OPPOSITION DIVISION




OPPOSITION No B 1 929 937


Jeans Centre B.V., Van Hennaertweg 6, 2952 CA Alblasserdam, the Netherlands (opponent), represented by NLO Shieldmark B.V., Anna van Buerenplein 21A, New Babylon City Offices 2e étage, 2595DA Den Haag, the Netherlands (professional representative)


a g a i n s t


Benetton Holdings Ltd., 46 Micoud Street, Castries, St. Lucia, West Indies, Saint Lucia (applicant), represented by Swindell & Pearson Ltd, 48 Friar Gate, Derby DE1 1GY, United Kingdom (professional representative).


On 20/05/2016, the Opposition Division takes the following



DECISION:


1. Opposition No B 1 929 937 is partially upheld, namely for the following contested goods and services:


Class 18: Goods made of leather and imitation leather and not included in other classes, backpacks; shopping bags; sling bags; school bags; beach bags; satchels briefcases; lap top bags; pilot cases; handbags; pocket wallets; purses; clip top purses; change purses; evening bags; hand bags being tote bags; hand bags being shoulder bags; weekend bags; haversacks; articles of imitation leather not included in other Classes; key cases being leather ware; kit bags; gym bags; sports bags; duffle bags; rucksacks; school satchels; shopping bags; boot bags; credit card holders; hold-alls.


Class 25: Clothing; footwear; headgear; outer clothing; under clothing; woven clothing; knitwear being clothing; clothing of cotton, silk, linen, wool; clothing made from man made-fibres; clothing made from a combination of cotton, silk, linen, wool and man-made fibres; shirts; blouses; women’s clothes; girls clothes; shirts and blouses with wing collar; shirts and blouses with Eton collars; evening wear, namely shirts and blouses and dinner jackets; shirts and blouses with double cuffs; shirts and blouses with French cuffs; shirts and blouses with detachable collars; shirts and blouses without collars; long sleeve shirts and blouses; short sleeved shirts and blouses; shirts and blouses with graphics printed on them; men’s shirts; women’s blouses; children’s shirts and blouses; shirts and blouses for babies; bow ties, ties, lounge suits, waist coats, trousers; sports clothing; T-shirts, tee-shirts; long sleeved T-shirts, short sleeved T-shirts, T-shirts with graphics printed on them, men’s T-shirts, women’s T-shirts, children’s T-shirts, T-shirts for babies; socks, stockings and hosiery; mittens; pullovers; scarves; ski hats; sports jerseys; swimwear; gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, bikini swimming costumes, tankinis, tops, thongs, pants, bras, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of lingerie; articles of underwear, pyjamas, night wear, dressing gowns, bath robes; beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps; rain coats; sou’westers; cagoules; sportswear, boxer’s shorts and vests, sports bras, sports panties, sports briefs, and jockstraps, sports pants; sports shorts, sports T-shirts, sports crop-tops, sports vests; trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants; bicycling shorts; soccer shirts, soccer shorts, soccer socks; football strips; football kits; items of clothing for playing football in; football shirts, football boots, football boots for use on synthetic turf surfaces; football shorts and football socks, rugby shirts, rugby shorts and rugby socks, sweatshirts, hooded tops; swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing; wet suits for water-skiing; wet suits for windsurfing; dry suits; headgear, hats, woolly hats, caps, bobble hats, baseball caps, cricket hats, sunhats, sun-visors, swimming caps; aprons being clothing; boxer shorts; camisoles; caps being headwear; headgear for wear; jackets; waterproof and water resistant outer garments; waterproof and water resistant outer clothes; articles of industrial and work footwear, headgear and clothing; protective and safety footwear other than for protection against injury or accident; waterproof and water resistant clothing, headwear, footwear; slippers; bath sandals and bath slippers; dance shoes; ladies shoes; leather shoes; high heeled shoes; shoes with stiletto heels; ladies shoes with heels; dancewear including footwear; beachwear including footwear; shoes, boots, trainers, flip-flops, sandals mules, slip on shoes; slip on boots; moccasin; loafers; deck shoes; plimsolls; Wellington boots, beach shoes, shoes for windsurfing and water sports.


