OPPOSITION No B 2 451 162

PJ Hungary Szolgaltato Korlatolt Felelossegu Tarsasag, Hajógyári sziget 108 ép., 1033 Budapest, Hungary (opponent), represented by Nabarro LLP, 125 London Wall, London EC2Y 5AL, United Kingdom (professional representative)

a g a i n s t

Antonio Sorrentino D’Affilitto, Via Alessandro Volta 19, 80027 Frattamaggiore, Italy (applicant).

On 30/08/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 451 162 is upheld for all the contested goods.

2. European Union trade mark application No 13 132 618 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 132 618. The opposition is based on, inter alia, European Union trade mark registrations No 345 496 and No 3 414 232. The opponent invoked Article 8(1)(b) and 8(5) 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.

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 345 496.

1. The goods and services

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

Class 18: Bags, handbags, backpacks, satchels, haversack, knapsacks, rucksacks, valises, holdalls, cases, suitcases, travelling bags, purses, pocket wallets, pouches, umbrellas, parasols.

Class 25: Articles of clothing; belts; jeans; footwear and headgear.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; Studs of leather; Straps (Leather -); Straps made of imitation leather; Shoulder straps; Laces (Leather -); Leather, unworked or semi-worked; Leather for shoes; Leather thread; Moleskin [imitation of leather]; Imitation leather; Chin straps, of leather; Leather and imitation leather.

Class 25: Clothing; Headgear; Footwear.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 18

The contested bags are identically included in the opponent’s list of goods.

The contested luggage is identical to the opponent’s travelling bags, as they are synonymous.

The contested wallets include, as a broader category, the opponent’s pocket wallets. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested other carriers include, as a broader category, the opponent’s purses. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested studs of leather; straps (leather -); straps made of imitation leather; shoulder straps; laces (leather -); chin straps, of leather are specific goods made of leather. They are dissimilar to the opponent’s goods in Class 18, which are all different types of bags, wallets, umbrellas and parasols, and the opponent’s clothing, footwear and headgear in Class 25. Although all these goods are or may be made of leather, they have a different nature, a different purpose and different method of use. They are not complementary or in competition with each other. Furthermore, they do not usually originate from the same undertakings, they are offered through different sales channels and they target a different relevant public.

The contested leather thread, leather, unworked or semi-worked; leather and imitation leather; leather for shoes; moleskin [imitation of leather]; imitation leather are all leather and imitations of leather and refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for footwear) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s goods in Class 18 and the opponent’s clothing, headgear and footwear in Class 25. Therefore, these goods are dissimilar.

Contested goods in Class 25

The contested clothing; headgear; footwear are identically contained in the opponent’s list of goods.

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 average.

3. The signs

PEPE
Earlier trade mark	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).

The earlier mark is a word mark, ‘PEPE’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters.

The contested sign is a figurative mark composed of the verbal element ‘don pepe’, in lower case letters, and, above it, a circular figurative element.

The verbal element ‘PEPE’, present in both marks, will be perceived by part of the relevant public as having a specific meaning, namely as a diminutive form of the male first name José (by the Spanish-speaking public), as ‘grandfather’ in baby talk (by the French-speaking public, which will perceive in the mark the word ‘pépé’) or as ‘pepper’ (by the Italian-speaking public). For another part of the relevant public, this element is meaningless. The word ‘PEPE’ has a normal degree of distinctiveness in relation to the relevant goods in Classes 18 and 25.

The word ‘don’ in the contested sign will be perceived by part of the relevant public (i.e. the Spanish- and Italian-speaking parts of the public) as ‘mister’; for the remaining part of the relevant public, it is meaningless. The word has a normal degree of distinctiveness.

The verbal elements in the contested sign, ‘don pepe’, will be perceived by the Spanish-speaking public as ‘Mister Pepe’, ‘pepe’ being a diminutive of the male first name José, and by the Italian-speaking public as ‘Mister Pepper’.

