DECISION

of the Second Board of Appeal

of 4 July 2019

In case R 353/2019-2

FF GROUP ROMANIA S.R.L.
str. Take Ionescu, nr. 8, Sector 1 010354 Bucuresti Romania	Applicant / Appellant

represented by Rominvent S.A., 35, Ermil Pangratti Str., 1st Floor, Sector 1, 011882 Bucharest, Romania

v

Kik Textilien und Non-Food GmbH
Siemensstr. 21 59199 Bönen Germany	Opponent / Defendant

represented by Weber & Sauberschwarz, Königsallee 62, 40212 Düsseldorf, Germany

APPEAL relating to Opposition Proceedings No B 2 336 108 (European Union trade mark application No 12 517 901)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), S. Martin (Rapporteur) and A. Szanyi Felkl (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 20 January 2014, FF GROUP ROMANIA S.R.L. (‘the applicant’), previously named ELMEC ROMANIA S.R.L., sought to register the figurative mark

for the following list of services:

Class 35 - Retailing of the following goods through a chain of stores: Clothing, Footwear, Fashion accessories, Goods of leather and imitations of leather, Headwear, Clothing and Sports footwear.

The applicant claimed the colours:

Black, white, green.

2. The application was published on 17 February 2014.

3. On 3 April 2014, Kik Textilien und Non-Food GmbH (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above services.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the following earlier rights:

1. International Registration No 893 026 for the word mark

kik

filed and registered on 29 June 2006, designating the Czech Republic, Austria, Bulgaria, Hungary, France, Poland, Croatia, Slovenia, Benelux, Slovakia, Italy and Spain for the following services:

Class 35 - Retail sale services in connection with textiles, cosmetic products, toys, household products and other products for everyday use.

On 29 March 2017, the list of services was limited to:

Class 35 ‑ Retail sale services in connection with textiles, namely clothing, headgear made of textile materials, household linen, bed linen and table linen, as well as in relation to cosmetics, toys, household products and other products for everyday use.

2. German trade mark registration No 30 321 863 for the word mark

kik

filed on 28 April 2003 and registered on 29 November 2005 for the following services:

Class 35 - Retail sale services in connection with textiles, cosmetic products, toys, household products and other products for everyday use.

On 10 November 2016, the list of services was limited to:

Class 35 ‑ Retail sale services in connection with textiles, namely clothing, headgear made of textile materials, household linen, bed linen and table linen, as well as in relation to cosmetics, toys, household products and other products for everyday use.

6. On 26 September 2014, the opponent claimed enhanced distinctiveness of its earlier marks at least in Germany due to their extensive use and submitted documents on this behalf.

7. On 16 December 2014, the applicant requested proof of use for the two earlier rights.

8. On 12 January 2015, the Office gave a deadline to the opponent to prove use for the earlier German trade mark and for the IR, namely for the designations of Austria, Czech Republic, Poland, Slovenia, Slovakia and Benelux. The Office clarified that the request for proof of use concerning IR designations Hungary, Bulgaria, Spain, France, Croatia and Italy could not be taken into account because it concerned marks which, at the date of publication of the contested mark, had not been registered for at least five years.

9. On 21 of May 2015, the opponent submitted documents in order to prove use with regard to the earlier marks and territories indicated by the Office.

10. By decision of 28 September 2015 (‘the contested decision’), the Opposition Division upheld the opposition in its entirety and rejected the contested EUTM application for all the services applied for on the grounds that there was a likelihood of confusion. It gave, in particular, the following reasons for its decision:

• The opposition is first examined with regard to the earlier German word mark No 30 321 863 ‘kik’.

Proof of use

• 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 Germany. However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark. In the present case, the evidence submitted demonstrates genuine use of the trade mark only for the following services:

Class 35 - Retail sale services in connection with textiles.