Class 35: Retail services connected with the sale of the following goods, the bringing together, for the benefit of others, of a variety of the following goods to allow consumers to conveniently view and purchase the following goods, electronic shopping retail services, including such services provided from an internet website, connected with the sale of the following goods and mail order retail services connected with the sale of the following goods clothing, outer clothing, under clothing, woven clothing, knitwear being clothing, clothing of cotton, silk, linen, wool, clothing made from man made-fibres, clothing made from a combination of cotton, silk, linen, wool and man-made fibres, shirts, blouses, shirts and blouses with wing collar, shirts and blouses with Eton collars, evening wear, namely shirts and blouses and dinner jackets, shirts and blouses with double cuffs, shirts and blouses with French cuffs, shirts and blouses with detachable collars, shirts and blouses without collars, long sleeve shirts and blouses, short sleeved shirts and blouses, shirts and blouses with graphics printed on them, men’s shirts, bow ties, ties, lounge suits, waist coats, trousers, sports clothing, T-shirts, tee-shirts, long sleeved T-shirts, short sleeved T-shirts, T-shirts with graphics printed on them, men’s T-shirts, socks, stockings and hosiery, mittens, pullovers, scarves, sports jerseys, swimwear, gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, tops, thongs, pants, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of underwear, pyjamas, night wear, dressing gowns, bath robes, beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps, rain coats, cagoules, sportswear, boxer’s shorts and vests, sports briefs, and jockstraps, sports pants, sports shorts, sports T-shirts, sports crop-tops, sports vests, trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants, bicycling shorts, soccer shirts, soccer shorts, soccer socks, football strips, football kits, items of clothing for playing football in, football shirts, football shorts and football socks, rugby shirts, rugby shorts and rugby socks, sweatshirts, hooded tops, swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing, wet suits for water-skiing, wet suits for windsurfing, dry suits, aprons being clothing, boxer shorts, jackets, waterproof and water resistant outer garments, waterproof and water resistant outer clothes, articles of industrial and work clothing, waterproof and water resistant clothing.


2. European Union trade mark application No 10 054 302 is rejected for all the above goods and services. It may proceed for the remaining goods and services.


3. Each party bears its own costs.



REASONS:


The opponent filed an opposition against some of the goods and services of European Union trade mark application No 10 054 302, ‘PILOT’. The opposition is based on Benelux trade mark registration No 441 545, ‘PILOT’. The opponent invoked Article 8(1)(a) and (b) EUTMR.



PROOF OF USE


In accordance with Article 42(2) and (3) EUTMR before its amendment by Regulation (EU) 2015/2424, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.


According to the same provision, in the absence of such proof the opposition must be rejected.


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


The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.


The contested application was published on 24/08/2011. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the Benelux countries from 24/08/2006 to 23/08/2011, inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:


Class 25: Clothing including boots, shoes and slippers.


According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.


On 19/12/2014, according to Rule 22(2) EUTMIR, the Office gave the opponent a period of time to submit evidence of use of the earlier trade mark, which after a request for an extension by the opponent, expired on 23/04/2015. Within the time limit, the opponent submitted evidence of use.


As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.


The evidence to be taken into account is the following:


  • Enclosure 1: sales reports issued by the opponent on 02/01/2011, 03/01/2010, 28/12/2008, 30/12/2007 and 31/12/2006. The reports break down the total sales during a specific week by type of clothing, brand, gender, model, cost price, sale price, number of items delivered by the supplier, number of the specific item sold, week of arrival of the delivered goods, supplier, etc. The documents are in Dutch and English and the opponent submitted a translation into English of the headings used in the reports.


The earlier mark appears as the brand of several types of clothing, such as sweatshirts, shirts, T-shirts, jackets, denim clothing and shorts.


In the column ‘Model’, various names and words (e.g. ‘Danny’, ‘Jasper’, ‘Palmer’, ‘Parker’, etc.) appear next to the earlier mark.


The quantities of individual items delivered by suppliers and sold per week are significant and show that the opponent is a reseller of various types and models of clothing bearing the earlier mark.


Other brands also appear in the sales report.


  • Enclosure 2: 20 catalogues promoting goods sold in the opponent’s ‘Jeans Centre’ establishments. The catalogues contain images of various types of clothing, displayed on their own or worn by models, with indications of their brand, model, price and, in some cases, a discount or a special promotion.


The earlier mark appears in relation to men’s jeans, sweaters, sweatshirts, shirts, shorts, polo shirts, swimwear and jackets.


The specific model of the article of clothing follows the earlier mark, for example ‘Pilot Porter’, ‘Pilot Parker’ and ‘Pilot Palmer’ for jeans. These specific items appear in the sales reports submitted as Enclosure 1.


The catalogues contain a website address and list a large number of Dutch cities where shops selling the goods can be found. For some of the Dutch cities, several establishments are listed.


The following periods or dates appear on the various catalogues: 23/03/2009‑05/04/2009, 21/03/2011-03/04/2011, 22/03/2012-01/04/2012, 12/10/2008, 20/04/2009‑03/05/2009, 26/04/2010-09/05/2010, 30/11/2008, 04/01/2009, 18/05/2009‑07/06/2009, 24/05/2010-06/06/2010, 23/05/2011‑05/06/2011, 15/10/2012‑28/10/2012, 21/09/2009-04/10/2009, 20/09/2010-03/10/2010, 19/10/2009‑01/11/2009, 17/10/2011-30/10/2011, 16/11/2009-29/11/2009, 21/11/2011-04/12/2011 and 21/03/2013-31/03/2013. Only two are undated.


The catalogues for the periods 23/05/2011-05/06/2011, 17/10/2011-30/10/2011 and 21/11/2011‑04/12/2011 include the words ‘Celebrating 35th anniversary’ below the opponent’s name on the cover page and on the rest of the pages.


The footers of the last pages of the catalogues for the periods 15/10/2012‑28/10/2012, 17/10/2011-30/10/2011, 21/11/2011-04/12/2011 state: ‘shoes provided by: ’.


Other brands also appear in the catalogues. The catalogues are in Dutch and English.


