OPPOSITION No B 1 801 359

Grupp Internacional, S.A., Elche Parque Ind., C/ Arquímedes, 1-3, 03203 Elche (Alicante), Spain (opponent), represented by Ibidem Abogados Estrategas, S.L.P., Juan de la Cierva, 43, Elche Parque Empresarial, Planta 2, local 1.1, 03203 Elche (Alicante), Spain (professional representative)

a g a i n s t

Panama Jack International, Inc., 230 Ernestine Street, Orlando, Florida 32801, United States of America (applicant), represented by Elzaburu, S.L.P., Miguel Angel 21, 28010 Madrid, Spain (professional representative)

On 29/01/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 801 359 is upheld for all the contested goods.

2. European Union trade mark application No 9 420 308 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

Preliminary remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 9 420 308 for the word mark ‘PANAMA JACK’. The opposition is based on the following earlier rights:

• Spanish trade mark registration No 2 952 947, ‘PANAMA JACK: BIEN HECHOS EN ESPAÑA’ (word mark), for goods in Class 25

(earlier mark 7)

• Spanish registered commercial name No 279 273, ‘PANAMA JACK’, for goods in Classes 18 and 25

(earlier right 8)

The opponent invoked Article 8(1)(b) and 8(5) EUTMR for earlier marks 2, 3, 4 and 5, Article 8(1)(b) EUTMR only for earlier marks 1, 6 and 7 and Article 8(4) EUTMR for earlier right 8.

On 31/08/2016, the Opposition Division rendered a decision in which the opposition was partially upheld, namely for all the contested goods in Class 18 and based on earlier mark (1). The opposition was rejected for the earlier marks (2), (3), (4), (5), (6) and (7), since they were not substantiated. It was also rejected as unfounded based on earlier right (8), as the opponent did not submit any information on the possible content of the rights invoked under Article 8(4) EUTMR and the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the law in the Member States mentioned by the opponent, namely Spain.

The decision was appealed and the Board of Appeal decided in case R 1975/2016‑2 on 11/05/2017. The Board’s decision partially annulled the decision and remitted the case to the Opposition Division for further prosecution. The Board dismissed the appeal insofar as it concerned the opposition raised on Article 8(1)(b) EUTMR with respect to earlier mark (1). It annulled the contested decision for the remainder.

During the appeal proceedings, the opponent rectified the deficiencies identified under Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), by submitting the necessary documentary evidence, which establishes the existence, validity and scope of protection of earlier Spanish trade marks (2), (3), (4), (5), (6) and (7), and the Board sent back the case to the Opposition Division to examine the opposition based on these earlier rights, pursuant to Article 8(1)(b) and/or 8(5) EUTMR. The Opposition Division’s conclusion regarding Article 8(4) EUTMR, in accordance with which it rejected the opposition under this article based on earlier Spanish registered commercial name No 279 273, was not appealed and is, therefore, final.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now 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 publication 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, inter alia, the following earlier marks:

The contested application was published on 18/11/2010. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 18/11/2005 to 17/11/2010 inclusive.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Earlier marks 3 and 4

Class 25: Clothing for women, men and children, footwear (except orthopaedic), and headgear.

Earlier mark 5

Class 18: Leather and imitations of leather and articles of these materials not included in other classes, animal skins, bags, trunks and suitcases, umbrellas, parasols and walking sticks, whips, harness and saddlery.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 10/08/2012, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 15/10/2012 to submit evidence of use of the earlier trade marks. On 11/10/2012, within the time limit, the opponent informed the Office that the evidence submitted on 20/04/2012 to prove the reputation of the earlier marks should also be considered evidence of use.

The evidence to be taken into account is the following:

• Several extracts from Spanish publications such as Público, Diario AS, ABC, Barcelona Prestige, Barcelona Cruises, Cruceros & Destinos, Chausser, Cosmopolitan, Destinos, El País and La Gaceta, dated 2010, containing advertisements for ‘PANAMA JACK’, using the signs

, or , some of these advertisements displaying the mark on articles of footwear or on boxes or accessories for these goods.

• Product catalogues (in Spanish) for 2006, 2007, 2008, 2009 and 2010, displaying the ‘PANAMA JACK’ mark as , , , or on footwear articles or on boxes or accessories for these goods.

• Presentation brochure for the company Panama Jack, in Spanish and English, mentioning, inter alia, that the company is linked by tradition with the footwear industry (with more than 30 years’ experience in this sector), as well as that the company will be present at some exhibitions and fairs organised during 2006-2007.