Likelihood of confusion – Article 8(1)(b) EUTMR

The services

• The term ‘textiles’ in the opponent’s list of services in Class 35 in the claimed term ‘retail sale services in connection with textiles’ (in the original German version: ‘Einzelhandelsdienstleistungen in Bezug auf Textilien’) refers to a broad range of goods made of textiles (‘Kleidung; Textil(waren)’, see Duden On-Line at www.duden.de).

• The contested services ‘retailing of the following goods through a chain of stores: clothing’ (mentioned twice) are included in the broad category of the opponent’s ‘retail sale services in connection with textiles’. Therefore, they are considered identical.

• The contested ‘retailing of the following goods through a chain of stores: footwear, fashion accessories, goods of leather and imitations of leather, headwear, sports footwear’ are considered similar to the opponent’s ‘retail sale services in connection with textiles’. The services under comparison have the same nature, since both are retail services, they have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and they have the same method of use. Furthermore, they coincide in the relevant public and distribution channels.

The signs

• Visually, the signs are similar to the extent that they coincide in the letters ‘ki*’. However, they differ in the last letter ‘k’ of the earlier mark and the last letter ‘x’ of the contested sign. Furthermore, the marks differ in the underscore and the graphical representation and colours of the contested sign.

• Aurally, as the earlier mark will be pronounced as /kik/ and the contested sign as /kiks/, the pronunciation of the signs coincides in the sound /kik/ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the last letter /s/ of the contested sign which has no counterpart in the earlier mark. The underscore sign in the contested sign is not likely to be pronounced. As both marks will be pronounced in one syllable, they have the same rhythm and intonation.

• Conceptually, neither of the signs has a meaning for the public in the relevant territory. The argument of the applicant that the word ‘kix’ in the contested sign will be perceived as referring to ‘sneakers’ cannot be retained, as there is no evidence to support such a claim. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Distinctive and dominant elements of the signs

• 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.

Distinctiveness of the earlier mark

• 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. 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 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.

Relevant public – degree of attention

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

Global assessment

• The earlier mark ‘kik’ and the verbal element ‘kix’ of the contested sign, which are both meaningless for the relevant public, are visually similar and aurally highly similar since they are both pronounced in one syllable and they only differ in the additional sound /s/ at the end of the contested sign. The contested sign is a figurative mark. Where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter.

• In each sign, the ‘k’ is pronounced as ‘k’ versus ‘x’ pronounced as ‘ks’. Consequently, the fact that they coincide in two letters and that the differing one is phonetically very similar, leads to a finding of likelihood of confusion, because the differing letter is phonetically very similar (judgment of 23/10/2002, T-388/00, ‘ELS’, by analogy).

• The contested mark must be rejected for the services found to be identical or similar to those of the earlier trade mark. 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 as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

• As the earlier German trade mark registration No 30 321 863 leads to the success of the opposition and to the rejection of the contested mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (judgment of 16/09/2004, T-342/02, Moser Grupo Media).

11. On 19 November 2015, the applicant filed an appeal (case R 2323/2015-4) against the contested decision in its entirety. It filed the statements of grounds on 28 January 2016.

12. The opponent filed observations in reply on 25 April 2016.

13. On 6 September 2016, the Fourth Board of Appeal issued a decision in case R 2323/2015-4 annulling the contested decision and rejecting the opposition. The Fourth Board concluded that the opponent had not proven the use of the earlier marks for the services for which they were registered. According to the Fourth Board the Opposition Division had committed an error in finding that ‘textiles’ included ‘clothing items’. The Fourth Board pointed out that in the Nice Classification the term ‘textiles’ was equivalent to the class heading in Class 24 ‘textile, textile goods’ whereby only unfinished textiles or piece goods of all kinds, from silk to denim, are understood.

14. On 21 November 2016, by a document lodged at the Registry of the General Court, the applicant brought an action against the Fourth Board’s decision in case R 2323/2015-4. The case was assigned the General Court case number T-822/16.

