OPPOSITION No B 2 338 757
Next Retail Limited, Desford Road, Enderby, Leicester, Leicestershire LE19 4AT, United Kingdom (opponent), represented by Marks & Clerk Llp, 90 Long Acre, London WC2E 9RA, United Kingdom (professional representative)
a g a i n s t
Artsana S.p.A, Via Saldarini Catelli 1, 22070 Grandate (Como), Italy (applicant), represented by Perani & Partners S.p.A, Piazza San Babila 5, 20122 Milano, Italy (professional representative).
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of European Union
trade mark application No
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 15 594 ‘NEXT’.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, 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 marks on which the opposition is based, inter alia, European Union trade mark registration No 15 594 ‘NEXT’.
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 02/01/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 02/01/2009 to 01/01/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely all the goods in Classes 3, 11, 14, 18, 20, 24, 25 and 27. However, since the opposition is based on many different classes and types of goods, for reasons of procedural economy, the Opposition Division will first consider the proof of use in relation to the goods in Class 20 on which the opposition is, inter alia, based. The issue of proof of use in relation to the remaining goods in Classes 3, 11, 14, 18, 24, 25 and 27 will not be examined at this stage of the proceedings and will be examined later only if necessary. In view of the above, the evidence must show use of the trade mark for the goods in Class 20 on which the opposition is, inter alia, based, namely the following:
Class 20: Furniture; beds; bed heads; sofas, sofa beds; chairs; armchairs; tables; pillows; duvets; cushions; mattresses; bedding; parts and fittings for all the aforesaid goods.
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 10/02/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/04/2015 to submit evidence of use of the earlier trade mark. This term was extended at the request of the opponent until 15/06/2015. On 15/06/2015, within the time limit, the opponent submitted evidence of use. The opponent also referred to the evidence submitted earlier in the proceedings, namely the evidence submitted on 13/10/2014.
On 05/01/2016, in its final submissions, the opponent submitted additional evidence. While part of this evidence is simply a better-quality version of the evidence already submitted, there is some new evidence as well. In the present case, the issue of whether or not the Office may exercise the discretion conferred on it by Article 76(2) EUTMR to take into account the additional new evidence submitted on 05/01/2016 can remain open, as the evidence submitted within the time limit is sufficient to prove the required genuine use of the earlier trade mark. Therefore, the new items of evidence submitted on 05/01/2016 will not be listed and examined.
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, inter alia, the following:
Evidence submitted on 13/10/2014:
Printout, dated 23/12/2012, from the opponent’s website www.next.co.uk, which provides details of the history of the opponent and its parent companies, ‘Next Group Plc’ and ‘Next Plc’. It is mentioned that the opponent company operates more than 500 stores in the UK and Ireland and almost 200 stores in more than 30 countries oversees. In addition, ‘Next’ is referred to in connection with stores and department stores in the UK, for example, in London, Nottingham, Birmingham, Dudley and Newcastle, etc. and in connection with products such as ‘Next’ childrensware, ‘Next’ Interiors and ‘Next’ Home. For example, the printout refers to a café operating in a department store in Edinburgh in 1984. It states that in 1994, ‘Next’ was trading from 300 stores in 16 countries worldwide. The evidence refers to the acquisition of a mail order company in 1986, the launch of ‘Next’ Directory (mail-order catalogue service) in 1988, the launch of online shopping from the ‘Next’ Directory at www.next.co.uk in 1999, the launch of www.nextflowers.co.uk in 2001 and the launch of the wedding list service for ‘Next’ Home in 2005. In 2007, ‘Next’ celebrated its silver 25th jubilee, and, in 2012 its 30 year jubilee. In 2010 ‘Next’ was confirmed as Official Clothing and Homeware Supplier to the London 2012 Olympic Games and Paralympic Games and in 2011 ‘Next’ opened its first combined fashion, home and garden store in the UK (Exhibit 1).
Brochure entitled ‘NEXT Factfile’ dated 04/02/2005, for distributing to prospective employees, which provides details of the opponent’s business, history and business model and strategy, product development and marketing, directory, warehouses, etc. along with the awards obtained by the opponent. It states, inter alia, that in 2004 ‘NEXT’ opened it first store in Denmark. In addition, in a section entitled ‘The Product Selection Process’, it is explained in detail how the products selection design and manufacture process is carried out. It is mentioned that ‘the NEXT product range is designed almost entirely in- house and is exclusive to the Next brand’ and that ‘each collection for fashion or home is the result of nearly twelve months planning by our talented product teams’. At page 16, ‘NEXT Home’ is mentioned in relation to fabrics, a range of contemporary furniture and furnishings as well as wallcovering, rugs, lighting and accessories (Exhibit 2).