  • Enclosure 3: the second document is an order confirmation from a Dutch company to the opponent regarding the door-to-door distribution of more than 3 million copies of the printed matter entitled ‘Jeans Centre’ and more than 700 000 stickers between 21/03/2011 and 23/03/2011. The order confirmation specifies the exact places of distribution by postcode, specifying the number of copies to be distributed in each postcode. The document is in Dutch and the opponent has translated parts of it into English.


The first document is an estimate sent by a Dutch company to the opponent for printing 3 250 000 catalogues entitled ‘JC Denim Market’, to be delivered to the opponent at a total of eight addresses in the Netherlands. The date of the estimate is 01/01/2013. The document is in Dutch and the opponent has translated parts of it into English.


  • Enclosure 4: two invoices from one of the opponent’s suppliers, issued on 20/12/2011 and 05/01/2011. The invoices are for several models of men’s jeans. These invoices can be easily cross-referenced with the sales reports (Enclosure 1) and the catalogues (Enclosure 2), which show that the models of men’s jeans in question are sold or offered under the earlier mark. The quantities of the items bought indicate that they are for resale. The invoices are in Dutch and the opponent has translated parts of them into English.


In addition, the opponent submitted images and excerpts from its website showing the models of men’s jeans in question offered under the earlier mark.


  • Enclosure 5: eight order confirmations and invoices from one of the opponent’s suppliers, issued between 25/11/2011 and 30/01/2015 and dated in several months of each of the years in that period. The invoices are in Dutch and the opponent has translated parts of them into English. In addition, the opponent submitted an excerpt from its website.


  • Enclosure 6: images of designs of tags and trimmings for clothing, such as zippers, buttons and labels, bearing the earlier mark.


  • Enclosure 7: pictures of tags, labels and a barcode for clothing bearing the earlier mark.


  • Enclosure 8: excerpts from the website http://www.jeanscentre.nl/ as it was on 28/08/2006, 03/02/2011 and 16/11/2011, recovered using the Internet Archive Waybackmachine website. The first excerpt from the website, from 28/08/2006, contains an image of two pairs of jeans with the label ‘PILOT INDUSTRIES’ and an abstract figurative element. A second excerpt from the same date is text.


The excerpt from 03/02/2011 includes a list of marks among which is the earlier mark. At the bottom of this excerpt are other lists; the earlier mark is listed only in the category ‘Top men’. This excerpt also contains the opponent’s contact information.


The excerpt from 16/11/2011 contains similar information to the excerpt from 03/02/2011.


  • Enclosure 9: article published on the Dutch website www.textilia.nl on 13/05/2011 regarding the remodelling of one of the opponent’s stores in a Dutch city and the opening of a completely new store in another Dutch city. The article mentions special promotions in relation to the opening and reopening of the stores. It also states that the opponent’s ‘Jeans Centre’ is one of the best-known jeans stores in the Netherlands and sells, inter alia, products from collections under the earlier mark. The document is in Dutch and it has been translated into English by the opponent.


  • Enclosure 10: article published on the Dutch website www.fashionunited.nl on 14/02/2011 regarding the launch of the opponent’s new website and online shop. The article states that goods under the earlier mark are offered through the opponent’s online shop and that orders are shipped throughout the Netherlands. There is mention of a special promotion in relation to the launch of the online shop. It also states that the opponent ‘Jeans Centre’, with almost 100 stores in the Netherlands, is the jeans specialist for everybody looking for fashionable and affordable branded jeans. The document is in Dutch and it has been translated into English by the opponent.


For the sake of completeness, it must be mentioned that, in addition to the evidence listed above, the opponent submitted an excerpt from the Benelux Trademarks Register, accompanied by a translation into English, in relation to the earlier Benelux trade mark.


The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. 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 (Rule 22(6) EUTMIR). Taking into account the nature of the documents that have been translated only in part by the opponent and are considered relevant for the present proceedings, namely the sales reports (Enclosure 1), catalogues (Enclosure 2), order confirmation (Enclosure 3), invoice issued on 05/01/2011 (Enclosure 4) and excerpt from the opponent’s website (Enclosure 8), and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.


The applicant argues that the evidence is not covered by an affidavit. Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. However, a written statement is only one of the numerous means of giving evidence that the opponent may use to prove genuine use of its earlier mark and is in no case compulsory. Furthermore, the probative value of such a statement in most cases depends on the documents that the statement supports. Therefore, the applicant’s argument must be set aside.


The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.


The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.


According to case law (inter alia, 11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223; 08/07/2010, T‑30/09, Peerstorm, EU:T:2010:298), in interpreting the concept of genuine use, account must be taken of the fact that the rationale for the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a trade mark application is to restrict the number of conflicts between two marks, in so far as there is no sound economic reason resulting from an actual function of the mark on the market. However, that provision is not concerned either with assessing the commercial success of an undertaking or monitoring its economic strategy, or designed to reserve the protection of trade marks for large-scale commercial uses of them.

There is ‘genuine use’ of a trade mark where the mark 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, thereby excluding token use for the sole purpose of preserving the rights conferred by the mark. In that respect, the condition concerning genuine use of the trade mark requires that, as protected in the relevant territory, it be used publicly and outwardly.

