OPPOSITION No B 2 306 465
Industrial Wear S.R.L., Via Ettore Benini N. 22, 47121 Forlì (FC), Italy (opponent), represented by Aldo Antonino Micali, Via Giorgio Regnoli, 10, 47100 Forlì, Italy (professional representative)
a g a i n s t
PJS International SA, 18, Rue de l’Eau, 1449 Luxembourg, Luxembourg (applicant), represented by Perani & Partners Spa, Piazza San Babila, 5, 20122 Milano, Italy (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods and services
of European Union trade mark application No
SUBSTANTIATION OF ITALIAN TRADE MARK REGISTRATION No 1 500 772 FOR THE WORD MARK ‘PJ’
According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case the notice of opposition was not accompanied by any evidence as regards earlier Italian trade mark registration No 1 500 772 on which, inter alia, the opposition is based.
On 05/02/2014, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension requested by the parties, on 26/01/2016.
The opponent submitted the required evidence as regards the earlier Italian trade mark on 20/10/2016, that is, only after the expiry of the abovementioned time limit. In addition to the clear provisions of the law (Rule 19(2)(a) EUTMIR), the opponent was specifically informed of the requirement to substantiate the earlier marks by the information sheet attached to the Office’s letter of 05/02/2014. In particular, it was stated in the section ‘Time limit for you to substantiate the earlier rights and submit further material’ that ‘you are required to substantiate all the earlier rights on which the opposition is based, that is, to prove the existence, ownership and validity of the rights by submitting evidence and, within the same time limit, all appropriate translations and colour representations’. The opponent was also warned that ‘the Office will not inform you whether the evidence, or translations thereof, is missing. It is your own responsibility to check whether this has been or must still be done.’ Finally, on 12/11/2015, the opponent was once again reminded by the Office of the requirement to substantiate the earlier rights within the time limit.
According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.
The opposition must, therefore, be rejected as unfounded as far as it is based on this earlier mark.
The opposition will proceed as far as it is based on earlier European Union trade mark registration No 10 532 398.
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 goods on which the opposition is based are the following:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 25: Clothing, footwear, headgear.
The contested goods are the following:
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery, in particular; saddle trees; saddlery, key cases, fastenings for saddles, leather shoulder straps, alpenstocks, walking sticks, vanity cases (empty), travelling trunks, sports bags, purses, travelling sets (leatherware), bridles (harness), briefcases; girths of leather, unworked or semi-worked leather; moleskin (imitation of leather), whips, imitations of leather; animal skins, hides, fur, card cases (notecases), haversacks, bags for campers, beach bags, travelling bags, bags for climbers, shopping bags, boxes of leather or leather board, suitcases, attaché cases, garment bags for travel, backpacks.
Class 25: Clothing, footwear, sports shoes, boots, headgear for wear, clothing for men, women and children, jackets (clothing), heavy coats, blousons, topcoats, trousers, skirts, knitwear, sportswear, sports and leisure tracksuits, sweatshirts, gloves, ski gloves, belts, scarves, hats, trousers, clothing of imitations of leather; clothing of leather, caps (headwear), berets, smocks, boas (fur boas), braces for clothing (suspenders), boots for sports, stockings, breeches for wear, coats, hoods (clothing), money belts (clothing), detachable collars, ear muffs (clothing), waterproof clothing, leggings (trousers), sweaters, muffs (clothing), parkas, furs (clothing), ponchos, pullovers, ski boots, fur stoles, pockets for clothing, T-shirts, wet suits for water-skiing, uniforms, visors (headwear), wooden shoes.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).
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
Leather and imitations of leather (the latter listed twice among the contested goods), and goods made of these materials and not included in other classes; animal skins (listed twice among the contested goods), hides (listed twice among the contested goods); trunks and travelling bags (listed twice among the contested goods, albeit using slightly different wordings); umbrellas and parasols; walking sticks (listed twice among the contested goods); whips (listed twice among the contested goods), harness; saddlery are identically contained in both lists of goods.
The contested saddle trees; fastenings for saddles are included in the broad category of the opponent’s saddlery. Therefore, they are identical.
