OPPOSITION No B 2 502 071

Strellson AG, Sonnenwiesenstr. 21, 8280 Kreuzlingen, Switzerland (opponent), represented by Leo Schmidt-Hollburg Witte & Frank Rechtsanwälte Partnerschaftgesellschaft MbB, Neuer Wall 8020354 Hamburg, Germany (professional representative)

a g a i n s t

The Janger Limited, c/o Leigh Philip & Partners, 2nd Floor Devonshire House, 1 Devonshire Street, London W1W 5DS, United Kingdom (applicant), represented by Dehns Mohun LLP, 13/14 Park Place, Leeds LS1 2SJ, The United Kingdom (professional representative).

On 14/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 502 071 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 661 418. The opposition is based on, inter alia, European Union trade mark registration No 13 083 852. The opponent invoked Articles 8(1)(a) and (b), 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 13 083 852.

1. The goods and services

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

Class 4: Candles and wicks for lighting.

Class 8: Decanting liquids (Implements for -) [hand tools], Stropping instruments, Oyster openers, Tableware (cutlery), Flat irons, non-electric, Can openers (non-electric), Ice picks, Table forks, Non-electric hand implements for hair curling, Vegetable shredders, Vegetable shredders, Razor blades, Spoons, Manicure sets, Knives, Cutlery, Mortars for pounding, Nail files, Nail scissors, Shaving cases, Nutcrackers, Nippers, Shavers (electric or non-electric), Razor knives, Leather strops, Scissors, Silver plate (cutlery), Sugar tongs.

Class 9: Glasses, sunglasses.

Class 11: Sinks, Sinks, Extractor hoods for kitchens, Bath fittings, Heaters for baths, Baths, Bath linings, Lamps, Bidets, Arc lamps, Toasters, Ceiling lights, Showers, Baths, Ice chests, Electric deep fryers, Gas lamps, Deep freezing apparatus, Refrigerating chests, Hair driers [dryers], Lanterns, Water heaters, Heating pillows, not for medical purposes, Heating installations, Fireplaces, coffee filters , electric, Coffee machines, electric, Kilns, Chandeliers, Refrigerating cabinets, Lamp shades, Lanterns for lighting, Microwave ovens, Mixer taps for water pipes, Stoves [heating apparatus], Apparatus for sanitary purposes, Pocket torches, electric, Plate warmers, Water closets, Bathroom sinks, Toilet seats, Flushing apparatus, Urinals [sanitary fixtures], Washbasins (parts of sanitary installations), Water intake apparatus, Igniters.

Class 14: Badges of precious metal, Agates, Amulets [jewellery], Pins [jewellery], Bracelets [jewelry], Watchstraps, Watches, Ingots of precious metals, Jewellery charms, Jewellery of yellow amber, Brooches [jewelry], Busts of precious metal, Chronographs (watches), chronometers, Timepieces, Diamonds, Boxes of precious metal, Threads of precious metal [jewellery, jewelry], Jewellery stones, Clocks and watches, electric, Ivory jewelry, Housings for clocks and watches, Figurines (statuettes) of precious metal, Clock cases, Watch crystals, gold thread [jewellery, jewelry (Am)], silver wire, Semi-precious stones, Necklaces [jewellery], Hat ornaments of precious metal, Jewellery, Ornaments [jewellery, jewelry (Am.)], Boxes of precious metal, Chains (jewellery), Watch chains, Cufflinks, Tie pins, Tie pins, Works of art of precious metal, Medals, Medallions [jewelry], Coins, Ornamental pins, Earrings, Pearls [jewellery], Platinum [metal], Pearls made of ambroid [pressed amber], Rings being jewelry, Key rings [trinkets or fobs], Jewellery cases [caskets], Ornaments (shoe —) of precious metal, Silver thread [jewellery, jewelry (Am.)], Silver ornaments, Sundials, Spinel [precious stones], statuettes of precious metals, Stopwatches, Paste jewelry (costume jewelry), Watch chains, Watches, Timepieces, Small clocks, Cases for watches [presentation], Alarm clocks, Jewellery cases [caskets].