15. On 18 July 2017, in accordance with Article 103 EUTMR and Rule 53a(2) CTMIR, the Fourth Board revoked its decision in case R 2323/2015-4, since it had overlooked that not both of the earlier marks were subject to proof of use. The proof of use requests was inadmissible with regard to the IR designating Bulgaria, France, Croatia, Italy and Spain. As a result, the Board acknowledged that its failure to review the opposition on the basis of these earlier rights constituted a procedural error.

16. On 16 March 2018, the General Court held that there is no longer any need to adjudicate on the case T-822/16 due to the revocation of the attacked decision.

17. On 5 February 2019, the appeal R 2323/2015-4 was reallocated to the Second Board of Appeal with the new appeal number R 353/2019-2, in accordance with Article 19 of Decision 2018-9 of 12 November 2018 of the Presidium of the Boards of Appeal.

18. On 15 March 2019, the Rapporteur requested the opponent to file updated certificates for its earlier rights listed under paragraph 5a) and b).

19. On 19 March 2019, the opponent submitted the requested certificates. These certificates showed that the lists of services had in the meantime been limited as stated above at paragraph 5.

20. On 23 March 2019, the Rapporteur requested both parties to comment on the comparison of the services at issue, as the scope of protection of both earlier rights had been limited after the issuance of the contested decision.

21. The opponent submitted its comments on 12 April 2019 and the applicant on 22 May 2019.

Submissions and arguments of the parties

22. The arguments raised by the applicant in the statement of grounds may be summarised as follows:

• The appeal is based on the following grounds: a) The contested mark is not similar to the opponent’s mark; b) the contested services are not per se similar to the earlier mark’s services; c) if used, the later trade mark is not likely to cause confusion with the earlier mark.

• The different and striking last letters ‘K’ and ‘X’ as well as the distinctive typographical element ‘_’ of the contested sign create a different overall impression. The character ‘_’ is not commonplace in the Member States and it is unusual to see it at the beginning of a word.

• With regard to goods or services related to clothing, the visual comparison is more important than the aural comparison. The differences in short signs, as in the case at issue, are more likely to be perceived by the public.

• Aurally, the letters ‘K’ and ‘X’ are pronounced differently in most countries of the European Union. The repetition of the letter ‘K’ and the lack of the powerful sound of the letter ‘X’ at the end of the sign, represent substantial differences.

• Conceptually, ‘kix’ will not be perceived as the plural of ‘kik’. The contested sign may be assimilated to the German ‘Keks’ (cookie) or to ‘Kicks’, a slang word for sneakers used in German and English. The applicant submitted documents in support.

• The contested services are not per se similar to the earlier mark’s ‘retail sale services in connection with textiles’ and further motivation is missing in the contested decision. Contrary to the assessment of the Opposition Division ‘textiles’ do not encompass ‘clothing’. ‘Textiles’ are raw materials which must be manufactured while clothes are ready-made goods. The consumers of raw materials are professionals whereas ready-made goods are addressed to general end consumers. They have a different nature and purpose.

• The earlier mark and the contested sign target different markets and have different market strategies. The opponent’s activity consists in retail services of discount goods. By contrast, the applicant offers retail services of premium brand goods. Retailing services for discount goods are very different to retail services for premium brands clothing, accessories, footwear and headgears. Moreover, the location of the applicant’s stores is different from the location of the opponent’s stores: premium malls versus warehouses and distant depots. The conflicting services are, therefore, dissimilar.

• In conclusion, there is no likelihood of confusion because the services in question target different consumers; the earlier mark is used in different stores; there are visual and phonetic differences between the marks; there are semantic differences between ‘textiles’ (meaning cloth, fabric) and ‘clothes’; and ‘textiles’ are not similar to ‘footwear, headgear, fashion accessories, goods of leather and imitation of leather’.