Neither of the marks has any element that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive verbal element ‘PEPE’. This element constitutes the entire earlier mark and the second verbal element in the contested sign. Although it is the second element in the contested sign, it is the largest element in the sign and will easily be perceived as an independent element, as it is separated by a space from the first verbal element. However, the marks differ in the additional circular figurative element and the slightly stylised verbal element ‘don’ in the contested sign.

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, it is considered that the verbal elements ‘don pepe’ will have a stronger impact on the relevant public than the figurative element in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‘PEPE’, present identically in both signs. The pronunciation differs in the sound of the first word, ‘don’, of the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, part of the public in the relevant territory will perceive the distinctive element ‘PEPE’ in both marks as having the meanings specified above. For part of the public, the word ‘don’ in the contested sign also has a meaning, but this does not change the concept conveyed by the word ‘PEPE’; rather, it merely qualifies or refines it. The figurative element in the contested sign will not evoke a clear concept. As the earlier mark and the contested sign will be associated with similar meanings on account of the element ‘PEPE’, the signs are conceptually similar to an average degree.

For the remaining part of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

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 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.

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, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Furthermore, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The goods are partly identical and partly dissimilar.

The target public is the public at large, and the degree of attention is average.

The marks are visually, aurally and, for part of the relevant public, conceptually similar to an average degree, as they coincide in the distinctive element ‘PEPE’, which constitutes the entire earlier mark. The coinciding element ‘PEPE’ plays an independent distinctive role in the contested sign, as it is clearly separated by a space from the preceding shorter element, ‘don’.

Despite the fact that the visual aspect is usually more important in relation to the relevant goods in Classes 18 and 25, as they are often purchased after visual inspection, it should be noted that in the present case the visual differences between the signs are not sufficient to outweigh the visual, aural and, for part of the relevant public, conceptual similarities between them. The figurative element in the contested sign is not so overwhelming that it would be able to divert the attention from the verbal elements. The verbal elements ‘don pepe’ in the contested sign are not less dominant than the figurative element and will be used to refer to the mark.

Furthermore, although usually more attention is paid to the beginning of a mark, where the verbal elements of a contested sign incorporate the entire earlier mark, it does not matter a great deal whether they incorporate the earlier mark as its first or second element. Protection against likelihood of confusion applies in both directions: the owner of the earlier mark is protected not only against the contested trade mark being understood as referring to its goods but also against its mark being taken as referring to the applicant’s goods. Therefore, the applicant’s argument relating to the particular importance attached by the consumer to the beginning of a sign is not conclusive.

Consequently, although the average consumer may be capable of detecting certain visual, aural and, for part of the public, conceptual differences between the two conflicting signs, the likelihood that they might associate the signs with each other is very real.

From the wording of Article 8(1)(b) EUTMR – ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’ – it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, it is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand, a variation of the earlier mark configured in a different way according to the type of goods which it designates. It is, therefore, conceivable that the target public may regard the goods designated by the contested trade mark as belonging to two ranges of goods coming, nonetheless, from the same undertaking.

Therefore, taking into account that the earlier mark is fully incorporated in the contested sign and that, according to the interdependence principle, the identity between the goods offsets a somewhat lower degree of similarity between the marks, the differences between the marks are not sufficient to remove the likelihood that the relevant public might believe that the goods designated by the conflicting signs originate from the same undertaking or from economically linked undertakings.

The applicant argues that the opponent cannot claim a monopoly on a frequently used word such as ‘PEPE’. It is not whether or not a word is frequently used that is relevant for trade mark protection but, rather, if the word has some descriptive and/or non-distinctive meaning in relation to the relevant goods. Furthermore, a likelihood of confusion for only part of the relevant public of the European Union, for example the part where the word ‘PEPE’ does not exist in the relevant languages and is never used, is sufficient to reject the contested application.

The applicant refers to previous decisions of the Office to support his arguments, namely to decisions B 1 666 786 and B 1 384 710. 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, as the marks are not comparable. The contested marks in the cases referred to were ‘PEPPEROSSO’ and ‘PEPPERTS’; in these marks, the earlier mark ‘PEPE’ cannot be easily perceived as an independent element, as it can in the verbal elements, ‘don pepe’, of the contested mark in the present case.