Class 16: Document files; Scrapbooks; Announcement cards; Stationery (Cabinets for -) [office requisites]; Framed or unframed pictures (paintings); Paper sheets (stationery); Pencils; Pencil sharpeners (electric or non electric); Pencil sharpeners (electric or non electric); Pads (stationery); Paperweights; Desk trays; Writing paper; Booklets; Books; Bookends; Office requisites (except furniture); Printed matter; Penholders; Fountain pens; Greeting cards; envelopes(stationery); Folders for papers; Passport holders; Hat boxes of cardboard; Calendars; Coasters of paper; Cards; Card; litographic works of art; Bookmarkers; Nibs; Punches (office requisites); Magazines (periodicals); Paper knives (office requisites); Scrapers [erasers] for offices; Pencil leads; Lead holders [propelling pencils]; Notebooks; Wrapping paper; Stationery; Face towels of paper; Paper towels; Table napkins of paper; Tissues of paper; Paper bags; Photographs; Photo-engravings; Posters; Portraits; Postcards; Prospectuses; Rubber erasers; Chaplets; Boxes of cardboard or paper; Signboards of paper or cardboard; Patterns for making clothes; Boxes for pens; Inkwells; Writing instruments; Writing or drawing books; Writing sets with writing paper; Writing materials; Place mats of paper; Paper table covers; Paper table covers; Table linen of paper; Tablemats of paper; Fiberboard boxes; Wrapping paper; Drawing materials; Notebooks; Boards for drawing purposes; Drawing sets; Drawing instruments; Drawings; Periodicals; Newspapers; Cigar bands; Canvas.

Class 18: Briefcases, document wallets, beach bags, packaging bags (envelopes, pouches) of leather, trimmings of leather for furniture, wallets, camping bags, horse blankets, coverings of skins (furs), attaché cases, boxes of leather or leatherboard, boxes and cases of vulcanised fibre, net bags for shopping, shopping bags; Key cases [leatherware]; Casings of leather for springs, skins (furs), umbrellas cases, purses (pouches), chain mail purses (not of precious metal), travelling bags, handbags, hunting bags, card cases (wallets), cases of leather or leatherboard, garment bags for travel, suitcases, trunks, vanity cases, umbrellas, travelling bags, rucksacks, boxes of leather or leatherboard, school satchels, school bags, parasols, walking sticks, wheeled bags, haversacks, toolbags of leather (empty), kid leather.

Class 20: Beds; Library shelves; Office furniture; Boxes of wood or plastic; Coatstands; Chests, not of metal; High chairs for babies; Cushions; Coat hangers; Chests of drawers; Wickerwork; Settees; Air mattresses, not for medical purposes; Mattresses; Furniture; Racks; Umbrella stands; Sleeping bags for camping; Cupboards; Desks; Food trolleys (furniture); Easy chairs; Settees; Mirrors (silvered glass); Chairs; Tables; Vitrines; Curtain rings; Support rails for curtains; Poles for curtains; Newspaper display stands, interior window blinds (furnishing articles), slatted indoor blinds, pulleys of plastics for blinds, plaited wooden screens (furniture); Atches (door-), not of metal; Knobs of porcelain.

