European Union trade mark application No 18 177 610 for the word mark ‘ZANDO’. The opposition is based on, inter alia, European Union trade mark registration No 9 376 609 for the word mark ‘Zalando’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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 has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR. Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 376 609.

a) The goods and services

The goods and services on which the opposition is based, after a limitation of the scope of the opposition by the opponent, are the following:

Class 25: Clothing, footwear, headgear.

Class 35: Wholesale and retail services, in particular mail order services (including online), in relation to clothing, footwear.

The contested goods are the following:

Class 25: Sweaters; turtleneck sweaters; shirts; short-sleeve shirts; trousers; outerclothing; coats; skirts; clothing; caps [headwear]; hosiery; ankle socks; gloves [clothing]; scarfs; leather belts [clothing].

For reasons of procedural economy, the goods and services will be compared not only in relation of establishing identity or highest degree of similarity. The contested goods will also be compared also with the earlier mark’s services in Class 35, as the opponent claimed reputation and enhanced distinctiveness thereof.

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.

The contested sweaters; turtleneck sweaters; shirts; short-sleeve shirts; trousers; outerclothing; coats; skirts; hosiery; ankle socks; gloves [clothing]; scarfs; leather belts [clothing] are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested caps [headwear] are included in the broad category of the opponent’s headgear. Therefore, they are identical.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The goods covered by the retail services and the specific goods covered by the contested mark have to be identical in order to find an average degree of similarity between the retail services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

Therefore, the contested sweaters; turtleneck sweaters; shirts; short-sleeve shirts; trousers; outerclothing; coats; skirts; clothing; hosiery; ankle socks; gloves [clothing]; scarfs; leather belts [clothing] are similar to an average degree to the opponent’s retail services, in particular mail order services (including online), in relation to clothing. This is because these contested goods are items of clothing and as such are included in the broad category of the goods that are the subject of the opponent’s services.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

Therefore, the contested caps [headwear] are similar to a low degree to the opponent’s retail services, in particular mail order services (including online), in relation to clothing, since the goods that are the subject of the opponent’s services are similar to these contested goods. This is because they have the same purpose and usually coincide in producer, relevant public and distribution channels.

The applicant claims that the distribution channels of the goods and services at issue are different since the applicant’s sales are made through promotion on the platform of a specific online retailer, whereas the opponent distributes its products online by direct sale through its website. In this regard, how the goods and services covered by the marks are actually marketed has, as a matter of principle, no impact on the assessment of the likelihood of confusion because this may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58). Therefore, this argument must be set aside.

b) Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is average.

c) The signs

Zalando	ZANDO
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 have no meaning for the relevant public and are, therefore, distinctive.

Since both marks are word marks, it is the word as such that is protected. Therefore, it is irrelevant, for the purposes of the comparison of word marks, if one of them is written in title-case letters and the other in upper-case letters.

Visually and aurally, the signs coincide in five letters/sounds, located in the same positions, ‘ZA(**)NDO’. However, they differ in the earlier mark’s additional middle letters/sounds, ‘LA’, the ‘A’ being a duplicate of the coinciding letter/sound ‘A’, placed before the differing part.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Furthermore, although the signs are composed of one word each, they differ in their length; the earlier mark is seven letters, whereas the contested sign is five letters.

Aurally, the signs have different rhythms and intonations.

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

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.

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 and enjoys a high degree of distinctiveness as a result of its long standing and intensive use in the European Union and Germany in connection with the goods and services on which the opposition is based, namely those listed in section a) of this decision. 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 submitted, in particular, the following evidence.

 Exhibits 1-2: extracts from the opponent’s financial reports for the fourth quarter of 2019 (exhibit 1) and for the second quarter of 2020 (exhibit 2), which contain comparative tables for the figures of previous periods (the fourth quarter of 2018 in exhibit 1 and the financial years for 2014 to 2019 in exhibit 2), such as revenue, active customers, number of orders and site visits. For example, in 2019 the annual revenue exceeded EUR 6.482 million, the site visits were more than 4.178 million, the active customers were 31 million and the number of orders was almost 145 million.

 Exhibit 4: a public opinion survey on the reputation of the earlier mark, conducted by GfK SE in Germany in January 2016, which shows that 87.1 % of all respondents and 98,3 % of the smaller group of consumers, who have bought or intend to buy goods online, had heard or seen/read the earlier mark in connection with online retailing of clothing and shoes. In addition, a significant part of those questioned identified the opponent as the origin of these services. The survey report contains the questions and how they were answered, the methodology, information about the relevant consumers (1 044 respondents aged 14 and above) and the analysis of the results.

 Screenshots from the opponent’s website showing that the opponent offers for sale clothing under the brand ‘Zalando Essentials’.

