OPPOSITION No B 2 340 886

Ikon Footwear Limited, Unit 4, Eastboro Fields, Hemdale, Nuneaton, Warwickshire, CV11 6GL, United Kingdom, (opponent), represented by Novagraaf UK, 5th Floor, 145 Cannon Street, London, EC4N 5BP, United Kingdom (professional representative)

a g a i n s t

I.C.O.N. Europe, S.L. Rúa Amor Ruibal, N° 11 Entlo., 36203 Vigo (Pontevedra), Spain (applicant), represented by Herrero & Asociados, Alcalà, 35, 28014 Madrid, Spain (professional representative)

On 13/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 340 886 is partially upheld, namely for the following contested goods and services:

Class 25: Ready-made clothing; Footwear; Headgear.

Class 35: Wholesaling, retailing and sale via global computer networks of preparations for the hair, essential oils exclusively for hair care purposes, cosmetics exclusively for hair care purposes, pharmaceutical preparations, sunglasses, computer software (programs), jewellery, horological instruments, publications, instructional and teaching materials, articles made of leather, umbrellas, ready-made clothing, footwear and headgear.

2. Community trade mark application No 12 349 122 is rejected for all the above goods and services. It may proceed for the remaining goods and services including the uncontested ones.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of Community trade mark application No 12 349 122 namely against all the goods and services in Classes 25 and 35. The opposition is based inter alia on Community trade mark registration No 9 867 367. The opponent invoked Article 8(1)(b) and 8(5) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Community trade mark registration No 9 867 367 not under use obligation.

1. The goods and services

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

Class 25: Articles of clothing for men, women and children; headgear; footwear; boots, shoes and slippers; sportswear; sports footwear, sports shoes; trainers; parts and fittings for all the aforesaid goods; none of the aforesaid goods being specifically for use in connection with aircraft, watercraft, and other air and water vehicles, motorcycles, snow mobiles and all-terrain vehicles, or for use in connection with power sports.

Class 35: Retail services, electronic shopping retail services, mail order retail services all in relation to articles of clothing for men, women and children, headgear, footwear, boots, shoes and slippers, sportswear, sports footwear, sports shoes, trainers clothing accessories, none of the aforesaid goods being specifically for use in connection with aircraft, watercraft, and other air and water vehicles, motorcycles, snow mobiles and all-terrain vehicles, or for use in connection with power sports.

The contested goods and services are the following:

Class 25: Ready-made clothing; Footwear; Headgear.

Class 35: Advertising; Wholesaling, retailing and sale via global computer networks of preparations for the hair, essential oils exclusively for hair care purposes, cosmetics exclusively for hair care purposes, pharmaceutical preparations, sunglasses, computer software (programs), jewellery, horological instruments, publications, instructional and teaching materials, articles made of leather, umbrellas, ready-made clothing, footwear and headgear.

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 25

The contested Ready-made clothing; Footwear; Headgear overlap with the opponent’s Articles of clothing for men, women and children; headgear; footwear none of the aforesaid goods being specifically for use in connection with aircraft, watercraft, and other air and water vehicles, motorcycles, snow mobiles and all-terrain vehicles, or for use in connection with power sports. Therefore, they are considered identical.

Contested services in Class 35

The contested retailing and sale via global computer networks of ready-made clothing, footwear and headgear overlap with the opponent’s Retail services, electronic shopping retail services, mail order retail services all in relation to articles of clothing for men, women and children, headgear, footwear, none of the aforesaid goods being specifically for use in connection with aircraft, watercraft, and other air and water vehicles, motorcycles, snow mobiles and all-terrain vehicles, or for use in connection with power sports. They are considered identical.

The contested Wholesaling of ready-made clothing, footwear and headgear none of the aforesaid goods being specifically for use in connection with aircraft, watercraft, and other air and water vehicles, motorcycles, snow mobiles and all-terrain vehicles, or for use in connection with power sports is highly similar to the opponent’s services already mentioned above as wholesaling and retail services have the same nature, they can coincide in origin, they are complementary.

The contested Wholesaling, retailing and sale via global computer networks of preparations for the hair, essential oils exclusively for hair care purposes, cosmetics exclusively for hair care purposes, pharmaceutical preparations, sunglasses, computer software (programs), jewellery, horological instruments, publications, instructional and teaching materials, articles made of leather, umbrellas are similar to the opponent’s services as they all are retail services even if of different goods. They have the same nature and can have the same origin and same distribution channels.

The contested Advertising have no relevant point of contact with the earlier goods and services. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc. Their purpose and method of use are different. They also differ in their end users, distribution channels and producers/providers. Finally, they are neither in competition with each other nor complementary to each other. They are dissimilar.

2. The signs

	I.C.O.N.
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘I(*)ON’. However, they differ in their second letters, respectively ‘K’ and ‘C’, in the stylization of the earlier trade mark and in the fact that in the contested sign, the letters are separated by dots.

Aurally, letters “K” and “C” being pronounced identically, the pronunciation of the signs coincides, and to that extent the signs are aurally identical for the part of the public that would pronounce the contested sign as a word. For part of the public, the letters of the contested sign could be pronounced one by one because of the dots between the letters. In this case, some letters can still be pronounced identically whether they are part of a word or not such as the ‘i’ or the ‘o’ in French, Spanish, Italian or English for example while the letters ‘k’ and ‘c’ would be pronounced differently.