Class 21: Toilet brushes; Brush goods; Busts of china, terra-cotta or glass; Butter dishes; Butter-dish covers; China ornaments; Cocktail stirrers; Hot pots, not electrically heated; Covers for dishes; Pot lids; Cosmetic powder compacts; Soap boxes; Tea caddies; Sugar bowls; Egg cups; Buckets; Jars (Glass -) [carboys]; Vessels of metal for making ices and iced drinks; Ice buckets; Ice cube molds [moulds]; Cruets; Cruets; Chopsticks; Comb cases; Drinking bottles for sports; Figurines (statuettes), of porcelain, terracotta or glass; Flasks; Bottles; Bottle openers, electric and non-electric; Fruit presses (non-electric), for household purposes; Thermally insulated containers for beverages; Heat-insulated containers for foodstuffs; Household or kitchen vessels; Vegetable dishes; Tableware, other than knives, forks and spoons; Kitchen utensils; Kitchen utensils; Spice sets; Watering cans; Enamelled glass; Boxes of glass; Glasses (receptacles); Glass bowls; Glass mosaics, not for building; Painted glassware; Griddles (cooking utensils); Gridiron supports; Gloves for household purposes; Napkin holders; Household utensils; Shirt stretchers; Trouser presses; Trouser stretchers; Coffee filtering apparatus (non-electric); Coffee pots (non-electric); Coffee grinders, hand-operated; Coffee sets; Combs; Teapots; Pitchers; Decanters; Coasters not of paper and other than table linen; Cheese-dish covers; Saucepans; Cookie jars; Ceramics for household purposes; Candle extinguishers; Candlesticks; Cauldrons; Kettles (non electric); Stretchers for clothing; Buttonhooks; Moulds (kitchen utensils); Non-electric bakeware; Cooking pots; Fitted picnic baskets (including dishes); Baskets for domestic use; Demijohns; Corkscrews, electric and non-electric; Cosmetic utensils; Tie presses; Crystal [glassware]; Cake moulds; Kitchen containers; Kitchen utensils; Food cooling devices, containing heat exchange fluids for household purpose; Refrigerating bottles; Isothermic bags; Works of art, of porcelain, terra-cotta or glass; Candlesticks; Liqueur sets; Basting spoons, for kitchen use; Knife rests for the table; Shakers; Blenders, non-electric, for household purposes; Mills for domestic purposes, hand-operated; Hand-operated noodle machines; Fruit cups; Cups of paper or plastic; Paper plates; Perfume vaporizers; Pepper mills, hand-operated; Pepper pots; Holders for flowers and plants (flower arranging); Shaving brushes; Slabs; Press-out moulds for cookies and biscuits; Porcelain ware; Lunch boxes; Powder puffs; Cleaning instruments (hand-operated); Wiping cloths; Smoke absorbers for household purposes; Graters (household utensils); Cleaning instruments [hand-operated]; Beaters, non-electric; Stirring spoons (for kitchen use); Salad bowls; Salt shakers; Salt cellars; Scrapers (kitchen implements); Brushes for cleaning tanks and containers; Basins [bowls]; Scoops (tableware); Signboards of porcelain or glass; Whisks, other than electric, for household purposes; Cutting boards for the kitchen; Pressure cookers (autoclaves), non-electric; Shoe horns; Boot brushes; Wax-polishing appliances, non-electric, for shoes; Shoe-trees (stretchers); Dishware; Trivets (table utensils); Sponges for household purposes; Sponge holders; Dinner sets; Lazy susans; Napkin rings; Strainers; Siphon bottles for carbonated water; Nonmetal piggy banks; Dishwashing brushes; Statues of porcelain, terracotta or glass; Earthenware; Boot jacks; Soup bowls; Trays for domestic purposes; Epergnes; Cups; Tea infusers; Tea services [tableware]; Pastry cutters; Rolling pins, domestic; Table plates; Crumb trays; Toilet utensils; Toilet cases; Toilet paper dispensers; Toilet sponges; Pots; Pottery; Tart scoops; Tart scoops; Drinking vessels; Beverage glassware; Flower-pot covers, not of paper; Saucers; Vases; Waffle irons (non-electric); Clothes-pins; Drying racks for laundry; Toothbrushes; Toothbrushes, electric.