Selection of pages from the opponent’s mail order catalogues ‘Next Directory’ for spring/summer HOME 2009, spring/summer 2009, Autumn ‘next’ home 2010, Christmas 2010, autumn home 2011, summer home 2012, spring/ summer ‘next’ home 2013. The catalogues show, amongst others, a wide variety of goods for sale such as cot beds, baby changing chests, kids wardrobes, drawer chests, nursery furniture, baby cots, bed mattresses, moses baskets, moses stands, swinging cribs, linen sets, rugs, curtains, divans, headboards for beds, chests, mirrors, beds, tables, bookcases, bedsteads, chests, etc. The catalogues contain detailed product information and the prices are in GBP. (Exhibit 3).
‘Store Address List’, dated 05/02/2013, showing the code, location, physical address and telephone number of the opponent’s numerous stores across the UK and Ireland. In its observations of 13/10/2014, the opponent states that, in the UK, the opponent operates around 500 stores, with a store in almost every town and city. The evidence also shows a printout from ‘NEXT Directory Online’ showing the locations of ‘NEXT’ stores worldwide, including many EU countries (Exhibit 4).
Excerpts from the ‘Annual Report and Accounts’ dated January 2013. The report is for ‘Next Plc’ for 2013 and includes information such as total sales figures for different EU countries, a business report, ‘Next’ product and brand information, profitability, sales analysis, etc. On page 6, for example, it is mentioned that in January 2013 the number of stores is 540 and in January 2012 it was 536 (Exhibit 5).
Schedule which provides sales figures of furniture products sold under the ‘Next’ sign in the UK and Eire for the period 2007 – 2011 (Exhibit 6).
Photographs of ‘Next’ chairs and of the fabric used (Exhibit 7).
Schedule showing Brand Advertising Spend 2008 - 2011 which provides an overview of the opponent’s advertising expenditure for publicising its products (Exhibit 8).
Press article from ‘Retail week’ entitled ‘The Next big thing’ dated 19/08/2011 in relation to the opening of a new ‘Next’ home and garden store. It is said that ‘Next opened a store last week for its homewares, furniture and clothing’ (Exhibit 10).
Printouts from the opponent’s website with photographs of several of the opponent’s shops in different locations in the UK in 2010. Samples of labels used in the UK and Ireland with the sign ‘Next’, mostly for clothing. (Exhibit 11).
Extract from ‘Interbrand’ showing that ‘NEXT’ is the fifth most valuable UK retail brand in 2012 (Exhibit 14).
Evidence submitted on15/06/2015:
A printout from www.next.co.uk showing the location and full address details of 53 dedicated ‘Next home’ and ‘Next home and garden’ stores in the United Kingdom (Exhibit 1a).
Press article from ‘the Guardian’ entitled ‘Next branches out into garden centres’ dated 03/08/2011 in relation to the opening of a first new ‘Next home and garden’ store in West Sussex. Other press articles in relation to the same tpoic from ‘DIY week’, ‘Retail Gazette’, Amateurgardening.com, Telegraph.co.uk dated in 2011, 2012 and 2013 (Exhibit 3).
Selection of pages from the opponent’s catalogues ‘Next Directory’ showing various goods. ‘Next home’ catalogue 2011 displays ‘Next’ TV stands and Christmas 2013 catalogue shows bed mattresses, moses baskets, moses stands, baby cots and cribs. (Exhibit 4).
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.
The catalogues, the store address information and annual report and accounts show that the place of use is mostly the United Kingdom as well as other EU countries. This can be inferred from the language of the documents, the currency mentioned (GBP) and numerous addresses throughout the United Kingdom. Therefore, the evidence relates to the relevant territory.
The majority of the evidence is dated within the relevant period.
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
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.
The documents filed, namely the press articles, the catalogues, the store address information, the sales figures, as well as the ‘Annual Report and Accounts’ provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.