23. The arguments raised by the opponent in its response to the statement of the grounds of appeal may be summarised as follows:

• The first parts of the signs ‘ki-’ are identical. The letters ‘k and ‘x’ are visually very similar due to the fact that the right parts of the letters ‘k’ and ‘x’ are identical. The underscore in front of the word ‘kik’ will be easily overlooked. It could be part of the letter ‘k’ as well.

• The opponent’s marks is a word mark and nothing prevents it from being used in different scripts, even in a form comparable to that used by the mark applied for (29/10/2009, T‑386/07, Agile, EU:T:2009:420). Therefore, when figurative marks with word elements such as the applicant’s mark on the one hand and word marks on the other are compared visually, what matters is whether the signs share a significant number of letters in the same position and whether the word element in the figurative sign is highly stylized. In the present case, the word element of the contested sign is not highly stylized.

• The selection of a retail shop is not always made on a visual basis. Consumers often visit a retail shop due to recommendation or radio advertisement. Even if the visual perception was specifically important, this does not mean that the phonetic impression can be overlooked (23/09/2011, T‑501/08, See more, EU:T:2011:527). The aural similarity between the signs is striking.

• The conceptual associations with ‘kix’ proposed by the applicant are wrong and have not been proven. The Office rightly stated that a conceptual comparison is not possible.

• The generic term ‘textiles’ covers ‘clothing’. That is why the goods ‘textiles’ and ‘clothing’ do not have a different nature and share the same relevant public. The comparison of the services carried out by the Office is correct.

• The parties’ marketing strategies are irrelevant as such circumstances are not reflected in the register.

24. In its reply to the Rapporteur’s communication of 27 March 2019, the applicant argued the following:

• The opponent’s limitation is unclear and imprecise. The new wording does not represent a limitation but an addition and alteration of the initial list of services.

• The correlation of textiles with readymade clothing is a forced and ambiguous association and represents an addition to the list and not a limitation. ‘Clothing and headgear’ are included in Class 25, while ‘textiles’ and ‘textile goods’ are included in Class 24. As a consequence, the interpretation of the new list of goods cannot refer to goods in Class 25 but it should be interpreted as covering the ‘textile goods’ in Class 24.

• The goods ‘textiles; textile goods’ on the one hand and ‘clothing’ on the other are dissimilar. Thus, the conflicting services relate to goods that have a completely different nature, purpose, method of use and distribution channels and that are neither in competition with each other nor complementary. The conflicting services are, therefore, dissimilar.

25. In its reply to the Rapporteur’s communication of 27 March 2019, the opponent argued the following:

• The contested services and the services covered by the earlier trade mark are identical as far as the retailing with clothing and headgear is concerned. They are similar as far as the retailing with other goods is concerned. Retail services relating to specific goods are similar to retail services relating to other specific goods.

Reasons

26. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

27. As a transitional measure, Article 80 EUTMDR foresees that the CTMIR and BoA‑RoP shall continue to apply to on-going proceedings until such proceedings are completed, provided that the EUTMDR does not apply in accordance with its Article 82. Pursuant to Article 82(2)(d) EUTMDR, in the present case the CTMIR has to be applied to the request of the proof of use, since it was made before 1 October 2017, namely on 16 December 2014. The CTMIR is also applicable to the appeal proceedings since the notice of appeal was filed on 19 November 2015.

Earlier German trade mark No 30 321 863

Lawfulness of the limitation of the list of services

28. After the revocation of the Fourth Board’s decision in the current appeal proceedings (which at that time had the appeal number R 2323/2015-4), the opponent requested to limit the list of services of the earlier German trade mark No 30 321 863. The opponent requested to specify the term ‘retail sale services in connection with textiles’ by adding the following words: ‘namely clothing, headgear made of textile materials, household linen, bed linen and table linen’. The German Patent and Trade Mark Office accepted the limitation request and changed its register accordingly.