Class 24: Napkins, of cloth, for removing make-up, Bath linen (except clothing), Cotton fabrics, Bed covers, Bed clothes and blankets, bedding (linen), Pillowcases [pillow slips], Linings [textile], Curtains, Curtains of textile or plastic, Curtain holders of textile material, Face towels [made of textile materials], Gummed cloth (other than for stationery), Towels, Hemp fabric, Linens, Fabric of imitation animal skins, Plastic material [substitute for fabrics], Buckram, Mattress covers, Coverings for furniture, Upholstery fabrics, Place mats, not of paper, Door curtains, Rugs (Travelling -) [lap robes], Velvet, Sleeping bags [sheeting], Silk [cloth], Quilted blankets, Coverlets (bedspreads), Fabrics, Curtains of textile or plastic, Knitted fabric, Taffeta [cloth], Textile napkins, Fabrics, Fabric for boots and shoes, Table cloths (not of paper), Table runners, Table cloths [not of paper], Oilcloth (for use as tablecloth), Sheets (textile), Tulle, Non-woven textile fabrics, Curtains of textile or plastic, Wall hangings of textile, Table linen, Not of paper; Washing mitts, Elastic woven material, Adhesive fabric for heat application, Traced cloths for embroidery, Woollen fabric, Handkerchiefs of textile.

Class 25: Suits, babywear, swimsuits, swimming trunks, bath robes, bathing caps, bath sandals, bath slippers, bandanas (kerchiefs for clothing purposes), clothing of imitations of leather, motorists' clothing, clothing, paper clothing, fittings of metal for shoes and boots, teddies (bodies), bras, belts (clothing), clothing for gymnastics, gymnastic shoes, half-boots (booties), foulards, gloves (clothing), slippers, short-sleeved shirts, shirts, trousers, braces, hats, jackets (clothing), jerseys (clothing), garment bags (prefabricated), ready-made clothing, headgear, camisoles, corsets, neckties, bibs (not of paper), leather clothing, underwear, suit coats, corselets, dressing gowns, muffs (clothing), caps, outerclothing, ear muffs (clothing), overalls, mules, parkas, pelerines, furs (clothing), petticoats, pullowers, pyjamas, cyclists' clothing, raincoats, skirts, sandals, scarves, sashes, sleepsuits, veils (clothing), wimples, panties, lace boots, shoes (low shoes), footwear, aprons for wear, ski boots, briefs, socks, sock suspenders, boots for sports, boots, lace boots, snoods (clothing), esparto shoes or sandals (espadrilles), shawls, beach clothes, beech shoes, garters, stockings, tights, sweaters, T-shirts, togas (clothing), knitwear (clothing), sports jerseys, suit overcoats (clothing), underwear, knickers, undergarments, body linen (clothing), wet suits for water skiing, vests, hosiery (clothing).

Class 27: Bath mats; Floor coverings; Floor coverings; Vinyl floor coverings; Mats; Non-slip mats; Gymnasium mats; Artificial turf; lino; Oilcloth; Mats; Wallpaper; Reed mats; Wall hangings (not of textile); Mats; Carpets; Carpet underlay; Gymnasium mats; Carpets, rugs and mats; tapestry (non-textile); Textile wallpaper.

Class 34: Lighters for smokers, Mouthpieces for cigarette holders, Matches, Matchboxes, Tobacco pouches, Tobacco jars, Pipes, Cases for cigarettes, Cigar cutters.