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark.

Concerning the extent of the use made 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.

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies a certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by a high intensity or a certain constancy regarding the time of the use of that trade mark or vice versa.

Taking into account all the evidence in conjunction, the Opposition Division considers that the opponent has proven genuine use of its earlier mark ‘PILOT’.

Firstly, most of the evidence is dated within the relevant period. Although there are no dates to show when the excerpts from the opponent’s website submitted as Enclosure 8 were created, they show the opponent’s website as it was during the relevant period and, therefore, they confirm use of the opponent’s mark within the relevant period. The documents dated outside the relevant period have not been taken into account.

Secondly, the 20 catalogues (Enclosure 2), the order confirmation regarding the door-to-door distribution of printed matter throughout the Netherlands (Enclosure 3), the invoices issued on 05/01/2011 by the opponent’s supplier (Enclosure 4) and the press articles (Enclosures 9 and 10) show that the place of use is the Netherlands. This can be inferred from the language of the documents (Dutch) and the addresses. Therefore, the evidence relates to the relevant territory and the geographical extent of use that the evidence demonstrates is considered sufficient to prove use for the Benelux countries.



The evidence shows commonplace use in the clothing industry of the mark for men’s clothing in invoices, catalogues, labels, trimmings, etc. It is used as a word mark in the sales reports (Enclosure 1), in the catalogues (Enclosure 2), in the excerpts from the opponent’s website (Enclosure 8) and in the press articles (Enclosures 9 and 10).


According to Article 15(1)(a) EUTMR, use of an EU 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, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor, also constitutes genuine use.


In some of the catalogues and labels, the sign is depicted in a bold, slightly stylised typeface and in different colours, for example (Enclosure 2, in a catalogue, in relation to a men’s shirt). However, the additional figurative elements relating to the mark’s typeface and colours are not relevant, since they do not alter the distinctive character of the mark (18/04/2008, R 1236/2007-2, ‘BIONSEN’).


In the image in the excerpt from the opponent’s website from 28/08/2006 (Enclosure 8), the earlier mark appears on the label of two pairs of jeans along with the word ‘INDUSTRIES’ and an abstract figurative element. In addition, along with the earlier word mark ‘PILOT’, the figurative sign also appears next to some of the pictures of the items of clothing promoted in the catalogues (Enclosure 2). It is settled case law that the condition of genuine use of a registered trade mark may be satisfied either where it has been used as part of another composite mark or where it has been used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (18/04/2013, C‑12/12, Colloseum Holding, EU:C:2013:253, § 36). Therefore, Article 15(1)(a) EUTMR has been complied with.


Regarding the extent of use, account must be taken of the characteristics of the particular sector and the manner in which the opponent develops its commercial activities.

In this regard, the opponent has stated and demonstrated through evidence (Enclosures 2, 8, 9 and 10) that it, Jeans Centre, is the owner of a large number of stores that sell clothing nationwide in the Netherlands. Therefore, it would be an unnecessary burden for the opponent to submit as evidence large quantities of individual sales tickets for the goods sold in its stores to end consumers during the relevant period. Furthermore, this would be only one of the means of evidence the opponent may use to prove the extent of use. Rule 22(4) EUTMIR lists in a non-restrictive manner packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements as means of evidence of use.

The sales reports (Enclosure 1) show a large amount of weekly sales of various types and models of men’s clothing during the whole of the relevant period. The 20 catalogues (Enclosure 2) demonstrate serious and continuous sales offers of goods bearing the earlier mark in the large number of stores that the opponent owns and in its online shop. The circulation of at least one of the printed matters of the opponent is proven by the order confirmation regarding door-to-door distribution of more than 3 million copies throughout the Netherlands (Enclosure 3). The previously listed Enclosures demonstrate significant commercial activity by the opponent, carried out in order to gain or maintain an outlet in the market for the goods bearing the earlier mark.

Although these documents originated from the opponent, they were created not ad hoc, but during the opponent’s normal commercial activities, and their authenticity has not been questioned by the applicant. Furthermore, in relation to the sales reports (Enclosure 1), these are documents commonly produced by many undertakings, and particularly by undertakings dedicated to retailing goods, because they need to have an overview of the sales in all their stores, delivery times, margins, etc.

The invoice dated 05/11/2011 regarding purchases of large amounts of men’s jeans (Enclosure 4) and the information published in the two articles (Enclosures 9 and 10) further demonstrate the public and outward use of the earlier mark by the opponent.

Therefore, taking into account all the evidence in conjunction, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

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


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 shall, 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.


According to case law, when applying the abovementioned provision the following should be considered:


if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong.


(14/07/2005, T‑126/03, Aladin, EU:T:2005:288).


In the present case, the evidence proves use only for men’s jeans, sweaters, sweatshirts, shirts, shorts, polo shirts, swimwear and jackets. These goods can be considered to form an objective subcategory of the registered category clothing, namely men’s clothing. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for men’s clothing.



DOUBLE IDENTITY – ARTICLE 8(1)(a) EUTMR


Article 8(1)(a) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, an EUTM application shall not be registered if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected.