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 partly well founded on the basis of the opponent’s European Union trade mark registration No 345 496.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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 reputation as claimed by the opponent and in relation to identical goods. 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 goods, 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:

1. European Union trade mark registration No 9 742 206 for the word mark ‘PEPE JEANS’, registered for goods and services in Classes 25 and 35;

2. European union trade mark registration No 5 403 191 for the word mark ‘PEPE’, registered for services in Class 35;

3. European Union trade mark No 287 029 for the figurative mark , registered for goods in Classes 18 and 25;

4. European Union trade mark No 3 414 232 for the figurative mark , registered for goods in Classes 18 and 25;

5. European Union trade mark No 2 095 339 for the figurative mark , registered for goods in Class 25;

6. UK trade mark registration No 1 535 141 for the word mark ‘PEPE’, registered for goods in Class 18;

7. UK trade mark registration No 1 213 305 for the word mark ‘PEPE’, registered for goods in Class 25.

Since earlier marks 2), 6) and 7) are identical to the one which has been compared and cover the same or a narrower scope of goods in Classes 18 and 25, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods. Earlier mark 2) also covers commercial retailing and retailing via global communication networks of the following goods: clothing, footwear, headgear, items of leather and imitations of leather, purses, backpacks, travelling bags in Class 35. These services in Class 35 and the remaining contested goods, namely studs of leather; straps (leather -); straps made of imitation leather; shoulder straps; laces (leather -); chin straps, of leather; leather thread, leather, unworked or semi-worked; leather and imitation leather; leather for shoes; moleskin [imitation of leather]; imitation leather in Class 18, are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

The other earlier rights invoked by the opponent, namely earlier marks 1), 3), 4) and 5), are less similar to the contested mark. This is because they contain additional words, such as ‘JEANS’ and ‘LONDON’, that are not present in the contested trade mark, and they are stylised. Moreover, earlier marks 1), 3) and 5) cover the same or a narrower scope of goods, or services in Class 35, which are, for the reasons given above, dissimilar to the remaining contested goods in Class 18. The outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

Earlier mark 4) is less similar to the contested mark but covers a broader scope of goods. However, this mark will be analysed below in the examination of the other ground invoked by the opponent in relation to this earlier mark, namely Article 8(5) EUTMR, as the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks than the degree of similarity necessary to lead to a likelihood of confusion under Article 8(1)(b) EUTMR, provided that it is sufficient for the relevant section of the public to make a connection between those marks that is to say, to establish a link between them (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 27, 29, 31; and 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57, 58, 66).

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark No 3 414 232, for which the opponent claimed repute in the EU.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, 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) EUTMR are only applicable when the following conditions are met.

• 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.

• The signs must be either identical or similar.

• 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) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 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.

In the present case the contested trade mark was filed on 12/09/2014. 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 for which the opponent has claimed reputation, namely:

Class 18: Leather and imitations of leather; goods made from these materials, not included in other classes; animal skins, trunks and suitcases; umbrellas, parasols and walking sticks; bags, purses, backpacks, wallets, school bags, tote bags, cases in class 18, briefcases, travelling bags, pocket wallets.

Class 25: Clothing, ready-made clothing, belts; jeans, footwear and headgear.

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 18/08/2015, the opponent submitted a witness statement dated 19/08/2015 by Sara Estalella, the opponent’s legal representative, which contains 13 exhibits and can be summarised as follows:

• ‘PEPE JEANS’ is a premium international brand offering stylish, trendy and fashionable jeans, casual wear, footwear and accessories. Pepe Jeans opened its first shop in London in 1973 and expanded rapidly. There are over 102 ‘PEPE JEANS’ branded stores throughout the European Union, 31 ‘PEPE JEANS’ outlet stores and 25 concessions. The European turnover for the ‘PEPE JEANS’ brand was over EUR 297 million. The brand’s reputation is for high-quality goods that are at the forefront of fashion. An overview of media advertising expenses for the ‘PEPE JEANS’ marks in the major EU territories for 2009-2014 is submitted (e.g. EUR 19 935 771 in France, EUR 19 763 070 in Germany, EUR 17 929 956 in Spain, etc.).