Class 35: Retailing, wholesaling, online or catalogue mail order in the fields of household goods, household or kitchen utensils and containers, glassware, porcelain and earthenware, construction articles, DIY articles and gardening articles, lighting apparatus, sanitary installations, clocks, watches and jewellery, printed matter, stationery, office requisites, leather and imitations of leather, and goods made of these materials, namely briefcases, beach bags, bags (envelopes, pouches) of leather, for packaging, leather trimmings for furniture, pocket wallets, bags for campers, horse blankets, coverings of skins (furs), attaché cases, boxes of leather or leather board, boxes of vulcanised fibre, net bags for shopping, shopping bags, key cases (leatherware), casings, of leather, for springs, fur, umbrella covers, purses, chain mesh purses, not of precious metal, valises, handbags, game bags (hunting accessories), card cases (notecases), cases, of leather or leather board, garment bags for travel, suitcases, travelling trunks, vanity cases, not fitted, umbrellas, travelling bags, backpacks, boxes of leather or leather board, satchels, school satchels, parasols, walking sticks, wheeled shopping bags, haversacks, empty tool bags of leather, goatskin leather, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, bag makers' goods and saddlery, furnishings and decorative articles, furniture, mirrors, picture frames, clothing, footwear, headgear, textiles and textile goods, bed covers, table covers, hand tools and implements (hand-operated), cutlery, razors, spectacles, sunglasses, candles and wicks for lighting, carpets, rugs, mats and matting, floor coverings, wall hangings; Advertising, business management; Business administration; Business management and organization consultancy; Counselling on business matters; Market research; Public relations, Office functions.

Class 42: Industrial design, Fashion design and Packaging design, Design of interior decor.

The contested goods are the following:

Class 6: Clothes hooks of metal; hooks of metal; metal hooks.

Class 20: Hangers (Clothes -); Hangers [Coat -]; clothes hangers; clothes hooks; coat hangers; Garment hangers [coat hangers]; hangers for clothes; non-metallic clothes hangers.

Class 21: Clothes drying hangers.

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 6

The contested clothes hooks of metal; hooks of metal; metal hooks are articles which may be used for hanging clothes. The opponent's coatstands and coat hangers are articles that are used for the same purposes, they target the same public and they may also have the same distribution channels. Furthermore, they are in competition. The goods are therefore highly similar.

Contested goods in Class 20

The contested hangers [coat -]; coat hangers; garment hangers [coat hangers] are identically contained in both lists of goods (including synonyms).

The contested hangers (clothes -); clothes hangers; hangers for clothes; non-metallic clothes hangers include as broader categories, the opponent’s coat hangers. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested clothes hooks are articles which may be used for hanging clothes. The opponent's coat hangers are articles that are used for the same purposes, they target the same public and they could also have the same distribution channels. Furthermore, they are in competition. The goods are therefore highly similar.

Contested goods in Class 21

The contested clothes drying hangers are articles used for hanging and drying clothes. These goods may have the same purpose as the opponent's coat hangers (for example to dry shirts) they target the same public and they may also have the same distribution channels. The goods are therefore considered to be similar.

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 or similar to a high degree are directed at the public at large. The degree of attention is average.

3. The signs

JOOP	LOOPY
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 consists of the word 'JOOP'. The contested mark is the word mark 'LOOPY'.

The word 'JOOP' has no meaning in the majority of the relevant territories. The Dutch speaking part public, however, will perceive it as a male name, namely a short form of the name Johannes.

The word 'LOOPY' of the contested mark means 'having many loops' in English (see Oxford Dictionary Online). It has no meaning in other languages of the European Union.

Both, 'JOOP' and 'LOOPY' are considered distinctive in relation to the relevant goods at hand. The marks, both being word marks, have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ’-OOP-' placed in the same positions within the marks. They differ in their first letter 'J/L' which will not be missed by the consumers because of their initial positions in the marks. The signs also differ in the additional letter 'Y' at the end of the contested mark which introduces a noticeable difference.

In its submissions, the opponent claims that the initial letters are visually very similar, since the letter ‘L’ is the mirror face of the letter ‘J’ and vice versa. The opposition Division notes, that while there are some similarities between the letters (both are composed of vertical line), the tail of the letter ‘J’ is round and is facing to the left while the letter ‘L’ is composed of vertical line and a shorter horizontal line on the bottom right.

The signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛OOP’, present identically in both signs. The pronunciation differs in the in the sound of the first letters ‛J/L’ which implies a very different movement of the mouth, as the sound of the ‘L’ is produced by rolling the tongue, whereas this is not the case in the articulation of the ‘J’. Moreover, as the applicant correctly pointed out, the earlier mark is pronounced in one syllable ‘joop’ while the contested mark is pronounced in two syllables ‘loo-py’.

The pronunciations of the signs also differ in the additional final letter 'Y' of the contested mark. According to the opponent, the ending letter 'Y’ is generally perceived as diminutive and is therefore not paid too much attention by the relevant consumer. With regard to the opponent’s argument it has to be noted that this is only applicable in English. In majority of the languages the letter ‘Y’ at the end of the word is not a common letter/sound and will therefore not go unnoticed.

The signs are similar to a low degree.

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

The Dutch part of the public will perceive the word ‘JOOP’ as a name or a surname. For this part of the public, since the contested mark lacks any meaning in this language, the signs are not conceptually similar. The same applies for the English speaking part of the public that will only perceive the word 'LOOPY' with the meaning explained above.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade mark has a reputation in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

On 08/09/2015, the opponent submitted the following evidence:

• Exhibit 1: an extract from commercial register of the canton of Thurgau, Switzerland.

• Exhibit 2: an extract from commercial register A of Amtsgericht Hamburg, dated 01/12/2010.

• Exhibit 3: An extract from commercial register B of Amtsgericht Hamburg in English, dated 01/12/2010, concerning the company JOOP GmbH.

• Exhibit 4: an undated extract from a commercial register of Hamburg in German, concerning the company JOOP GmbH.

• Exhibit 5: a depiction of the mark JOOP!, together with an address and a phone number of the company.

• Exhibit 6: an extract from the opponent's website Joop! in German, showing different goods such as woman and man clothing, footwear, watches, textile goods, etc.

• Exhibit 7: an undated picture of a JOOP! shop.

• Exhibit 8: an undated picture of the inside of a JOOP! shop.

• Exhibit 9: a copy of 'Brigitte fmk 99' market survey conducted by MMA Media Markt Analysen GmbH, Frankfurt in Germany. The interviews were conducted from 4^th of March to 9^th of April 1999 among 330 interviewers (German woman between 14 and 64 years old). According to the results of the study of the brand JOOP! had 85% awareness among women in Germany in 1999. The document is in German with translation in English.

• Exhibit 10: Brigitte 3-dimensional brand analysis for year 2000 in German. The results for the brand JOOP! show the following: 67% familiarity for fragrances, 65% familiarity for outer clothing, 38% familiarity for underwear. Translation into English is provided.

• Exhibit 11: Results of the Stern Bibliothek consumer study ‘Marken Profile 10.’ conducted in Germany in 2003 in relation to outer clothing/leisure wear/jeans. The study shows the following data: 65% familiarity of the brand JOOP! in Germany, 60% familiarity of the brand JOOP! in relation for women and men respectively.

• Exhibit 12: Results of the Brigitte consumer study in Germany for year 2004. In relation to JOOP! brand, the study shows the following awareness data: women’s jeans 65%, fragrances 69%, shower and bath preparations 39%;

• Exhibit 13: Results of the Brigitte consumer study in Germany for the year 2008. The study shows 71% awareness of the JOOP! brand in relation to outer clothing for woman/leisurewear/ jeans.

• Exhibit 14: Results of the Brigitte consumer study in Germany for year 2010. In relation to brand JOOP! the study shows 27% awareness for outer clothing for woman, leisurewear and jeans, 36% for underwear and 27% for shoes.

• Exhibit 15: an extract a webpage GJ Media Sales (www.gujmed.) dated in July 2011. The extract is in German and is mentioning the mark JOOP!.

• Exhibit 16: a document relating to the brand or company JOOP!, dated in November 2011. The document is in German.

• Exhibit 17: an extract from Spiegel mentioning the mark JOOP! The document is in German.