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.



  1. The goods and services


In accordance with Article 42(2) EUTMR, for the purposes of the examination of the present opposition, the earlier mark is deemed to be registered for and the opposition based on the following goods:


Class 25: Men’s clothing.


The contested goods and services, after a limitation of the extent of the opposition by the opponent on 15/04/2015, are the following:


Class 18: Goods made of leather and imitation leather and not included in other classes, backpacks; shopping bags; sling bags; school bags; beach bags; satchels briefcases; lap top bags; pilot cases; handbags; pocket wallets; purses; clip top purses; change purses; evening bags; hand bags being tote bags; hand bags being shoulder bags; weekend bags; haversacks; articles of imitation leather not included in other Classes; key cases being leather ware; kit bags; gym bags; sports bags; duffle bags; rucksacks; school satchels; shopping bags; boot bags; credit card holders; hold-alls.


Class 24: Textiles for making articles of clothing; textiles for making articles of headgear; textiles for making parts of articles of clothing; textiles for making parts of articles of headgear; textile goods for manufacturing water proof clothing, footwear and headgear; textile goods for manufacturing breathable clothing, footwear and headgear; textile goods for manufacturing technical clothing, footwear and headgear; textile goods for manufacturing clothing, footwear and headgear with insulating properties.


Class 25: Clothing; footwear; headgear; outer clothing; under clothing; woven clothing; knitwear being clothing; clothing of cotton, silk, linen, wool; clothing made from man made-fibres; clothing made from a combination of cotton, silk, linen, wool and man-made fibres; shirts; blouses; womens clothes; girls clothes; shirts and blouses with wing collar; shirts and blouses with Eton collars; evening wear, namely shirts and blouses and dinner jackets; shirts and blouses with double cuffs; shirts and blouses with French cuffs; shirts and blouses with detachable collars; shirts and blouses without collars; long sleeve shirts and blouses; short sleeved shirts and blouses; shirts and blouses with graphics printed on them; men’s shirts; women’s blouses; children’s shirts and blouses; shirts and blouses for babies; bow ties, ties, lounge suits, waist coats, trousers; sports clothing; T-shirts, tee-shirts; long sleeved T-shirts, short sleeved T-shirts, T-shirts with graphics printed on them, men’s T-shirts, women’s T-shirts, children’s T-shirts, T-shirts for babies; socks, stockings and hosiery; mittens; pullovers; scarves; ski hats; sports jerseys; swimwear; gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, bikini swimming costumes, tankinis, tops, thongs, pants, bras, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of lingerie; articles of underwear, pyjamas, night wear, dressing gowns, bath robes; beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps; rain coats; sou’westers; cagoules; sportswear, boxer’s shorts and vests, sports bras, sports panties, sports briefs, and jockstraps, sports pants; sports shorts, sports T-shirts, sports crop-tops, sports vests; trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants; bicycling shorts; soccer shirts, soccer shorts, soccer socks; football strips; football kits; items of clothing for playing football in; football shirts, football boots, studs for football boots; football boots for use on synthetic turf surfaces; football shorts and football socks, rugby shirts, rugby shorts and rugby socks, sweatshirts, hooded tops; swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing; wet suits for water-skiing; wet suits for windsurfing; dry suits; headgear, hats, woolly hats, caps, bobble hats, baseball caps, cricket hats, sunhats, sun-visors, swimming caps; aprons being clothing; boxer shorts; camisoles; caps being headwear; headgear for wear; jackets; waterproof and water resistant outer garments; waterproof and water resistant outer clothes; footwear uppers, heel pieces and tips for footwear; studs, spikes and metal fittings for footwear; welts for boots and shoes; heels for boots and shoes; tips for foot-wear; soles, inner soles, non-slipping devices for footwear; articles of industrial and work footwear, headgear and clothing; protective and safety footwear other than for protection against injury or accident; waterproof and water resistant clothing, headwear, footwear; slippers; bath sandals and bath slippers; dance shoes; ladies shoes; leather shoes; high heeled shoes; shoes with stiletto heels; ladies shoes with heels; dancewear including footwear; beachwear including footwear; shoes, boots, trainers, flip-flops, sandals mules, slip on shoes; slip on boots; moccasin; loafers; deck shoes; plimsolls; Wellington boots, beach shoes, shoes for windsurfing and water sports; parts and fittings for all the aforesaid goods.


Class 26: Heat fusible textile transfers for affixing to clothing, headwear; heat transfer emblems of textile; heat fusible textile transfers for attachment to garments, headwear; pin badges, and other badges for wear.