The applicant argues that the sales figures lack any probative value and they are not supported by additional evidence showing to which kind of goods they refer. While it is true that the sales figures come from the opponent itself, account must be taken in this case of the fact that these figures are actually corroborated, at least partially by the ‘Annual Report and Accounts’ dated January 2013, which is a public document. In addition, the Opposition Division observes that the evidence submitted clearly demonstrates that there has been public and outward use of the mark. This can be inferred from the enclosed press articles, brochures and the evidence showing the great number of stores where the goods are offered. The evidence shows that the opponent offered its goods through a great number of traditional stores (more than 500) during the relevant period. Taking into account the large number of stores, the territorial scope of use, the frequency of use shown throughout the whole relevant period, it is deemed that actual use of the trade mark at issue took place to a sufficient extent.
In this regard it should be remembered that evidence of use may be of an indirect/circumstantial nature. Such indirect evidence can play a decisive role in the overall assessment of the evidence submitted. Its probative value has to be carefully assessed. For instance, the judgment of 08/07/2010, T-30/09, ‘Peerstorm’, EU:T:2010:298, § 42 et seq., found that even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment.
Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall 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. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.
In the present case, the Opposition Division considers that the evidence shows that the mark has been used as registered. The applicant argues that the sign is not seen on the goods themselves and that the catalogues identify different pieces of furniture as ‘Burlington’, ‘Westport’, ‘Harbour’, ‘Isabella’, ‘Valencia’, etc. Although, admittedly, on a number of occasions the different types of furniture are referred to by such names, these additions do not alter the distinctive character of the sign. This is because the sign ‘Next’ is clearly present on each page of the catalogue and the nature of the goods is such that the brand is normally not put in a visible place on the goods. In fact, the opponent enclosed several additional photographs to demonstrate that some pieces of furniture are visibly designated with the sign ‘Next’. Furthermore, it is not at all uncommon in the relevant trade sector that the different lines of furniture products bear an additional distinguishing name or sub-brand. Such names do not alter the distinctive character of the sign, as they designate a separate line/sub-brand/model of goods. The Opposition Division considers that the additional words ‘Burlington’, ‘Westport’, ‘Harbour’, ‘Isabella’, ‘Valencia’, etc. simply designate different lines of goods. Moreover, not all the goods shown in the catalogues bear such an additional name and there are sufficient examples in the evidence demonstrating use.
Therefore, the Opposition Division concludes that nature of use of the earlier trade mark complies with the requirements of Article 15(1) EUTMR and the mark is used as registered.
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, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods in Class 20 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. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub categories.
(14/07/2005, T‑126/03, Aladin, EU:T:2005:288)
In the present case the evidence shows genuine use of the trade mark for the following goods: beds; bed heads; sofas, sofa beds; chairs; tables; pillows; duvets; cushions; mattresses; bedding.
In addition, the evidence proves use for a variety of different pieces of furniture. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category furniture in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for furniture.
No evidence of use has been shown in relation to armchairs; parts and fittings for all the aforesaid goods (furniture; beds; bed heads; sofas, sofa beds; chairs; armchairs; tables; pillows; duvets; cushions; mattresses; bedding).
Therefore, the Opposition Division will only consider the abovementioned goods in Class 20 in its further examination of the opposition, namely: Furniture; beds; bed heads; sofas, sofa beds; chairs; tables; pillows; duvets; cushions; mattresses; bedding.
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.
As mentioned above, the opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 15 594 in relation to the goods in Class 20 for which use has been proven.
The goods on which the opposition is based are the following:
Class 20: Furniture; beds; bed heads; sofas, sofa beds; chairs; tables; pillows; duvets; cushions; mattresses; bedding.
The contested goods are the following:
Class 20: Cots for use by children.
Contested goods in Class 20
The contested cots for use by children are included in the broad category of the opponent’s beds. Therefore, they are identical.
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 are directed at the public at large. The degree of attention is considered to be average.
Earlier trade mark
The relevant territory is the European Union.
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark and consists of the word element ‘NEXT’.
The contested sign is a figurative mark and consists of the conjoined verbal elements ‘next’, ‘2’ and ‘me’. The letters are written in rather standard characters in lowercase, with the exception of the letter ‘X’ which is highly stylised and is represented in an extended form in darker and lighter colour shades. The numeral ‘2’ is also slightly lighter than the remaining darker characters, which assists the perception of the single elements ‘next’, ‘2’ and ‘me’.