• Exhibit 1: examples of advertisements (in magazines, on buses, on outdoor billboards, etc.) featuring the earlier mark in relation to clothing, headwear, footwear, bags and accessories in France, Spain, Germany, Italy, Portugal and the UK during 2009-2014.

• Exhibit 2: extracts from the audited accounts of Pepe Jeans Europe B.V. (turnover ranging from EUR 84 928 000 to EUR 107 396 00 per year) and Pepe Jeans S.L. for 2009-2014 (turnover ranging from EUR 250 750 897 to EUR 377 548 762 per year); a breakdown by country is supplied for 23 European countries.

• Exhibit 3: selection of ‘PEPE JEANS’ autumn/winter and spring/summer catalogues, brochures and posters (and evidence of the numbers ordered) featuring the earlier mark in relation to clothing, headgear, footwear, bags and accessories; the evidence dates from 2009-2014, when the promotional material in question was sent to wholesalers and retail customers.

• Exhibit 4: sample invoices (with the earlier mark at the top of each invoice) relating to sales of clothing, footwear, headgear, bags and accessories in Italy, France, Spain and Germany during 2009-2014.

• Exhibit 5: examples of various items of clothing, headwear and footwear, as well as bags and accessories, under the earlier mark appearing in a wide range of publications in the European Union, including in the UK, Spain, France, Italy and Germany, between 2009 and 2014. The publications in question include Cosmopolitan, Glamour, Rolling Stone, Elle and Vogue, which had a circulation in the UK of over 150 000 copies every six months over the past five years, as can be seen from Exhibit 13.

• Exhibit 6: photographs of some of the opponent’s stores in the UK, Spain, France and Italy, showing the earlier mark on the shop facades and windows.

• Exhibit 7: images of various articles of clothing with, inter alia, the earlier mark printed on them or appearing on the inside label.

• Exhibit 8: printout from www.sportswearnet.com showing that ‘PEPE JEANS’ won an award for ‘best Blackberry app’ in Europe, the Middle East and Africa for its innovative app connecting ‘PEPE JEANS’ with consumers.

• Exhibit 9: examples of the ‘PEPE JEANS’ logo appearing on the labels of several items of clothing, headwear and footwear, as well as bags and accessories, in the ‘PEPE JEANS’ range.

• Exhibit 10: printout, dated May 2015, of a document by the research company Euromonitor International Apparel and Footwear, stating that ‘In 2014 Zara Espana continued to lead jeans in Spain, with an 8% value share, followed by Levi Strauss Espana, which ranked second. Pepe Jeans, in third position, showed the strongest growth rate, considerably increasing its share in the jeans category. Another Inditex company, Pull & Bear Espana, followed with a 7% value share.’

• Exhibit 11: articles and photographs illustrating the opponent’s sponsorship of the Red Bull Formula 1 racing team using the mark ‘PEPE JEANS’, and press articles related thereto. The earlier mark appears among those of other sponsors such as Red Bull, Renault, Casio, Pirelli, Sky, etc.

• Exhibit 12: article from the UK newspaper The Guardian showing that the audience for Formula 1 in 2012 was over 500 million worldwide and over 28 million in the UK alone.

• Exhibit 13: circulation figures for the magazine Vogue in the UK.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in the European Union at least for clothing.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use during more than four decades and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested, for example, with respect to Spain, by the research company Euromonitor International Apparel and Footwear (Exhibit 11). According to the evidence, goods under the earlier mark are sold in almost all the countries of the European Union through more than 102 ‘PEPE JEANS’ branded stores, 31 ‘PEPE JEANS’ outlet stores and 25 ‘PEPE JEANS’ concessions, as well as over the internet. The evidence also shows that the earlier mark won an award for ‘best Blackberry app’ and that it was used in sponsoring Formula 1 racing, which both demonstrate that the mark has reached a large public. The sales figures, marketing expenditure and market share demonstrated by the evidence, and the various references in important fashion magazines such as Cosmopolitan, Glamour, Rolling Stone, Elle and Vogue throughout Europe, all unequivocally show that the mark enjoys a high degree of recognition among the relevant public with respect to clothing.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