Class 35: Retail services connected with the sale of the following goods, the bringing together, for the benefit of others, of a variety of the following goods to allow consumers to conveniently view and purchase the following goods, electronic shopping retail services, including such services provided from an internet website, connected with the sale of the following goods and mail order retail services connected with the sale of the following goods, safety and protective clothing, headwear and footwear, safety and protective outer clothing, outer clothing for protection against accident or injury, clothing, headwear and footwear for protection against accident or injury, goods made of leather and imitation leather, backpacks, shopping bags, sling bags, school bags, beach bags, satchels briefcases, lap top bags, pilot cases, handbags, pocket wallets, purses, clip top purses, change purses, evening bags, hand bags being tote bags, hand bags being shoulder bags, weekend bags, haversacks, articles of imitation leather, key cases being leather ware, kit bags, gym bags, sports bags, duffle bags, rucksacks, school satchels, shopping bags, boot bags, credit card holders, hold-alls, textiles for making articles of clothing, textiles for making articles of headgear, textiles for making parts of articles of clothing, textiles for making parts of articles of headgear, textile goods for manufacturing water proof clothing, footwear and headgear, textile goods for manufacturing breathable clothing, footwear and headgear, textile goods for manufacturing technical clothing, footwear and headgear, textile goods for manufacturing clothing, footwear and headgear with insulating properties, Clothing, footwear, headgear, outer clothing, under clothing, woven clothing, knitwear being clothing, clothing of cotton, silk, linen, wool, clothing made from man made-fibres, clothing made from a combination of cotton, silk, linen, wool and man-made fibres, shirts, blouses, shirts and blouses with wing collar, shirts and blouses with Eton collars, evening wear, namely shirts and blouses and dinner jackets, shirts and blouses with double cuffs, shirts and blouses with French cuffs, shirts and blouses with detachable collars, shirts and blouses without collars, long sleeve shirts and blouses, short sleeved shirts and blouses, shirts and blouses with graphics printed on them, men’s shirts, women’s blouses, children’s shirts and blouses, shirts and blouses for babies, bow ties, ties, lounge suits, waist coats, trousers, sports clothing, T-shirts, tee-shirts, long sleeved T-shirts, short sleeved T-shirts, T-shirts with graphics printed on them, men’s T-shirts, women’s T-shirts, children’s T-shirts, T-shirts for babies, socks, stockings and hosiery, mittens, pullovers, scarves, ski hats, sports jerseys, swimwear, gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, bikini swimming costumes, tankinis, tops, thongs, pants, bras, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of lingerie, articles of underwear, pyjamas, night wear, dressing gowns, bath robes, beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps, rain coats, sou’westers, cagoules, sportswear, boxer’s shorts and vests, sports bras, sports panties, sports briefs, and jockstraps, sports pants, sports shorts, sports T-shirts, sports crop-tops, sports vests, trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants, bicycling shorts, soccer shirts, soccer shorts, soccer socks, football strips, football kits, items of clothing for playing football in, football shirts, football boots, studs for football boots, football boots for use on synthetic turf surfaces, football shorts and football socks, rugby shirts, rugby shorts and rugby socks, sweatshirts, hooded tops, swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing, wet suits for water-skiing, wet suits for windsurfing, dry suits, headgear, hats, woolly hats, caps, bobble hats, baseball caps, cricket hats, sunhats, sun-visors, swimming caps, aprons being clothing, boxer shorts, camisoles, caps being headwear, headgear for wear, jackets, waterproof and water resistant outer garments, waterproof and water resistant outer clothes, footwear uppers, heel pieces and tips for footwear, studs, spikes and metal fittings for footwear, welts for boots and shoes, heels for boots and shoes, tips for foot-wear, soles, inner soles, non-slipping devices for footwear, articles of industrial and work footwear, headgear and clothing, protective and safety footwear other than for protection against injury or accident, waterproof and water resistant clothing, headwear, footwear, slippers, bath sandals and bath slippers, dance shoes, ladies shoes, leather shoes, high heeled shoes, shoes with stiletto heels, ladies shoes with heels, dancewear including footwear, beachwear including footwear, shoes, boots, trainers, flip-flops, sandals mules, slip on shoes, slip on boots, moccasin, loafers, deck shoes, plimsolls, Wellington boots, beach shoes, shoes for windsurfing and water sports, textiles and textile goods, textiles for making articles of clothing, textiles for making articles of headgear, textiles for making parts of articles of clothing, textiles for making parts of articles of headgear, textile goods for manufacturing water proof clothing, footwear and headgear, textile goods for manufacturing breathable clothing, footwear and headgear, textile goods for manufacturing technical clothing, footwear and headgear, textile goods for manufacturing clothing, footwear and headgear with insulating properties, heat fusible textile transfers for affixing to clothing, headwear, heat transfer emblems of textile, heat-fusible textile transfers for attachment to garments, headwear, pin badges, and other badges for wear.


As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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 18


The opponent’s men’s clothing, in Class 25, refers to articles used to cover a man’s body and protect it against the elements. It also includes articles of fashion.


Goods made of leather and imitations of leather in Class 18 include goods such as bags, handbags, sports bags, briefcases, wallets, purses, key cases, etc. These goods are related to articles of men’s clothing in Class 25. This is because consumers are likely to consider the Class 18 goods as accessories that complement articles of outer men’s clothing as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of men’s clothing to directly produce and market related goods made of leather and imitations of leather. Moreover, these goods can be found in the same retail outlets. Therefore, the contested goods made of leather and imitation leather and not included in other classes, backpacks; shopping bags; sling bags; school bags; beach bags; satchels briefcases; lap top bags; pilot cases; handbags; pocket wallets; purses; clip top purses; change purses; evening bags; hand bags being tote bags; hand bags being shoulder bags; weekend bags; haversacks; articles of imitation leather not included in other Classes; key cases being leather ware; kit bags; gym bags; sports bags; duffle bags; rucksacks; school satchels; shopping bags; boot bags; credit card holders; hold-alls are considered similar to an average degree to the opponent’s men’s clothing in Class 25.