Conceptually, ‘ikon’ is, according to the New Oxford Dictionary of English, a variant spelling of ‘icon’ in the sense of ‘a devotional painting of Christ or another holy figure …’ and, consequently, the signs are conceptually identical for the English-speaking part of the public. ‘Ikon’ is also existing in Denmark and Sweden and comes close to the Finnish ‘ikoni’, the Estonian ‘ikoon’, the Latvian, Polish, Czech, Slovak, Croatian, ‘ikona’, the Hungarian ‘ikon’, while the French ‘icône’, the Spanish ‘icono’, the Italian ‘icona’ come close to ‘icon’. Generally speaking, because of its common Greek origin, it is believed that the majority of the European public would be able to associate both marks to the same meaning.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Relevant public – degree of attention

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

In the present case, the goods and services found to be identical or similar to different degrees are directed at the public at large and to a more professional public. The degree of attention can vary from average to higher.

6. Global assessment, other arguments and conclusion

The goods and services are identical, similar to different degrees and dissimilar. The level of attention of the public can vary from average to high and the earlier trade mark has been considered to have an average degree of distinctiveness.

The trade marks were found similar because they share the same sequence of three letters “I*ON” and the second letter respectively K/C is phonetically identical for part of the public ignoring the dots in the contested sign. In addition, it was found that both words would be conceptually associated at least by the majority of the European public able to understand that they both have the same Greek root and referring to a devotional painting. Therefore, the differences between the signs which are their second letters, the graphic representation of the earlier sign and the dots between the letters in the contested sign, are not enough to counterbalance the similarities.

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

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

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these services must be rejected.

Since the opposition is partially 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 and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks under use requirements:

• Community trade mark registration No 460 774 for articles of clothing for men, women and children; articles of footwear, headgear, boots, shoes and slippers in Class 25.

• United Kingdom trade mark registration No 2 312 125 IKON for the bringing together, for the benefit of others, of variety of goods, enabling customers to conveniently view and purchase those goods in retail and wholesale clothing, footwear and accessories outlets, and/or via the Internet web site for retail and wholesale of clothing, footwear and accessories and/or via mail order catalogues for retail sale of clothing, footwear and accessories in Class 35.

• United Kingdom trade mark registration No 2 402 674 IKON for Articles of clothing; articles of headgear; articles of footwear; boots; sports boots; shoes, sport shoes, sandals, trainers, slippers and parts and fittings for these goods; socks, stockings and tights; none of the aforesaid goods being specifically for use in connection with motorcycles, snow mobiles and all-terrain vehicles, or for use in connection with power sports in Class 25.

• United Kingdom trade mark registration for the series of marks IKON No 2 117 802 for articles of clothing for men, women and children; articles of footwear, headgear, boots, shoes and slippers in Class 25.

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services and there is no need to examine the evidence of use.

The opposition must continue for the services found dissimilar under Article 8(1)(b) CTMR, namely Advertising in Class 35.

REPUTATION – ARTICLE 8(5) CTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier CTM No 9 867 367 for which the opponent claimed repute in the EU for all the goods and services in Classes 25 and 35.

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) CTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) CTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 27/11/2013. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely all the goods and services covered in Classes 25 and 35:

Class 25: Articles of clothing for men, women and children; headgear; footwear; boots, shoes and slippers; sportswear; sports footwear, sports shoes; trainers; parts and fittings for all the aforesaid goods; none of the aforesaid goods being specifically for use in connection with aircraft, watercraft, and other air and water vehicles, motorcycles, snow mobiles and all-terrain vehicles, or for use in connection with power sports.

Class 35: Retail services, electronic shopping retail services, mail order retail services all in relation to articles of clothing for men, women and children, headgear, footwear, boots, shoes and slippers, sportswear, sports footwear, sports shoes, trainers clothing accessories, none of the aforesaid goods being specifically for use in connection with aircraft, watercraft, and other air and water vehicles, motorcycles, snow mobiles and all-terrain vehicles, or for use in connection with power sports.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 30/10/2014 the opponent submitted evidence to support this claim. 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 consists of the following documents:

• Witness Statement of John Rogerson dated 30/10/2014, the Managing director of Ikon Footwear Limited, with the following exhibits:

• Exhibit JR 1 consists of sample promotional materials for footwear. The pictures are undated but declared to be used between 2012 and 2014.

• Exhibit JR 2 consists of an extract from ATTIRE magazine referring to Ikon footwear dated July/August 2012 and the attendance of the opponent at the Moda exhibition at Birmingham NEC in August 2012.

• Exhibit JR 3 consists of an extract from OUT ON A LIMB magazine dated August/September 2012 referring to the attendance of the opponent at the Moda exhibition at Birmingham NEC in August 2012.

• Exhibit JR 4 consists of an extract from the opponent’s website in 2013 setting out the history of the company.

• Exhibit JR 5 consists of an undated postcard used as a sales promotional item declared to be dated 2013 and showing the trade mark for footwear.

• Exhibit JR 6 consists of two undated photographs taken of an exhibition stand for footwear.

• Exhibit JR 7 consists of a copy of an undated brochure for footwear dated 2004.

• Exhibit JR 8 consists of a copy of a brochure dated 2005 footwear.

• Exhibit JR 9 consists of a copy of an undated brochure for footwear declared to be dated 2014 (namely after the relevant date).

• Exhibit JR 10 consists of an excerpt dated May 2011 issue by Scootering and featuring an advert for footwear bearing the trade mark

• Exhibit JR 11 consists of an excerpt with handwritten date December 2013 from issue of GQ and features an advert for footwear bearing the trade mark IKON ORIGINAL.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Despite showing some use of the trade mark IKON used in different figurative forms for footwear, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) CTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) CTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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

Isabel de ALFONSETI HARTMANN

Jessica Norma LEWIS

Ana MUÑIZ RODRIGUEZ

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.