The contested key cases, vanity cases (empty), sports bags, purses, briefcases, card cases (notecases), haversacks, bags for campers, beach bags, bags for climbers, shopping bags, attaché cases, backpacks can all be made of leather or imitations of leather and are included in the broader category of, or overlap with, the opponent’s goods made of these materials (leather and imitations of leather) and not included in other classes. Therefore, they are identical.
The contested leather shoulder straps, travelling sets (leatherware), girths of leather, boxes of leather or leather board are included in the broad category of the opponent’s goods made of these materials (leather) and not included in other classes. Therefore, they are identical.
The contested alpenstocks are included in the broad category of the opponent’s walking sticks. Therefore, they are identical.
The contested travelling trunks, suitcases, garment bags for travel are included in the broad category of the opponent’s trunks and travelling bags. Therefore, they are identical.
The contested bridles (harness) are included in the broad category of the opponent’s harness. Therefore, they are identical.
The contested unworked or semi-worked leather; moleskin (imitation of leather) are included in the broad category of the opponent’s leather and imitations of leather. Therefore, they are identical.
The contested fur is included in the broad category of the opponent’s animal skins. Therefore, they are identical.
Contested goods in Class 25
Clothing, footwear, headgear for wear are identically contained in both lists of goods (including synonyms).
The contested sports shoes, boots, boots for sports, ski boots, wooden shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.
The contested clothing for men, women and children, jackets (clothing), heavy coats, blousons, topcoats, trousers, skirts, knitwear, sportswear, sports and leisure tracksuits, sweatshirts, gloves, ski gloves, belts, scarves, trousers, clothing of imitations of leather; clothing of leather, smocks, boas (fur boas), braces for clothing (suspenders), stockings, breeches for wear, coats, hoods (clothing), money belts (clothing), detachable collars, ear muffs (clothing), waterproof clothing, leggings (trousers), sweaters, muffs (clothing), parkas, furs (clothing), ponchos, pullovers, fur stoles, T-shirts, wet suits for water-skiing, uniforms are included in the broad category of the opponent’s clothing. Therefore, they are identical.
The contested hats, caps (headwear), berets, visors (headwear) are included in the broad category of the opponent’s headgear. Therefore, they are identical.
The contested pockets for clothing are essentially parts or accessories used in the manufacture of clothing items or affixed to them after their manufacture. These goods do not have anything in common with the opponent’s clothing, since they target only the manufacturers of the goods. They are also dissimilar to the opponent’s goods in Class 18. These contested goods differ from the opponent’s goods in nature and purpose, as well as in producers, consumers and distribution channels. Furthermore, the goods are neither complementary nor in competition with one another. Therefore, they are dissimilar.
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 identical goods, except the raw materials, are directed at the public at large, whose degree of attention is average. In contrast, the raw materials in Class 18, for example leather and imitations of leather and animal skins, are aimed at professionals in the sector of manufacturing of goods made with these materials, whose degree of attention may be higher, considering that the raw material is key to the quality/price of the finished product.
PAYPER JEANS PJ
Earlier trade mark
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is the word mark ‘PAYPER JEANS PJ’.
The contested sign is the word mark ‘PJS’.
The word ‘JEANS’ in the earlier mark, referring to ‘hard-wearing casual trousers made of denim or other cotton fabric’ (information extracted from the Oxford English Dictionary on 25/10/2016 at www.oxforddictionaries.com), is likely to be understood by a substantial portion of the relevant public, despite their not being familiar with English, given that it exists in a number of languages other than English (e.g. Danish, Dutch, French, German, Italian, Portuguese and Swedish) and it is a term in widespread use in the clothing and textile industries in general. Bearing in mind that some of the relevant goods are clothes, it is considered that this element is non-distinctive for these goods, namely for clothing in Class 25. The public understands the meaning of the element and will not pay as much attention to this non-distinctive element as to the other, more distinctive, elements of the mark, ‘PAYPER’ and ‘PJ’, which have no meaning. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.
For the remaining goods, as well as for the remaining part of the relevant public that might not understand the word ‘JEANS’, the element ‘JEANS’ has a normal degree of distinctiveness.
The contested sign has no elements that could be considered clearly more distinctive than other elements.