29. In its reply to the Rapporteur’s communication dated 15 March 2019, the applicant essentially claims that the limitation request should have been rejected because it is unclear and imprecise. In the applicant’s view, the addition of the words ‘namely clothing, headgear made of textile materials, household linen, bed linen and table linen’ does not represent a limitation, but an addition and alteration of the initial list of services. The applicant argues that the term ‘textiles’ does not comprise ‘clothing, headgear made of textile materials, household linen, bed linen and table linen’. In the applicant’s view, the term ‘textiles’ must be given the meaning which is attributed to it in Class 24 of the Nice Classification, namely the meaning of semi-raw goods, which may be sold as ‘do it yourself’ items or may be destined to fashion manufacturers for further manufacturing processes.

30. Contrary to the applicant’s view, in the case at hand the wording of the list of services after the limitation is neither unclear nor were the conditions for a limitation not fulfilled. The scope of protection after the limitation does not remain unclear because the word ‘namely’ clearly indicates that after the limitation the retail services are only protected in so far as they relate to ‘clothing, headgear made of textile materials, household linen, bed linen and table linen’. The term ‘namely’ is exclusive and restricts the scope of the registration only to the specifically listed goods.

31. Moreover, in the decisive German language ‘clothing, headgear made of textile materials, household linen, bed linen and table linen’ are covered by the term ‘textiles’ (‘Textilien’). It is true that the term ‘textiles’ in the diction of Class 24 of the Nice Classification does not comprise ‘clothing, headgear made of textile materials, household linen, bed linen and table linen’. However, in this respect it is worth pointing out, that the term ‘textiles’ is not registered in Class 24. It is rather used as a specification for retail services and it is registered in Class 35. Therefore, in the case at hand there is no direct link with the term ‘textiles’ as defined by the Nice Classification for the purposes of Class 24.

32. According to the case-law, the interpretation of the specification of the goods and services has to follow the ‘ordinary meaning’ of the words in ‘everyday language’ (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 49). Since the earlier mark is a German trade mark, the meaning of the term ‘textiles’ (‘Textilien’) in the common German language is decisive. As the Opposition Division ‒ by reference to the German dictionary ‘Duden’ ‒ has correctly pointed out, the German word for ‘textiles’ (‘Textilien’) refers in everyday language also to ‘clothing’ and ‘goods made from textiles’. The ‘Duden’ lists the following words as synonyms for the German word ‘Textilien’: ‘Bekleidung, Gewebe, Kleidung, Stoff, Synthetics, Textil[waren], Trikotagen, Tuch, Wäsche, Webwaren, Wirkwaren; (salopp) Klamotten; (veraltend) Zeug; (Fachsprache) Weißwaren’ (in the language of the proceedings: ‘clothing; cloth; clothes; fabric; synthetics; textile goods; knit wear; drapery; linen; woven goods; knitted goods; (informal) rags; (outdated) stuff; (technical term) white goods, https://www.duden.de/rechtschreibung/Textilien). Hence, in the common German language, the word ‘textiles’ comprises the goods ‘clothing, headgear made of textile materials, household linen, bed linen and table linen’ so that the addition is a limitation and not an extension or alteration of the original list of services. The registered limitation is therefore not invalid.

33. Therefore, the Board has to base its decision on the limited list of services. After the limitation, the earlier German trade mark remains registered for ‘retail sale services in connection with clothing, headgear made of textile materials, household linen, bed linen and table linen’ as well as ‘retail sale services in relation to cosmetics, toys, household products and other products for everyday use’.

Proof of use and scope of appeal

34. The issue of proof of use does not form part of the subject matter of the current appeal proceedings since it was not raised by the applicant in its statement of grounds submitted on 28 January 2016. In its statement of grounds, the applicant expressly limited its appeal to the following grounds: a) the dissimilarity between the conflicting signs; b) the dissimilarity between the conflicting services; and c) the lack of a likelihood of confusion. The applicant neither expressly nor implicitly faulted the Opposition Division’s findings that the earlier German trade mark No 30 321 863 had been used in Germany during the relevant period for the services ‘retail services in connection with textiles’ in Class 35.