• Exhibit 18: a copy of a judgment (Court file No. 315 O 657/05), dated on 15/06/2006, issued by Landgericht Hamburg, in relation to the signs JOOP! vs. LOOP. The document is in German.

• Exhibit 19: a decision of the Deutsches Patent und Markenamt in German, dated in 2012

• Exhibit 20: a decision of Deutsches Patentamt in German, dated 01/09/1998.

• Exhibit 21: a decision of the Bundespatentgericht in case 32W (pat) 56/99 in German.

• Exhibit 22: a decision of EUIPO (case B 809 683), dated in 2007. The decision concerns the signs JOOP! vs. LOOP in which the Opposition Division upheld the opposition.

• Exhibit 23: a decision of EUIPO in English (case B 641 839), dated in 2006. The decision concerns the signs JOOP! vs. DENIM LOOP in which the Opposition Division partially upheld the opposition.

• Exhibit 24: a decision of EUIPO in English (case B 1 843 054) in English dated in 2012 concerning the marks JOOP! vs. by HOOP in which the Opposition Division partially upheld the opposition.

On 13/04/2016, the opponent also provided the following evidence:

• Exhibit 4a: a translation of the Exhibit 4.

• Exhibit 15a: a translation of the Exhibit 15 listed above.

• Exhibit 16a: a translation of the Exhibit 16.

• Exhibit 17a: a translation of the Exhibit 17.

• Exhibit 18a: a translation of the Exhibit 18.

• Exhibit 25: results of Der Spiegel Outfit 9.0 study dated in February 2016 in Germany. The document shows the familiarity of the brand JOOP! in Germany (96% for woman clothing).

• Exhibit 26: Best of clipping for JOOP! dated in July 2012 for womenswear and menswear containing extracts of press releases regarding the earlier mark JOOP!.

• Exhibit 27: pictures of clothes hangers with different brands.

• Exhibit 28: extracts from webpages www.walmart.com, www.kleiderbuegelshop24.de, www.thehangerstore.co.uk, etc., showing that clothes hangers ar available for sale over the internet.

• Exhibit 29: extract from different webpages, showing that JOOP! clothes hangers are sold via the internet.

As a preliminary remark, the Opposition Division notes that the applicant’s argues that some of the evidence is not in the language of proceedings of the present opposition and should be, therefore, disregarded.

On 07/05/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 12/09/2015.

The opponent submitted some of the translations on 13/04/2016, that is, after the expiry of the abovementioned time limit. According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office. Therefore, the Exhibits 4, 15, 16, 17, 18 and their translations provided on 13/04/2016 will not be taken into account in the present case. The same applies to the evidence provided in the Exhibits 25-27 which was submitted after the expiry of the time limit.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market.

It is true that the evidence mainly refers to the earlier mark as ‘JOOP!’ However, the addition of the exclamation mark at the end of the mark does not alter the distinctive character of the mark as the additional element only endows the sign as a whole with connotations of an interjection or a command. Therefore, the evidence of reputation filed mostly for the word ‘JOOP!’ is acceptable.

The remaining evidence which can be taken into account indicates that the mark ‘JOOP’ has been used as a trade mark for a substantial period of time.

From the documents submitted it is also clear that the earlier mark enjoys a high degree of recognition among the relevant public in Germany for ‘clothing’. The surveys conducted by an independent company (Exhibits 9-14) are in German with translations in English and refer to the years 1999, 2000, 2003, 2004, 2008 and 2010. The results of the surveys were published in two German magazines (‘Brigitte’ and ‘Stern’). From the surveys it can be inferred that a large percentage of the German public interviewed are familiar with the earlier mark for clothing. The data shown in the surveys therefore clearly indicates a high degree of awareness of the opponent’s sign ‘JOOP’ in relation to clothing in Germany.