Before comparing the signs, it is appropriate to recall that the opposition is directed against the following goods for which the opposition under Article 8(1)(b) EUTMR was not upheld:

Class 18: Studs of leather; Straps (Leather -); Straps made of imitation leather; Shoulder straps; Laces (Leather -); Chin straps, of leather; leather thread, Leather, unworked or semi-worked; Leather and imitation leather; Leather for shoes; moleskin [imitation of leather]; Imitation leather.

As seen above, the earlier trade mark was found to have a reputation for:

Class 25: Clothing.

The earlier mark is a figurative mark composed of the stylised verbal elements ‘Pepe Jeans’, written in title case letters, and, underneath, the verbal element ‘LONDON’, written in upper case letters.

The contested sign is a figurative mark composed of the verbal element ‘don pepe’, written in lower case letters, and, above it, a circular figurative element.

The verbal element ‘PEPE’, present in both marks, and the verbal elements ‘don’ and ‘don pepe’ of the contested sign, will be perceived by part of the relevant public as having the meanings indicated above in section c) under the heading ‘Likelihood of confusion – Article 8(1)(B) EUTMR’, and they have a normal degree of distinctiveness in relation to the relevant goods in Classes 18 and 25.

The verbal element ‘Jeans’ in the earlier mark will be perceived by the relevant public as meaning ‘trousers made of denim’, as this is a basic English word. This element is considered weak for clothing articles, as it indicates the nature of the goods. The verbal element ‘LONDON’ in the earlier mark will be perceived by the majority of the relevant public as referring to the capital of the United Kingdom, either because ‘LONDON’ is a basic English word or because there is a very similar equivalent word in the relevant language (e.g. ‘Londres’ in Spanish and French, ‘Londen’ in Dutch, etc.). Taking into account the fact that London is a famous city in the fashion industry, this word is considered weak in relation to the relevant goods in Class 25. Therefore, the word ‘PEPE’ is the most distinctive element in the earlier mark.

The contested sign has no elements that are more distinctive than other elements.

The element ‘Pepe Jeans’ in the earlier mark is the dominant element as it is the most eye-catching and overshadows, by virtue of its central position and large size, the smaller verbal element ‘LONDON’.

The contested sign has no elements that are more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive verbal element ‘PEPE’. This element constitutes the first verbal element of the earlier mark and the second verbal element of the contested sign. It is the most distinctive element of the earlier mark. It is also the first word of the earlier mark, and will therefore attract the primary attention of the consumer. Although it is the second element in the contested sign, it is the largest element of that sign and will be easily perceived as an independent element, as it is separated by a space from the first verbal element. However, the marks differ in their stylisation, in the additional verbal elements ‘Jeans’ and LONDON’ in the earlier mark, which, as explained above, are weak, and in the additional circular figurative element and the verbal element ‘don’ in the contested sign. 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, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive word ‘PEPE’, present identically in both signs. The pronunciation differs in the sound of the second, weak, word, ‘JEANS’, of the earlier mark and in the sound of the first word, ‘don’, of the contested sign. Furthermore, the marks will further differ aurally in the sound of the weak word ‘LONDON’ of the earlier mark, if it is pronounced.

Therefore, the signs are aurally similar to an average degree.

Conceptually, part of the public in the relevant territory will perceive the distinctive element ‘PEPE’ in both marks as having the same meaning. The figurative element in the contested sign will not evoke a clear concept. As the earlier mark and the contested sign will be associated with similar meanings on account of the element ‘PEPE’, the signs are conceptually similar to an average degree for part of the relevant public.

The remaining part of the relevant public will perceive only the weak elements ‘Jeans’ and ‘London’ in the earlier mark as having a specific concept; for this part of the relevant public, the marks are not conceptually similar.