• More than 100 invoices covering 2006-2010, issued by Panama Jack S.A. to several clients in Spain, all of them in Spanish without an English translation; the mark is depicted as , or at the top of the invoices.

• Several invoices covering 2006-2010, issued by different companies to Panama Jack S.A., all of them in Spanish without an English translation.

• Merchandising products such as hats, plush toys, neck chains, bracelets, shopping bags, bags to keep shoes in and cardboard boxes, depicting the mark ‘PANAMA JACK’ as: ,

.

• A letter from the Leading Brands of Spain Forum, to Veronica Carpena of Panama Jack, and extracts from the Leading Brands of Spain Forum bulletin (in Spanish and translated into English), mentioning, inter alia, the inclusion of Panama Jack in the Leading Brands of Spain Forum, and also that 876 pairs of shoes, valued at EUR 37 185, were sold under the mark at the Shanghai 2010 World Expo.

The invoices and extracts from publications show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

Part of the evidence of use is not in the language of the proceedings. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the nature of the relevant documents that have not been translated and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

All of the evidence is dated within the relevant period.

It should be noted that part of the evidence does not originate from the opponent itself but from another company, namely Panama Jack S.A.. According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States. The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225). Consequently, it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent. In addition, it can be observed that the companies are established at the same address.

To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by this other company was made with the opponent’s consent and thus is equivalent to use made by the opponent.

In assessing the extent of the use of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Moreover, the purpose of the requirement regarding proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 36-38, and the case-law cited therein). Use of the mark need not be quantitatively significant for it to be deemed genuine. The opponent is not requested and is not expected to file each and every invoice issued.

In the present case, the sample invoices submitted are dated throughout the relevant period and, therefore, show that the use was continuous, and the invoice numbers are not consecutive, which implies that other invoices were issued in between. Moreover, the invoices indicate non-negligible sales. They clearly refer to the opponent’s marks, and the catalogues provide information confirming that the products sold truly bear the opponent’s marks. In addition, many references are present both in the invoices and in the photos and catalogues.

Therefore, the documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Thus, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, demonstrate that the earlier signs were used in such a way as to establish a clear link between the goods and the opponent, as the documents demonstrate that these signs are used as marks under which the opponents goods are sold. The Opposition Division therefore considers that the evidence demonstrates use of the signs as trade marks.

According to Article 18(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered.

The purpose of Article 18(1), second subparagraph, point (a), ‘is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade’ (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

A finding that the distinctive character of the mark as registered has been altered, taking the above into account, requires an assessment of the distinctive and dominant character of the added and/or omitted elements, which must be carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative positions of the various elements within the arrangement of the trade mark (10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 31, and the case-law cited therein).

Bearing in mind the aforementioned considerations, to decide whether or not the evidence demonstrates use of the marks as registered, the Opposition Division must establish if the differences between the marks as used and as registered are negligible.

In the present case, the opponent’s marks are displayed in the evidence submitted as , , , or . The representation can be found only once in the documents.

The fact that earlier marks No 1 678 825 , No 1 552 318 and No 1 678 824 are reproduced in the evidence submitted inside a circle with a double border, sometimes in black and white or in grey, or that the triangle in earlier mark No 1 552 318 is missing, does not materially alter the distinctive character of the marks. The figure of a man with a hat is present in all these depictions.

In view of the above, the Opposition Division considers that the evidence shows use of the signs as registered within the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered, it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence shows genuine use of the trade marks for the following goods:

Spanish trade marks No 1 678 825 and No 1 552 318 (earlier marks 3 and 4)

Class 25: Footwear (except orthopaedic).

Spanish trade mark No 1 678 824 is registered for goods in Class 18. Although the footwear articles displayed in the evidence are made of leather, it cannot be concluded that the opponent has also demonstrated use of the earlier mark for goods in Class 18. Footwear is a specific product, classified in Class 25 of the Nice Classification; goods of leather classified in Class 18 cover other types of goods, such as bags, belts and saddlery. Therefore, the evidence does not show use of Spanish trade mark No 1 678 824.

Therefore, the Opposition Division will only consider the abovementioned goods in Class 25 in its further examination of the opposition.

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 earlier marks 3, for which genuine use has been shown, and 6, which is not subject to proof of use.

1. The goods and services

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

Spanish trade marks No 1 678 825 (earlier mark 3)

Class 25: Footwear (except orthopaedic).

Spanish trade mark No 2 913 484 (earlier mark 6)

Remark: It is considered that the opposition is based on all the goods and services of the mark, as has been confirmed by the Board of Appeal.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic dada carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus, shoes for protection against accidents, irradiation and fire.