The signs under comparison have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘PJ’, which form the third verbal element in the earlier mark and are the first two letters in the contested sign. However, they differ in the first and second verbal elements of the earlier mark, ‘PAYPER’ and ‘JEANS’, and in the third letter of the contested sign, ‘S’.
The first word in the earlier mark is ‘PAYPER’, which has a normal degree of distinctiveness in relation to the relevant goods and is not in the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the combination of letters ‛PJ’, present identically in both signs, albeit in different positions, being the third verbal element in the earlier mark and the first two consonants in the contested sign. The pronunciation differs in the sound of the letters /PAYPER/ and /JEANS/ of the earlier mark, which have no counterparts in the contested sign, except for the repeated letter ‘P’ and the letter ‘S’, which coincides with the last consonant in the contested sign. The signs are of different lengths: the earlier mark contains three verbal elements with a total of 13 letters, which are pronounced in five syllables, whereas the contested sign is a short sign consisting of three consonants. These aspects make the rhythms of the signs different.
Therefore, the signs are aurally similar to a low degree.
Conceptually, as analysed above, while a significant part of the public in the relevant territory will perceive the verbal element ‘JEANS’ of the earlier mark as meaning ‘hard-wearing casual trousers made of denim or other cotton fabric’, the contested sign lacks any meaning in that territory. For this part of the public, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
For the part of the public for which neither of the signs has a meaning, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. 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 examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).
The goods are partly identical and partly dissimilar. The relevant public is made up of average consumers with an average degree of attention and professionals with a higher degree of attention.
The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).
In the present case, the signs coincide in the combination of the two letters ‘PJ’, placed in different positions. The signs differ in the long element ‘PAYPER JEANS’ at the beginning of the earlier mark. Furthermore, the coinciding two letters are followed by a final letter ‘S’ in the contested sign, resulting in a low degree of visual and aural similarity. In addition, from a conceptual point of view, the marks are not similar or the conceptual aspect is not relevant, as both will be perceived as meaningless. The differing verbal elements in the earlier mark and the contested sign are clearly perceptible and sufficient to exclude any likelihood of confusion between them, even assuming an enhanced degree of distinctiveness of the earlier mark.
As stated above, the contested sign is a short sign, and the fact that the signs differ in so many letters is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs.
Furthermore, the relevant goods are mainly clothing, footwear and headgear in Class 25 and leather, leather imitations, travel goods and saddlery in Class 18. Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. As pointed out by the parties, whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. The same is likely to be true of the purchase of goods in Class 18. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the differing compositions and lengths of the verbal elements within the signs are particularly relevant when assessing the likelihood of confusion between them.
The opponent claims that the last letter, ‘S’, of the contested sign will be perceived as an indication of the plural or the genitive of the word (here ‘PJ’) to which it is added and that this will lead to a likelihood of confusion. In this regard, the opponent refers to some of the Office’s previous decisions in which two signs, differing only in the presence of the letter ‘S’ at the end of one of them, were considered similar. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. In opposition proceedings No B 2 509 605 dated 14/01/2016, between the signs and ‘WEDOS’, the marks had the same beginning, ‘WEDO’ (a meaningless word), but differed in the last letter, ‘S’, of the contested sign and the additional verbal element ‘TECHNOLOGIES’ of the earlier mark. The abovementioned decision did not include any reference to the possible meaning of the additional letter ‘S’, contrary to the opponent’s assertions. Therefore, this case cannot be taken into account as a supporting reference to the opponent’s claim. The opponent also referred to opposition proceedings No B 2 462 813 dated 19/01/2016, between the signs ‘AGES’ and , in which the signs coincided in the meaningful element ‘AGE’ and it was considered that the earlier mark was merely the plural form of the word ‘AGE’. Therefore, the case referred to by the opponent is not equivalent to the present scenario, in which the first verbal element of the contested sign consists of the combination of three consonants, ‘PJS’, with no meaning and, therefore, the presence of the last letter, ‘S’, cannot be interpreted as a plural form or as a genitive of a word.
Considering all the above, even though some of the goods are identical and part of the public may have a higher degree of attention with respect to some of the goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Cecilie Leth BOCKHOFF
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.