Contested goods in Class 24


The main point of contact between textiles in Class 24 and men’s clothing in Class 25 is that they are made of textile material. However, this is not sufficient to justify a finding of similarity. They serve completely different purposes: men’s clothing is meant to be worn for protection and/or fashion, whereas textiles are unfinished goods that will be used to make or form a part of a finished product. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, all the contested goods are considered dissimilar to the opponent’s men’s clothing in Class 25.


Contested goods in Class 25


The following contested goods are either identical to the opponent’s men’s clothing, because the contested goods include the opponent’s goods as a broader category (e.g. clothing), because the contested goods overlap with the opponent’s goods (e.g. woven clothing) or because the contested goods are included in the opponent’s goods (e.g. men’s shirts):


Clothing; outer clothing; under clothing; woven clothing; knitwear being clothing; clothing of cotton, silk, linen, wool; clothing made from man made-fibres; clothing made from a combination of cotton, silk, linen, wool and man-made fibres; shirts; blouses; shirts and blouses with wing collar; shirts and blouses with Eton collars; evening wear, namely shirts and blouses and dinner jackets; shirts and blouses with double cuffs; shirts and blouses with French cuffs; shirts and blouses with detachable collars; shirts and blouses without collars; long sleeve shirts and blouses; short sleeved shirts and blouses; shirts and blouses with graphics printed on them; men’s shirts; bow ties, ties, lounge suits, waist coats, trousers; sports clothing; T-shirts, tee-shirts; long sleeved T-shirts, short sleeved T-shirts, T-shirts with graphics printed on them, men’s T-shirts, socks, stockings and hosiery; mittens; pullovers; scarves; sports jerseys; swimwear; gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, tops, thongs, pants, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of underwear, pyjamas, night wear, dressing gowns, bath robes; beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps; rain coats; cagoules; sportswear, boxer’s shorts and vests, sports briefs, and jockstraps, sports pants; sports shorts, sports T-shirts, sports crop-tops, sports vests; trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants; bicycling shorts; soccer shirts, soccer shorts, soccer socks; football strips; football kits; items of clothing for playing football in; football shirts, football shorts and football socks, rugby shirts, rugby shorts and rugby socks, sweatshirts, hooded tops; swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing; wet suits for water-skiing; wet suits for windsurfing; dry suits; aprons being clothing; boxer shorts; jackets; waterproof and water resistant outer garments; waterproof and water resistant outer clothes; articles of industrial and work clothing; waterproof and water resistant clothing.


The contested women’s clothes; girls clothes; women’s blouses; children’s shirts and blouses; shirts and blouses for babies; women’s T-shirts, children’s T-shirts, T-shirts for babies; bikini swimming costumes, tankinis, bras, articles of lingerie, sports bras, sports panties, camisoles are similar to a high degree to the opponent’s men’s clothing, because they have the same nature, purpose and distribution channels and they may have the same producers and retail outlets.


Footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the contested footwear; football boots, football boots for use on synthetic turf surfaces; articles of industrial and work footwear; protective and safety footwear other than for protection against injury or accident; waterproof and water resistant footwear; slippers; bath sandals and bath slippers; dance shoes; ladies shoes; leather shoes; high heeled shoes; shoes with stiletto heels; ladies shoes with heels; dancewear including footwear; beachwear including footwear; shoes, boots, trainers, flip-flops, sandals mules, slip on shoes; slip on boots; moccasin; loafers; deck shoes; plimsolls; Wellington boots, beach shoes, shoes for windsurfing and water sports and the opponent’s men’s clothing are considered similar to an average degree.


Headgear and clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. 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. Taking all these factors into account, the contested headgear; ski hats; sou’westers; headgear, hats, woolly hats, caps, bobble hats, baseball caps, cricket hats, sunhats, sun-visors, swimming caps; caps being headwear; headgear for wear; articles of industrial and work headgear; waterproof and water resistant headwear and the opponent’s men’s clothing are considered similar to an average degree.


The contested studs for football boots; footwear uppers, heel pieces and tips for footwear; studs, spikes and metal fittings for footwear; welts for boots and shoes; heels for boots and shoes; tips for foot-wear; soles, inner soles, non-slipping devices for footwear; parts and fittings for all the aforesaid goods (all the contested goods in Class 25 as listed above) are parts or accessories of clothing, footwear and headgear. They are considered dissimilar to the opponent’s men’s clothing, since the contested goods are used in the manufacture of clothing, footwear and headgear, unlike the opponent’s goods, which are finished products. The fact that some of the contested goods are used in the manufacture of the opponent’s goods does not in itself lead to a finding of similarity, because their purposes, relevant publics and methods of use are different.