Class 10: Devices and surgical, medial, dental and veterinary instruments, as well as members, eyes and artificial teeth; orthopaedic articles; material of suture, orthopedic footwear.

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

Class 16: Paper, cardboard and goods made from these materials not included in other classes, printed matter, bookbinding material, photographs, paper stationery, adhesives (glues) for stationery or household purposes, artists’ materials, paint brushes, typewriters and articles office requisites (except furniture) instructional and teaching material (except apparatus), plastic materials for packaging (not included in other classes), printed characters, printing blocks, publications.

Class 21: Utensils and containers for household and kitchen, combs and sponges, brushes, brush-making materials, cleaning materials, steel wool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware not included in other classes. Non-electrical shoe polish, brushes and shoe trees.

Class 26: Lace and embroidery, ribbons and laces, buttons, hooks and eyes, pins and needles, artificial flowers, ornament not of precious materials for shoes, hooks, buckles and eyelets for footwear.

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

Class 35: Advertising, business management, business administration, office work, services in retail trade as well as through global computer networks, (of) consumer electronics, stationery, clothing accessories, footwear and articles related to footwear, jewelry, watches, perfumes, cosmetics, gymnastic and sport services wholesale consumer electronics, stationery, clothing accessories, footwear and articles related to footwear, jewelry, watches, perfumes, cosmetics, articles for gymnastics and sports, broadcast services and advice on franchising (for assistance in running or managing a commercial enterprise).

Following the Board’s decision of 11/05/2017, the remaining contested goods are the following:

Class 3: Sun tan lotions, sun tan oils, sun block preparations, sun screens, non-medicated lip balms; non-medicated skin care creams, face creams and lotions for the face and body and not for use in connection with bleaching preparations.

Class 9: Sunglasses, sunglass cases, eyeglasses, eyeglass frames and eyeglass accessories, namely, cases, cords and nose pads; motion picture films and films for television featuring musical, fictional and non-fictional entertainment; downloadable motion picture films and films for television featuring musical, fictional and non-fictional entertainment; video discs, digital video discs, and multimedia software recorded on CD-ROM featuring musical, fictional and non-fictional entertainment.

Class 25: Clothing, footwear, headgear.

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 applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 3

Retail services in general are not similar to any goods that are capable of being sold by retail. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other.

However, retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/05/2015, T-715/13, Castello, EU:T:2015:256, §

33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

In the present case, the contested goods in Class 3 are sun tan lotions, sun tan oils, sun block preparations, sun screens, non-medicated lip balms; non-medicated skin care creams, face creams and lotions for the face and body and not for use in connection with bleaching preparations. The earlier mark 6 is notably registered for services in retail trade as well as through global computer networks, (of) cosmetics.

Cosmetics are, according to Article 2 of Regulation (EC) No 1223/2009 of the European Parliament and of the Council of 30 November 2009 on cosmetic products, ‘any substance or preparation intended to be placed in contact with the various external parts of the human body (epidermis, hair system, nails, lips and external genital organs) or with the teeth and the mucous membranes of the oral cavity with a view exclusively or mainly to cleaning them, perfuming them, changing their appearance and/or correcting body odours and/or protecting them or keeping them in good condition’.

Therefore, the scope of the category cosmetics is broad and encompasses the contested goods, which are thus considered identical.

As a result, the contested goods must be considered to be similar to a low degree to the abovementioned opponent’s services.

Contested goods in Class 9

The contested Sunglasses, eyeglasses are included in the broad category of the opponent’s optical apparatus and instruments of earlier mark 6. Therefore, they are identical.

Likewise, the contested video discs, digital video discs are considered identical, since they are included in the broad category of, or overlap with, the opponent’s recording discs of earlier mark 6.

The contested sunglass cases, eyeglass frames and eyeglass accessories, namely, cases, cords and nose pads are closely related to the opponent’s optical apparatus and instruments of earlier mark 6, which include spectacles. The goods under comparison coincide in their producers, distribution channels and relevant public. Furthermore, they are complementary. Therefore, they are similar.

The contested motion picture films and films for television featuring musical, fictional and non-fictional entertainment; downloadable motion picture films and films for television featuring musical, fictional and non-fictional entertainment; multimedia software recorded on CD-ROM featuring musical, fictional and non-fictional entertainment are all recorded content, which have several connections with the opponent’s printed matter in earlier mark 6. Notably, the latter includes various publications that accordingly might have the same purpose as the contested goods, namely entertainment. Moreover, these goods have the same relevant public, are in competition (the film and written version of a same work) and have a certain degree of complementarity because they can complete each other, as it is for example common for books to be sold together with a CD/DVD or a link to downloadable videos or films and vice versa. Therefore, the abovementioned goods are considered similar to a low degree.