The earlier mark consists of only one component and its distinctiveness is normal in relation to the relevant goods. This is because its meaning in English (see below in conceptual comparison) is not descriptive or allusive in relation to the goods. In addition, the earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.
Likewise, the contested sign has no element that could be considered more dominant (visually eye-catching) than other elements. As for the distinctiveness of the elements of the contested sign, it has no elements that could be considered clearly more distinctive than other elements.
Visually, the signs coincide in the common element ‘NEXT’, which represents the totality of the earlier mark and the first element of the contested sign. As mentioned above, this element will be singled out from the remaining elements of the contested sign in view of its representation, concept and the concept of the other elements. While the signs differ because of the remaining elements ‘2’ and ‘me’ of the contested sign, which have no counterparts in the earlier sign and because of the representation of the letter ‘X’ in the contested sign, it should be borne in mind that consumers normally attach more importance to the beginning of signs 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.
Admittedly, the letter ‘X’ in the element ‘next’ of the contested sign is highly stylised, which is visually noticeable. 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
Therefore, in view of the coincidences between the signs and the abovementioned principles, but also taking into account the established visual differences due to the noticeably stylised letter ‘X’ in the contested sign and the remaining elements therein creating the impression of a longer sign, the signs are considered to be visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the syllable ‘NEXT’ present identically in both signs. The pronunciation differs in the syllables ‘2-me’ of the contested sign, which have no counterparts in the earlier mark. Despite the different number of syllables in each of the signs, the signs are considered to be aurally similar to an average degree because the earlier mark is totally included in the beginning of the contested sign and the remaining two syllables of the contested sign do not dissipate the aural identity between the earlier mark and the beginning of the contested sign.
Conceptually, both marks consist of English words. The common word in both signs ‘next’, means in English: ‘lying nearest in place or position; immediately neighbouring, adjacent, or adjoining (irrespective of whether a particular order or sequence is mentioned or implied)’ (Oxford English Dictionary online, http://www.oed.com). The numeral ‘2’ in the context of the contested sign will be associated with the informal way of referring to the word ‘to’. The word ‘me’ is ‘the objective case of the first person pronoun I’ (Oxford English Dictionary online). Therefore, viewed as a whole, the contested sign will be associated with the concept of ‘nearest myself, adjacent to myself’. Consequently, in view of the same general concept underlying the word ‘next’, the signs are considered similar to an average degree.
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’).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The contested goods are identical to the opponent’s goods and they are directed at the public at large having an average degree of attention. The earlier trade mark and the contested sign are visually similar to a low degree and aurally and conceptually similar to an average degree. The similarities between the signs are on account of the common and normally distinctive element ‘NEXT’, which constitutes the totality of the earlier mark and represents the beginning of the contested sign.
Although there are certain visual, aural and conceptual differences between the signs, it is considered that the circumstances of the case are such that there is a risk of likelihood of confusion/association between the marks. This is because the consumers will single out the element ‘Next’ in the contested sign from the remaining elements. While these remaining elements will not be overlooked, the coincidences between the signs are at the beginning of the contested sign. It is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier mark configured in a different way according to the type of goods, which it designates. Therefore, consumers could be led to believe that the owner of the ‘Next’ trade mark has launched a new line of goods designated by the trade mark applied for.
The Opposition Division highlights the fact that, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) CMTR there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes owing to their similarities that they are derived from the same undertaking or indeed an economically-linked undertaking. This is clearly the case and the relevant consumer may see the contested mark as being a brand variation for a different line of goods.
In view of the foregoing and taking into account all the relevant circumstances of the case, including the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes, that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public in relation to identical goods.
The applicant argues that there are 737 registered/applied for trade marks in the database of the trade mark offices of European countries for goods in Class 20 beginning with the word ‘Next’. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘Next’. Under these circumstances, the applicant’s claims must be set aside.
The applicant refers to previous decisions of the Office to support its arguments. 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 applicant are not relevant to the present proceedings because the signs are not comparable.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 594 ‘NEXT’. 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 mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness. Likewise, there is no need to examine the proof of use in relation to the remaining goods on which the opposition is also based, as the result would be the same.
As the earlier right EUTM No 15 594 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier 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 and Article 8(1)(b) in conjunction with Article 8(2)(c) EUTMR.
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 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 Rule 94(3), (6) and (7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.