Contested goods in Class 26


All the contested goods in this class are dissimilar to the opponent’s men’s clothing in Class 25. These goods are types of accessories for apparel and sewing articles used in manufacturing clothing or headwear and they do not have anything in common with the opponent’s goods in Class 25. The goods are produced by different manufacturers and target different publics; the opponent’s goods are finished products and target end users, whereas the contested goods are sewing articles and target clothing or headwear manufacturers. Moreover, the goods differ in their natures, purposes and methods of use. In this regard, the mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 61). Similarity will be found only in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as having the same producers and/or the relevant public and/or complementarity, be fulfilled.


Contested services in Class 35


Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as 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 same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, internet shopping, catalogue or mail order services in Class 35.


Therefore, the contested retail services connected with the sale of the following goods, the bringing together, for the benefit of others, of a variety of the following goods to allow consumers to conveniently view and purchase the following goods, electronic shopping retail services, including such services provided from an internet website, connected with the sale of the following goods and mail order retail services connected with the sale of the following goods clothing, outer clothing, under clothing, woven clothing, knitwear being clothing, clothing of cotton, silk, linen, wool, clothing made from man made-fibres, clothing made from a combination of cotton, silk, linen, wool and man-made fibres, shirts, blouses, shirts and blouses with wing collar, shirts and blouses with Eton collars, evening wear, namely shirts and blouses and dinner jackets, shirts and blouses with double cuffs, shirts and blouses with French cuffs, shirts and blouses with detachable collars, shirts and blouses without collars, long sleeve shirts and blouses, short sleeved shirts and blouses, shirts and blouses with graphics printed on them, men’s shirts, bow ties, ties, lounge suits, waist coats, trousers, sports clothing, T-shirts, tee-shirts, long sleeved T-shirts, short sleeved T-shirts, T-shirts with graphics printed on them, men’s T-shirts, socks, stockings and hosiery, mittens, pullovers, scarves, sports jerseys, swimwear, gilets, overcoats, coats, jerseys, jumpers, tops, sweaters, cardigans, pullovers, ponchos, corsetry, scarves, shawls, mufflers, pashminas, wraparounds, wraps, gloves, swimming costumes, one piece swimming costumes, tops, thongs, pants, bodyshapers, beachwear, sarongs, leisure wear, blouses, dresses, shorts, jeans, denim jackets, denim trousers, neckties, articles of underwear, pyjamas, night wear, dressing gowns, bath robes, beach robes, articles of beachwear, beach clothing, beach dresses, beach shorts, beach wraps, rain coats, cagoules, sportswear, boxer’s shorts and vests, sports briefs, and jockstraps, sports pants, sports shorts, sports T-shirts, sports crop-tops, sports vests, trackpants, track suits, jogging suits, warm-up suits, running shorts, running vests, running tops, running pants, bicycling shorts, soccer shirts, soccer shorts, soccer socks, football strips, football kits, items of clothing for playing football in, football shirts, football shorts and football socks, rugby shirts, rugby shorts and rugby socks, sweatshirts, hooded tops, swimming suits being wetsuits, wet suits for surface water-sports, wetsuits for surfing, wet suits for water-skiing, wet suits for windsurfing, dry suits, aprons being clothing, boxer shorts, jackets, waterproof and water resistant outer garments, waterproof and water resistant outer clothes, articles of industrial and work clothing, waterproof and water resistant clothing are similar to a low degree to the opponent’s men’s clothing.


The rest of the contested services in Class 35 and the opponent’s men’s clothing are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.


Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical, as stated above. Regarding safety and protective clothing, headwear and footwear, safety and protective outer clothing, outer clothing for protection against accident or injury, clothing, headwear and footwear for protection against accident or injury, these goods are protective and safety equipment and have a highly specialised purpose. Their producers, distribution channels, method of use and target public are different from those of the opponent’s men’s clothing in Class 25. These goods are not identical and, consequently, retail services in relation to them are dissimilar to the opponent’s men’s clothing.



  1. The signs



PILOT


PILOT



Earlier trade mark


Contested sign


The signs are identical.



  1. Global assessment, other arguments and conclusion


Article 8(1)(a) EUTMR


The signs are identical and some of the contested goods in Class 25, as listed in section a) of this decision, are identical to the goods of the earlier mark. Therefore, the opposition must be upheld and the contested trade mark application rejected in accordance with Article 8(1)(a) EUTMR for these goods.


Article 8(1)(b) EUTMR


Under Article 8(1)(b) EUTMR, some of the contested goods and services in Classes 18, 25 and 35 listed above are similar to varying degrees to the goods of the earlier mark.


Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.


The conflicting signs are identical, which leads to a likelihood of confusion with regard to the similar goods and services, including the goods and services that are similar to a low degree, since there is no other factor that could outweigh the identity between the signs and the similarity, to varying degrees, between the goods and services.


Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public in relation to similar goods and services and therefore the opposition is partially well founded on the basis of the opponent’s Benelux trade mark registration.


It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to those of the earlier trade mark.


The rest of the contested goods and services are dissimilar, and as identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.



COSTS


According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.


Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.





The Opposition Division


Michaela SIMANDLOVA

Alexandra APOSTOLAKIS

Solveiga BIEZA




According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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