OPPOSITION No B 2 363 201

Leineweber GmbH & Co. KG, Wittekindstr. 16-18, 32051 Herford, Germany (opponent), represented by Ruttensperger Lachnit Trossin Gomoll Patent-und Rechtsanwälte Partnerschaftsgesellschaft MBB, Arnulfstrasse 58, 80335 München, Germany (professional representative).

a g a i n s t

H. Best Ltd, 1411 Broadway, 8th floor, New York 10018, United States of America (applicant), represented by Gevers, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium (professional representative).

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

DECISION:

1. Opposition No B 2 363 201 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 12 498 317, namely against all of the goods in Classes 3 and 25. The opposition is based on European Union trade mark registration No 11 660 495 and European Union trade mark registration No 8 429 425. The opponent invoked Article 8(1)(b) EUTMR.

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

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

EUTM registration No 11 660 495

Class 3: Bleaching preparations and other substances for laundry use; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 25: Clothing, in particular outerwear for women and for men, sportswear, belts, footwear, including shoes for sports, headgear.

EUTM registration No 8 429 425

Class 25: Footwear.

The contested goods are the following:

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; perfumery, namely, eau de perfume, eau de toilette, perfume, cologne; cosmetics, namely, foundation make-up, face powder, cover-up cream and concealer, lipstick, lip gloss, lip conditioner, eye liner, eye shadow, mascara, eyebrow pencil, eyebrow fixer, cosmetic pencils, cheek blush, nail enamel, skin bronzers, body sunscreen and facial sunscreen; non-medicated toiletries, namely, after-shave lotions, shaving cream, skin soap, facial cleansers, facial moisturizers, eye cream, eye gel, eye makeup remover, facial makeup remover, non-medicated skin blemish preparations, facial toner; non-medicated toiletries, namely, facial soaps, hand cream, body cream, body lotion, body oil, body gel, body powder, non-medicated skin care preparations, non-medicated anti-wrinkle cream, non-medicated skin renewal cream, facial exfoliating preparations, facial masks, self-tanning preparations; non-medicated toiletries, namely, personal soaps, hair shampoo, hair conditioner, hair spray, hair mousse, hair gel, hair humectant, hair lotions, antiperspirant/deodorant and essential oils for personal use.

Class 25: Clothing, footwear, headgear; underwear; shirts; t-shirts; polo shirts; jerseys; sweatshirts; pants; jeans; shorts; sweaters; sweatpants; jackets; coats; vests; warm-up suits; bodysuits; loungewear; sleepwear; shape wear; briefs; boxer briefs; boy shorts; thigh slimmers; pant liners; body shapers; tank tops; crewneck shirts; v-neck shirts; waist bands; thigh shapers; trunks; socks; hosiery; tights; leotards; leggings; swimwear; ski wear; cycling shorts; cycling gloves; leg warmers; gloves; scarves; hats; caps; toques; visors; headbands; hoods; bandanas; belts; mittens; shoes; sandals; sports shoes; boots; lingerie; tops; pajamas; ties; jogging suits; women’s intimate apparel; sports bras; bras; panties; slips; teddies; camisoles; foundation garments; bustiers; active wear; sportswear and outerwear.

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 opponent’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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 3

Perfumery, essential oils (included twice in the contested application), cosmetics, hair lotions (included twice in the contested application); dentifrices are identically contained in the list of goods of earlier mark No 11 660 495 and in the list of goods of the contested sign.

The contested perfumery, namely, eau de perfume, eau de toilette, perfume, cologne is included in the broad category of the opponent’s perfumery (EUTM No 11 660 495). Therefore, they are identical.

The contested cosmetics, namely, foundation make-up, face powder, cover-up cream and concealer, lipstick, lip gloss, lip conditioner, eye liner, eye shadow, mascara, eyebrow pencil, eyebrow fixer, cosmetic pencils, cheek blush, nail enamel, skin bronzers, body sunscreen and facial sunscreen are included in the broad category of the opponent’s cosmetics (EUTM No 11 660 495). Therefore, they are identical.

The contested skin soap, facial soaps and personal soaps are included in the broad category of the opponent’s soaps (EUTM No 11 660 495). Therefore, they are identical.

The contested non-medicated toiletries, namely, after-shave lotions, shaving cream, facial cleansers, facial moisturizers, eye cream, eye gel, eye makeup remover, facial makeup remover, non-medicated skin blemish preparations, facial toner; non-medicated toiletries, namely, hand cream, body cream, body lotion, body oil, body gel, body powder, non-medicated skin care preparations, non-medicated anti-wrinkle cream, non-medicated skin renewal cream, facial exfoliating preparations, facial masks, self-tanning preparations; non-medicated toiletries, namely, hair shampoo, hair conditioner, hair spray, hair mousse, hair gel, hair humectant, and antiperspirant/deodorant are included in the broad category of the opponent’s cosmetics (EUTM No 11 660 495). Therefore, they are identical.