35. According to standing case-law, the examination of the appeal includes the issue of proof of use only if it was raised by the appellant in its statement of grounds of the appeal (13/09/2010, T-292/08, Often, EU:T:2010:399, § 40; 29/05/2018, T‑577/15, SHERPA, EU:T:2018:305, § 46-47). The Boards of Appeal are, therefore, prohibited from making a decision on the specific preliminary issue of genuine use where this issue has not been explicitly raised before it. In such a case, the Boards of Appeal have to base their decision on the corresponding findings of the Opposition Division, without checking them (13/09/2010, T-292/08, Often, EU:T:2010:399, § 40; 29/05/2018, T-577/15, SHERPA, EU:T:2018:305, § 46-47). This case-law has now been codified in Article 27(3)(c) EUTMDR which is, however, not applicable to the case at hand since the appeal was filed before 1 October 2017 (Article 82(2)(j) EUTMDR).

36. In accordance with the case-law, the Board cannot examine the question of proof of use but must base its decision on the respective findings of the Opposition Division.

37. The limitation of the list of services cannot change that outcome. It is clear from the contested decision that the Opposition Division understood the term ‘textiles’ as comprising the goods ‘clothing, headgear made of textile materials, household linen, bed linen and table linen’. Therefore, its findings that the earlier German trade mark No 30 321 863 was used for the services ‘retail services in connection with textiles’ in Class 35 include the findings that the respective mark was used for the services ‘retail sale services in connection with textiles, namely clothing, headgear made of textile materials, household linen, bed linen and table linen’ to which the list of services was later limited.

38. Moreover, even when the applicant was informed about the limitation of the list of services of the earlier German trade mark by the Rapporteur’s communication dated 15 March 2019, it did not claim that the limitation of the list of services of the earlier German trade mark had an impact on the Opposition Division’s findings regarding the proof of use of that mark. Had the applicant wished that the Board of Appeal reviews also the Opposition Division’s findings regarding the proof of use, it should have raised this issue on its own motion at the latest at that stage which it did not do. According to the case-law, the issue of proof of use becomes only subject of the appeal proceedings if it is brought up by the appellant. This case-law applies irrespective of whether the list of goods or services of the relevant earlier mark is later limited or not.

39. Therefore, the Board bases its examination on the Opposition Division’s findings that the earlier German trade mark was genuinely used in Germany during the relevant period of time for the services ‘retail sale services in connection with clothing, headgear made of textile material, household linen, bed linen and table linen’ in Class 35.

40. The Opposition Division further held that the earlier German trade mark was not used for the remaining services ‘retail sale services in relation to cosmetics, toys, household products and other products for everyday use’. Since the opponent did not contest this finding, the Board is also precluded from re-examining that issue

Article 8(1)(b) EUTMR

41. According to Article 8(1)(b) EUTMR, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, an earlier trade mark, and the identity or similarity of the goods or services covered by the two trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

42. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

43. Likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C–251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

44. The global appreciation 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

Relevant public

45. The average consumer is deemed to be reasonably well-informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-26). It should, however, be recalled that the average consumer’s level of attention is likely to vary according to the category of goods and services in question (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited therein) and that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

46. The Opposition Division correctly held that the relevant public consists of the general public whose degree of attention is normal. The relevant territory is Germany.

Comparison of the conflicting services

47. Article 8(1)(b) EUTMR provides that the likelihood of confusion presupposes that the goods or services covered are identical or similar. Therefore, in all cases it is necessary to consider the degree of similarity between the goods or services covered. In relation to the assessment of the similarity of goods or services the following factors, inter alia, should be taken into account: their nature, their purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28). Further factors include the usual origin of the goods, the pertinent distribution channels (in particular sales outlets) and the relevant public.