Taking into account the abovementioned visual, aural and, for part of the relevant public, conceptual coincidences, the signs under comparison are similar.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As seen above, the marks are visually, aurally and, for part of the relevant public, conceptually similar due to the coincidence in the word ‘PEPE’, which has an inherent average degree of distinctiveness, which is of course enhanced by the reputation of the earlier mark. The word ‘PEPE’ is the most distinctive element in the earlier mark, as the remaining elements, ‘Jeans’ and ‘LONDON’, are weak in relation to clothing. Therefore, the word ‘PEPE’ is the most important element in the earlier mark. When encountering the contested sign, the relevant public will easily perceive the word ‘PEPE’, as it plays an independent distinctive role in it. The fact that the coinciding word, ‘PEPE’, is preceded in the contested sign by the word ‘DON’ will not divert the attention from it, as ‘DON’ is rather short and separated by a space from the coinciding word; moreover, for the Spanish-speaking part of the relevant public, it merely qualifies the name ‘pepe’, as it is a title meaning ‘mister’, and for the remaining part of the relevant public it is meaningless.

Furthermore, the goods for which the earlier mark has a reputation, namely clothing, and the contested goods, namely studs of leather; straps (leather -); straps made of imitation leather; shoulder straps; laces (leather -); chin straps, of leather; leather thread, leather, unworked or semi-worked; leather and imitation leather; leather for shoes; moleskin [imitation of leather]; imitation leather in Class 18, are all related to or used in the fashion industry. Therefore, the fact that the reputed goods mainly target end consumers, while the contested goods target mainly a professional public that will use them in the manufacturing process, is irrelevant. Fashion designers, purchasers of raw materials for manufacturing clothing and footwear, manufacturers of clothing and footwear, etc. have to select and buy raw materials, such as leather and imitation of leather, on a daily basis. These people are all well aware of the marks in the fashion industry, especially when they are reputed, as in the present case, and will, on account of the element ‘PEPE’, link the contested sign with the reputed earlier mark.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and reputation of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods for which the opposition under Article 8(1)(b) EUTMR was not upheld:

Class 18: Studs of leather; Straps (Leather -); Straps made of imitation leather; Shoulder straps; Laces (Leather -); Chin straps, of leather; leather thread, Leather, unworked or semi-worked; Leather and imitation leather; Leather for shoes; moleskin [imitation of leather]; Imitation leather.

As seen above, the earlier trade mark has a reputation for clothing in Class 25.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

• The reputation of the earlier mark makes it likely that the relevant public will, when they see the contested mark, call the earlier mark to mind and form a mental association between them.

• The consumers to whom the earlier mark is well known are precisely the consumers at whom the contested goods are aimed.

• The advertising function of the earlier mark as a vehicle for building up and retaining brand loyalty will be damaged.

• By using the contested mark, the applicant will inherently benefit from the opponent’s significant investment in and marketing of the earlier mark, thus taking unfair advantage of the distinctive character and repute of the earlier mark.

From the evidence submitted by the opponent, it is clear that substantial amounts were invested in promoting the earlier mark and that over a period of more than four decades a strong reputation has been built up. The earlier mark has obtained an image of high quality and trendsetting.

Furthermore, as seen above, the marks are visually, aurally and, for part of the relevant public, conceptually similar, as they have in common the element ‘PEPE’ and the relevant goods are all related to or used in the fashion industry.

The unfair advantage taken of the distinctive character or the repute of the earlier trade mark consists in the fact that the image of the reputed mark or the characteristics that it projects will be transferred to the contested goods, with the result that the marketing of those goods may be made easier by that association with the earlier reputed mark. Indeed, high quality and trendsetting are characteristics associated with the earlier mark that could easily be transferred to the contested goods, which are mainly leather and imitations of leather.

By riding on the coat-tails of the reputed mark, the applicant would benefit from its attractiveness, reputation and prestige. He would exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain its image.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining earlier rights on which the opposition was based and for which the opponent claimed Article 8(5) EUTMR as a ground of the opposition.

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 applicant is the losing party, he 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) and (6) and Rule 94(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

Dorothée SCHIEPHAKE

Saida CRABBE

Inés GARCÍA LLEDÓ

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.