Contested goods in Class 25

Footwear is identically contained in the list of earlier mark 3.

The contested clothing; headgear are similar to the opponent’s footwear of earlier mark 3. These goods serve the same purpose, since they are used to cover and protect various parts of the human body against the elements. They are also articles of fashion and are often found in the same retail outlets. Consumers, when seeking to purchase clothes or caps for example, will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce all of the aforementioned items.

2. 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, including to a low degree, are directed at the public at large.

The degree of attention is average.

3. The signs

ES No 1 678 825 (earlier mark 3) ES No 2 913 484 (earlier mark 6)	PANAMA JACK
Earlier trade marks	Contested sign

The relevant territory is Spain.

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 earlier marks are figurative marks, consisting of the figure of a man with a hat and a small collar depicted to the left of the word combination ‘Panama Jack’. Earlier mark 6 is black and white while earlier mark 3 is a coloured mark, the hat and the small collar of the man being green, while his face is yellow.

The contested mark is a word mark, ‘PANAMA JACK’.

The word ‘PANAMA’, which the marks have in common, will be perceived as the name of a country in Central America as well as the name of the canal connecting the Atlantic and Pacific oceans. Another meaning of this word is ‘cotton fabric with thick threads, very suitable for embroidery’ (information extracted from Diccionario de Real Academia Espanola on 18/08/2017 at http://dle.rae.es/?id=RdM22Zz). The word ‘JACK’, which the marks also have in common, will be understood by at least the majority of the public in the relevant territory as a male personal name. The figurative elements of the earlier marks will be perceived as a depiction of a man. These elements have no connection to the relevant goods and are distinctive to an average degree.

None of the marks has any element that could be considered clearly more dominant than other elements. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the relevant public will pay more attention to the verbal element of the earlier marks than to the figurative element.

Visually, the signs are similar to the extent that they coincide in the word combination ‘PANAMA JACK’. However, they differ in the figurative elements of the earlier marks, as well as in the colours of earlier Spanish trade mark registration No 1 678 825. Nevertheless, for the reasons outlined above, consumers will pay more attention to the verbal part ‘PANAMA JACK’ of the earlier marks.

Therefore, the signs are visually highly similar.

Aurally, the marks are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings owing to the word elements present in both signs, they are conceptually highly similar.

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

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, earlier mark 3 has been extensively used and enjoys a high reputation in Class 25 in Spain. 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’).

The opponent did not explicitly claim that earlier mark 6 is particularly distinctive by virtue of intensive use or reputation.

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

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

In the present case, the goods and services are partly identical, partly similar and partly similar to a low degree. The distinctiveness of the earlier marks is normal and the degree of attention is average.

The signs are visually and conceptually highly similar and even identical from a phonetic point of view. The contested sign ‘PANAMA JACK’ constitutes the entire verbal part of the earlier marks. The signs only differ in the figurative elements of the earlier marks.

From the wording of Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, the fact that the contested sign is entirely included in the earlier marks may lead the public to believe that the goods and services at issue derive, at the very least, from companies that are linked economically, in which case the likelihood of confusion must be held to be established (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 31, 32). Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Moreover, 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).

In addition, the Court has set out the essential principle that 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 the 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). Therefore, in the present case, the high degree of similarity and even identity (in the aural aspect) between the signs offsets the low degree of similarity for some goods.

In the light of all the above, the Opposition Division concludes that the strong coincidences between the signs have a decisive impact and are enough to outweigh their dissimilarities. There is a likelihood of confusion, including a likelihood of association, on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registrations No 1 678 825 and 2 913 484. Bearing in mind that the opposition has already been upheld for the contested goods in Class 18, it follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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 mark 3 due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier marks 3 and 6 lead to the success of the opposition and to the rejection of the contested trade mark for all the (remaining) goods against which the opposition was directed, there is no need to examine the other earlier rights 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. In that respect, it should be recalled that the Opposition Division’s conclusion regarding Article 8(4) EUTMR, in accordance with which it rejected the opposition under this article based on earlier Spanish registered commercial name No 279 273, was not appealed against and it is, therefore, final.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Boyana NAYDENOVA

Steve HAUSER

Frédérique SULPICE

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.