Contested goods in Class 25

Clothing and headgear are identically contained in the list of goods of earlier mark No 11 660 495 and in the list of goods of the contested sign.

Footwear is identically contained in the lists of goods of both earlier marks and in the list of goods of the contested sign.

The contested underwear; shirts; t-shirts; polo shirts; jerseys; sweatshirts; pants; jeans; shorts; sweaters; sweatpants; jackets; coats; vests; warm-up suits; bodysuits; loungewear; sleepwear; shape wear; briefs; boxer briefs; boy shorts; thigh slimmers; pant liners; body shapers; tank tops; crewneck shirts; v-neck shirts; waist bands; thigh shapers; trunks; socks; hosiery; tights; leotards; leggings; swimwear; ski wear; cycling shorts; cycling gloves; leg warmers; gloves; scarves; belts; mittens; lingerie; tops; pajamas; ties; jogging suits; women’s intimate apparel; sports bras; bras; panties; slips; teddies; camisoles; foundation garments; bustiers; active wear; sportswear and outerwear are included in the broad category of the opponent’s clothing (EUTM No 11 660 495). Therefore, they are identical.

The contested hats; caps; toques; visors; headbands; hoods; bandanas are included in the broad category of the opponent’s headwear (EUTM No 11 660 495). Therefore, they are identical.

The contested shoes; sandals; sports shoes; boots are included in the broad category of the opponent’s footwear (EUTMs No 11 660 495 and No 8 429 425). Therefore, they are identical.

2. Relevant public – degree of attention

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

In the present case, the goods found to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

	(X)
Earlier trade marks	Contested sign

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).

Earlier mark 1) is a figurative mark composed of a symbol that may be perceived by part of the public as a stylised letter ‘X’.

Earlier mark 2) is a figurative mark composed of a stylised letter ‘X’ interrupted in the upper part by a white space.

The contested sign is a word mark, ‘(X)’.

The earlier marks and the contested sign have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the contested sign is similar to earlier mark 1) to the extent that, while at least part of the relevant public may perceive this earlier mark as merely a figurative sign, another part may perceive it as resembling the letter ‘X’. Nevertheless, earlier mark 1) is a highly stylised version of the letter ‘X’, with tapered and curving strokes, and thus it gives a very different visual impression from the contested sign, which is a standard letter ‘X’ in brackets. Earlier mark 2) and the contested sign are similar to the extent that they both depict an upper case letter ‘X’. However, they differ in the exact manner in which the letter is depicted. In earlier mark 2), the ‘X’ includes a blank space in its upper right part, while the ‘X’ in the contested sign is in brackets. Therefore, the signs are similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, for the part of the relevant public that will perceive earlier marks 1) and 2) as containing the letter ‘X’, the pronunciation of these signs and the contested sign is identical. However, for the part of the public that will perceive earlier mark 1) merely as a figurative sign, an aural comparison is not possible between this mark and the contested sign.

Conceptually, part of the public in the relevant territory will perceive the letter ‘X’ as such in earlier marks 1) and 2) and in the contested sign. To this extent, these signs and the contested sign are conceptually identical. However, for the part of the public that will not perceive the letter ‘X’ in earlier mark 1), this sign is not conceptually similar to the contested sign.

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

4. Distinctiveness of the earlier 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 trade mark enjoys a high degree of distinctiveness as result of its long-standing and intensive use in the Federal Republic of Germany in connection with some of the goods for which it is registered, namely clothing and footwear. This claim must be properly considered, given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. 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).

On 26/01/2016, after expiry of the time limit, the opponent submitted additional evidence consisting of:

• Rankings: untranslated TextilWirtschaft rankings regarding the biggest textile suppliers in Germany in 2011, 2012, 2013 and 2014, in which the company Brax Leineweber is found at positions 16 and 15.

• Company web pages: screenshots, dated 25/01/2016, of the Brax website (https://corporate.brax.com/en_EN/company/about-us) concerning the vision, identity, facts, history and logistics of the company. Screenshots, dated 02/12/2015, of the Brax website (https://shop.brax.com/de/de/index.html) concerning the ‘online shop’. Screenshots, dated 02/12/2015, of the Brax website (https://corporate.brax.com/de_DE/storefinder) regarding the location of the company’s stores.

• Online shop web pages: screenshots, dated 02/12/2015, of different online shops where products of the company Brax are sold.

• Press articles: an untranslated press article from Textilwirtschaft, at www.textilwirtschaft.de, dated 13/03/2014, about the opening of the 100th Brax store. Untranslated screenshots, dated 02/12/2015, from the Borussia Mönchengladbach website (http://www.borussia.de/wir-sind-borussia-herzlich-willkommen.html) regarding sponsorship.