Therefore, it is concluded that the documents provided by the opponent indicate the existence of high degree of distinctiveness of the earlier mark in part of the relevant territories, i.e. Germany for the part of the earlier goods and services, namely for different clothing in Class 25. For the rest of the earlier goods and services, considering that the higher distinctiveness was not proven, and the word ‘JOOP’ has no meaning in relation to them, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice

versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods under comparison are partially identical, partially similar (also to a high degree).

The signs coincide in the letters 'OOP-' placed in the same position within the signs. Nevertheless, the signs also have easily perceptible visual and aural differences. The main difference relates to their first letters 'J/L' which are, owning to their position, clearly visible. Furthermore, the signs also differ in the last letter 'Y' of the contested mark. All these differences make the coinciding letters 'OOP-' in common less obvious.

Although the signs coincide in some letters, comparing the marks in overall terms, the Opposition Division finds that there are sufficient differences to outweigh the similarities between them. The consumers, even with imperfect recollection, will not confuse a word mark consisting of letters ‘JOOP’, with the word 'LOOPY'. Moreover, even considering that the earlier trade mark enjoys enhanced distinctiveness due to its extensive use and reputation for some of the goods in Class 25, the outcome of no likelihood of confusion remains the same. These goods for which the enhanced distinctiveness is proven are dissimilar to the contested goods at hand. They have different natures, purposes, origins and distribution channels. None of the goods are in competition with one another and they are not interchangeable. Finally, goods (and services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). With the current goods the Opposition Division can see neither an essential nor a significant connection between these sets of goods. Since the similarity of goods and services is a sine qua non condition for the existence of likelihood of confusion, the enhanced degree of distinctiveness of the opposing mark in relation to the contested goods cannot change the outcome.

The opponent refers to previous decisions of the Office and previous national decisions to support its arguments. Some of the decisions (Exhibits 19-21) are in German and cannot be taken into account. 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). Furthermore, decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399). Moreover, the signs considered in the current opposition and those involved in these previous decisions differ. Each case must be judged on its own merits, having regard to all the relevant factors.

The opponent has also based its opposition on the European Union trade mark registration No 9 222 142 for the word mark 'JOOP' Since this mark is even less similar to the one which has been compared and cover the same or a narrower scope of goods and services, 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 and services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

REPUTATION – ARTICLE 8(5) EUTMR

According to the opponent, the earlier European Union trade marks No 13 083 852 ‘JOOP’ and 9 222 142 ‘JOOP!’ have a reputation in the European Union for all the goods and services for which they are registered.

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 signs must be either identical or similar.

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

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) 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. 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 evidence submitted by the opponent to prove the enhanced distinctive character and reputation of the earlier marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. The conclusion is that the opponent has proven that the mark ‘JOOP’ acquired enhanced distinctiveness in the Germany in relation to clothing.

However, the Opposition Division notes apart from claiming a reputation and arguing that the signs are similar, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 30).

In this regard, the opponent states that the applicants chose the application with the sole intention of benefitting from the power of attraction, the reputation and the prestige of the opponent’s trade mark in order to exploit the marketing efforts of the opponent. However, as mentioned above, the opponent should have submitted 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.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and be detrimental to, the distinctive character or repute of the earlier trade marks. The circumstances described as being ‘detrimental to the repute’, ‘detrimental to the distinctive character’, or taking ‘unfair advantage of the distinctive character or repute of the earlier trade mark’, are in fact very different from each other. In its submissions, the opponent refers to them without any distinction, treating the whole as an unavoidable effect of the similarity of the signs and the alleged reputation of the earlier trade marks. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade marks, the opposition is considered not well founded under Article 8(5) EUTMR.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks. The opponent merely claims that such injuries would occur, implying that this would be an unavoidable effect of the similarity of the signs and the alleged reputation of the earlier trade marks.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade marks, the opposition is considered not well founded under Article 8(5) EUTMR.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lars HELBERT

Janja FELC

Adriana VAN ROODEN

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.