48. The contested services are ‘retailing of the following goods through a chain of stores: clothing, footwear, fashion accessories, goods of leather and imitations of leather, headwear, clothing and sports footwear’ in Class 35. For the reasons set out above (paragraphs 32-35) the services of the earlier mark are ‘retail services in connection with clothing, headgear made of textile materials, household linen, bed linen and table linen’ in Class 35.

49. The contested services ‘retailing of the following goods through a chain of stores: clothing (mentioned twice), headwear’ are identical to the earlier mark’s ‘retail services in connection with clothing, headgear made of textile materials’.

50. The remaining contested services ‘retailing of the following goods through a chain of stores: footwear, fashion accessories, goods of leather and imitations of leather, and sports footwear’ are similar to the opponent’s ‘retail services in connection with clothing, headgear made of textile materials, household linen, bed linen and table linen’. Retail services relating to specific goods are similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services. Moreover, they have the same purpose of allowing consumers to conveniently satisfy different shopping needs and they have the same method of use. Furthermore, the goods to which the conflicting retail services relate are commonly retailed in the same outlets. They coincide, therefore, in the relevant public and the distribution channels.

51. The claimed differences in the marketing strategies of the applicant’s and the opponent’s business (discount retail services versus luxury retail services) are irrelevant for the comparison of the conflicting services. As the Opposition Division has correctly pointed out, even if these differences existed (for which there is not sufficient proof), they could not impact the outcome of the comparison of the conflicting services since these difference are not reflected in the wording of the respective lists of services. The comparison of the services has to be done on the basis of the registered wording.

52. At this point, it is worth pointing out that for the reasons set out above , the conflicting services are in any case similar even if the limitation was invalid and had to be ignored by the Board as maintained by the applicant (which is not the case). Retailing services are similar to other retailing services regardless of the goods to which they relate as they share the same nature and have the same purpose and method of use. The applicant’s argument focuses exclusively on the differences between the retailed goods. The applicant overlooks that ultimately it is not the retailed goods that need to be compared but the retail services related to them. The applicant has not submitted any convincing argument let alone evidence that retail services regarding clothing are dissimilar to retail services regarding specific goods which are dissimilar to clothing. Therefore, contrary to the applicant’s claim, even before the limitation the earlier mark’s services were similar to the contested services.

Comparison of the signs

53. Conflicting signs have to be compared via a global appreciation of the visual, aural or conceptual similarity between them bearing in mind, in particular, their distinctive and dominant components (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

54. The contested mark ‘ ’ is a figurative mark consisting of a small white underscore followed by the word ‘kix’ written in lower-case letters. The letters ‘k’ and ‘x’ are white whereas the letter ‘i’ is light green. The underscore and the word ‘kix’ are framed by a black rectangle. The earlier German mark is a word mark consisting of the word ‘kik’. A word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). Therefore, differences in the use of lower or upper case letters are immaterial.

55. The conflicting signs are visually similar to an average degree. They coincide in the two initial letters ‘ki’ and differ in the final letter ‘x’ and ‘k’ respectively. They further differ in the underscore in the contested sign. The white underscore is, however, small and does not leave a lasting visual impact. The black rectangular and the white and green colorization of the word ‘kix’ have no counterpart in the earlier mark. These elements are, however, mainly perceived as serving decorative purposes. The consumers will focus their attention on the word element in the contested sign. The average consumer will more readily refer to the services sold under the contested sign by quoting the word ‘kix’ than by describing its figurative elements (15/12/2009, T‑412/08, TRUBION/TriBion Harmonis (fig.), EU:T:2009:507, § 45).

56. Aurally, the signs at issue are even highly similar. In German the letter ‘x’ is pronounced as [iks] (https://www.duden.de/rechtschreibung/x_Buchstabe). The contested mark is, therefore, pronounced as [kiks] whereas the earlier mark is pronounced as [kik]. The applicant’s claim that the letter ‘x’ is pronounced significantly different from the letter ‘k’ in most countries in the European Union is irrelevant. The relevant territory is Germany and in German the conflicting signs are pronounced highly similarly.