 Exhibits 7-15: press articles, dated March 2018 to August 2020 from various media, such as Forbes, The Financial Times, Reuters, Harper’s Bazaar and Handelsblatt. The earlier mark is described as ‘Europe’s leading online fashion platform serving 17 European markets’ and some of the articles mention figures, such as annual revenue, active customers and site visits, which correspond to the figures provided in the financial reports in exhibits 1-2.

 Exhibit 16: a ranking of the ‘50 fastest growing retailers’, published by the statistics online portal Statista, based on Deloitte’s Global Powers of Retailing 2020 report, which lists the opponent in 8th place. The ranking is based on the highest compound annual growth rates in revenue from 2013 to 2018.

The evidence submitted, assessed in its entirety, shows that the earlier trade mark has been subject to a long-standing and intensive use and is generally known at least in Germany, where it enjoys a consolidated position as one of the leading brands in the sector of retail services, in particular mail order services (including online), in relation to clothing, footwear.

The reputation in Germany is supported by the public opinion survey of the German independent institute GfK SE on the reputation in that territory of the sign ‘Zalando’ in connection with online retailing of clothing and shoes (exhibit 4). In addition, the ranking placing ‘Zalando’ as one of the world’s ten fastest growing retailers (exhibit 16), the various references in the press (exhibits 7-15) and the very high level of revenue, clients, orders and site visits (exhibits 1-2 and some of the press articles in exhibits 7-15), all unequivocally show that the earlier mark has acquired recognition among the potential or actual purchasers of retail services, in particular mail order services (including online), in relation to clothing, footwear.

Although the annual reports originate from the opponent itself, they contain objectively verifiable information and data. In the case of large companies such as the opponent, these are usually compiled or revised by independent auditors. Therefore, the probative value of these annual reports is substantially enhanced. Moreover, as stated above, some of the press articles contain financial figures, which correspond to the figures contained in the annual reports.

Although the ranking refers to ‘Zalando’ as a company name, an overall assessment of the evidence shows that the opponent is recognised in several external sources as the provider of retail services, in particular mail order services (including online), in relation to clothing, footwear displaying the same sign. This is sufficient to conclude that the public has been widely exposed to the ‘Zalando’ brand in a trade mark sense in relation to these services.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a high degree of distinctiveness, at least in Germany, which constitutes a significant part of the European Union, in relation to retail services, in particular mail order services (including online), in relation to clothing, footwear.

However, the evidence does not show enhanced distinctiveness of the earlier trade mark for the goods in Class 25 for which it was registered. Although the opponent submitted screenshots from its website, which show that the earlier mark is used in relation to clothing, there is no indication of the extent of such use, or the recognition of the earlier mark by the relevant public in relation to the goods in Class 25 covered by the earlier mark. Consequently, the assessment of the distinctiveness of the earlier mark in relation to the relevant goods in Class 25 will remain 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 in relation to the goods in Class 25 covered by the earlier mark.

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.

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).

When compared to the opponent’s goods in Class 25, the contested goods are identical, whereas when compared to the opponent’s services in Class 35, the contested goods are similar to varying degrees. Regardless of this, the relevant goods and/or services target the public at large, whose degree of attention is average.

The signs are visually and aurally similar to a below-average degree, since they share five letters in the same sequence, located at the beginnings and ending of the signs. The difference between the signs results from the additional letters ‘LA’ in the middle of the earlier mark, which make the earlier mark visually and aurally longer than the contested sign. Neither of the signs has a meaning to help the relevant public differentiate them more easily.

The distinctiveness of the earlier mark is enhanced in relation to the services in Class 35 and normal in relation to the goods in Class 25 covered by the earlier mark.

Despite the identity found between the contested goods and the opponent’s goods in Class 25, there is no likelihood of confusion, since the distinctiveness of the earlier mark is normal in relation to these goods and the coincidences in the marks are not sufficient to conclude that the relevant consumer would confuse the marks and consider that the identical goods displaying the marks were from the same undertaking or economically linked undertakings.

However, due to the enhanced distinctiveness of the earlier mark in relation to retail services, in particular mail order services (including online), in relation to clothing, footwear in Class 35, the relevant public will confuse the signs as the contested goods are similar to these services. As stated above, according to case-law, 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. Therefore, despite the below-average degree of similarity between the signs, due to the enhanced distinctive character of the earlier mark, the relevant public will not be able to safely distinguish the signs from one another on the basis of the differences in the signs described above, even in relation to those goods similar to only a low degree.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 376 609. It follows that the contested trade mark must be rejected for all the contested goods.

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

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

COSTS

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

Since the applicant is the losing party, they 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

Claudia MARTINI

Lidiya NIKOLOVA

Beatrix STELTER

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.