• Advertisement clippings: untranslated advertisement clippings dated 10/06/2011, 24/01/2011 and 03/01/2012.

• Catalogues: scanned extracts of Brax product catalogues in which earlier sign 1) cannot be found and earlier sign 2) is hard to identify as such because it is combined with other elements.

• Pictures: screenshots, dated 02/12/2015, of the website http://nordkurvenfotos.de/, showing photographs taken during home games of Borussia Mönchengladbach, in which the company name BRAX is visible in the banners next to the football field. Pictures dated 06/05/2010 and undated pictures of products, labels and buttons bearing earlier trade mark 2) and the Brax mark.

There has been consideration of whether or not to take account of this additional evidence (as summarised above). However, this late evidence is not deemed to be only supplementary to the body of evidence filed within the time limit; therefore, it will not be taken into account (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 28‑30).

Therefore, the evidence to be taken into account, having been filed within the specified time limit, is the following:

• Rankings: four untranslated TextilWirtschaft rankings, dated 2013, in which the company Brax Leineweber is found at positions 49 and 15.

• Press articles: an untranslated press article from the website www.textilwirtschaft.de, dated 13/03/2014, about the opening of the 100th Brax store. An untranslated press article from the website www.textilwirtschaft.de, dated 03/04/2014, about the sponsorship of Borussia Mönchengladbach.

• Catalogues: scanned extracts from Brax product catalogues in which earlier sign 1) cannot be found and earlier sign 2) is not used in isolation in the form in which it is registered but, instead, is used in combination with other trade mark elements. In particular, earlier sign 2) is used in varying stylised forms, sometimes with other elements above it and sometimes appearing as the final letter of the trade mark ‘BRAX’. This usage in these forms does not allow the mark to be identified as carrying a trade mark message in isolation.

• Pictures: pictures, dated 06/05/2010, of products bearing earlier trade mark 2) and the Brax mark.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark has acquired a high degree of distinctiveness through its use.

First, none of the evidence refers to earlier trade mark 1) and, therefore, the opponent’s claim can be directly rejected as regards this mark without need for any further examination.

Concerning earlier trade mark 2), the only evidence referring directly to it are the scanned extracts from Brax product catalogues (in which earlier trade mark 2) is hardly perceptible in isolation, as explained above) and the pictures of different Brax products, in which earlier mark 2) is recognisable and used in isolation only in pictures No 1, No 2, No 3, No 7 and No 8.

Therefore, earlier mark 2) has not been used only in isolation but rather has been used with other trade mark elements, in particular in close association or integrated with the opponent’s BRAX mark.

The evidence does not provide any indication of the extent of recognition by the relevant public of the mark, sufficient information about the market presence of the sign or any indication that true brand awareness amongst the relevant public has been achieved.

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.

5. 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, and the degree of similarity between the marks and between the goods or services identified (eighth recital 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 (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 at issue are identical. Earlier marks 1) and 2) are, for at least part of the relevant public, visually similar to a low degree and aurally and conceptually identical, but only to the extent that they all contain what could be perceived as the letter ‘X’.

It should be noted that the General Court held that the global assessment of the likelihood of confusion between signs consisting of a single letter (or a combination of letters not recognisable as a word) follows the same rules as that in respect of word signs comprising a word, a name or an invented term (06/10/2004, joined cases T117/03 - T119/03 & T171/03, NL, EU:T:2004:293, § 47 and 48; and 10/05/2011, T187/10, G, EU:T:2011:202, § 49).

In this respect, the Court has made it clear that the fact that two trade marks consisting of the same letter (or of the same sequence of letters) are found to be identical from an aural and a conceptual point of view is relevant when it comes to assessing the existence of a likelihood of confusion. In such cases, it is only when the later trade mark conveys a sufficiently different visual impression that a likelihood of confusion can be safely ruled out (10/05/2011, T187/10, G, EU:T:2011:202, § 60).

Consequently, a likelihood of confusion can be safely excluded when two conflicting signs, albeit consisting of the same single letter, are stylised in a sufficiently different way.

Moreover, in clothes shops, customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. 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. 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 different manner in which the letter ‘X’ is depicted are particularly relevant when assessing the likelihood of confusion between them.

The Opposition Division is of the opinion that the similarities between the marks are not sufficient to counteract their differences, and, consequently, the public is not likely to believe that the goods and services come from the same undertaking or from economically-linked undertakings.

Considering all the above, even assuming that the goods are identical, the Opposition Division finds that there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected as far as it is based on these earlier rights and Article 8(1)(b) EUTMR.

COSTS

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

Richard THEWLIS

Liina PUU

Lucinda CARNEY

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.