57. In German neither the contested mark nor the earlier mark has any meaning. There is not sufficient proof that the entire relevant German public understands ‘kicks’ as a slang word for sneakers. Hence (at least for a substantial part of the German public, if not for the German public as a whole), there are no clear conceptual differences that could outweigh the visual and aural similarities between both signs.

Distinctive character

58. In determining the degree of distinctive character of a trade mark, an overall assessment has to be made of the greater or lesser capacity to identify the goods for which it has been registered as coming from a particular undertaking. Account should be taken of the inherent characteristics of the mark, including the fact that it does or does not contain an element that is descriptive of the goods for which it has been registered and other criteria; in particular, how intensive, geographically widespread and long-standing the use of the mark has been (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22-23).

59. The inherent distinctiveness of the earlier mark ‘kik’ is normal. The word ‘kik’ has no meaning in German and neither describes nor alludes to the services for which genuine use was found by the Opposition Division.

60. The opponent claims that the earlier mark enjoys enhanced distinctiveness due to its reputation in Germany. It can be left open whether the documents submitted by the opponent actually prove the claimed enhanced distinctiveness. The issue is not decisive for the outcome of the case since – as will be shown hereinafter – there is a likelihood of confusion even on the basis of the earlier mark’s inherent distinctiveness.

Overall assessment of the likelihood of confusion

61. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16‑18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).

62. The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from those of others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; see also seventh recital of the EUTMR). Besides that function of origin, the trade mark can perform other functions.

63. The appreciation of the likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (seventh 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).

64. Such a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a 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).

65. The Opposition Division correctly found a likelihood of confusion with regard to all contested services. The conflicting signs are visually similar to an average degree and aurally similar to even a high degree. They coincide in their beginning. Two out of three letters are identical. Although it is correct that according to the case-law, in relatively short signs, the elements at the beginning and the end of the sign are as important as the central elements (15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 52), the difference occurring at the end of the signs will go largely unnoticed in the perception of at least part of the consumers whose level of attention is average. Account must be taken of the fact that the average consumers only rarely have the chance to make a direct comparison between the different marks but have to place their trust in the imperfect image of them that they have retained in their minds (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). The figurative elements of the contested mark will not be perceived by the consumers as indicating commercial origin but as serving merely decorative functions. The distinctiveness of the earlier sign is normal. The consumers are likely to believe that the services at issue come from the same undertaking or at least from an economically-linked undertaking when marked with the conflicting signs.

66. The finding of a likelihood of confusion is in line with the Board of Appeal’s decision practice (17/04/2018, R 399/2017-1, WKU / WKA et al., § 32; 25/01/2018, R 1601/2017-2, RCR (fig) / RCA, § 65; 13/02/2015, R 945/2014-1, TAD (fig) / TAB, § 54; 04/12/2014, R 2544/2013-2, SLK / SLS, § 32).

67. Since the opposition is already successful with regard to the earlier German trade mark No 30 321 863, there is no need to examine the other earlier right claimed by the opponent.

Costs

68. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the applicant, as the losing party, must bear the opponent’s cost of the appeal proceedings. These costs consist of the opponent’s costs of professional representation of EUR 550.

69. As to the opposition proceedings, the Opposition Division ordered the applicant to bear the opponent’s costs incurred in the opposition proceedings. This cost decision remains unaffected. The opponent’s costs of the opposition proceedings amount to the opposition fee of EUR 350 and the costs of professional representation of EUR 300.

70. Therefore, the opponent’s costs in the appeal and opposition proceedings amount to EUR 1 200.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to pay EUR 550 for the opponent’s costs in the appeal proceedings. The total amount to be paid by the applicant in the opposition and appeal proceedings is EUR 1 200.

Signed S. Stürmann

Signed S. Martin

Signed A. Szanyi Felkl

Registrar: Signed H.Dijkema