OPPOSITION No B 2 582 750

Perry Ellis International Europe Limited, Olympic House, Pleasants Street, Dublin 8, Ireland (opponent), represented by Taylor Wessing, Isartorplatz 8, 80331 München, Germany (professional representative)

a g a i n s t

Fjærå Holding ApS, Kurlandsgade 20, 4. th., 2300 København S, Denmark (applicant), represented by Nordia Advokatkontor, Østergade 16, 2. th., 1100 Copenhagen K, Denmark (professional representative).

On 07/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 582 750 is partially upheld, namely for the following contested goods:

Class 28 Sporting articles, including (but not limited to) apparatus for games; Rackets; Protective paddings [parts of sports suits]; Bob-sleighs; Body boards; Punching bags; Balls for games; Ball wooden tables for table tennis; Tables for indoor football; Table football tables; Bows for archery; Archery implements; Hang gliders; Kites; Electronic targets; Paintballs (ammunition for paintball guns); Fishing equipment; Fish hooks; Gut for fishing; Rods for fishing; Harpoon guns [sports articles]; Harpoon guns (sports articles); Reels for fishing; Paintball guns [sports apparatus]; Skateboards; Skis; Targets; Sling shots (sports articles); Sleighs (sport articles); Lines for fishing.

2. European Union trade mark application No 13 961 214 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK - JOINDER OF PROCEEDINGS (ARTICLE 9(1) EUTMDR)

The opponent had initially filed two oppositions against the contested application, namely opposition No 2 582 750 and No 2 582 743. With letter of 05/06/2018 the Office decided to join these proceedings and treat them as one opposition. The joined proceedings were continued under the joined opposition number 2 582 750.

REASONS

The opponent filed an opposition against all the goods (in Classes 8, 9, 14, 16, 21 and 28) of European Union trade mark application No 13 961 214 ‘Raw Penguins’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 6 587 992 ‘AN ORIGINAL PENGUIN’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

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

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 EUTM No 6 587 992 ‘AN ORIGINAL PENGUIN’.

a) The goods

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

Class 16 Printed matter concerning the sporting industry, sporting events and sporting goods; newsletters and trade brochures about the sporting industry, sporting events, and sporting goods; teaching and instructional materials in the field of sport; posters, stickers and decals; pictures, photographs; stationery, pens.

Class 18 Luggage, luggage straps, travel bags, garment bags and shoe bags for travel, briefcase, briefcase-type portfolios, attaché cases, messenger bags, handbags, pocketbooks, leather and fabric evening bags, clutches, tote bags, athletic bags, duffel bags, beach bags, diaper bags, cosmetic bags sold empty, toiletry cases sold empty, school bags, knapsacks, waist packs, wallets, billfolds, business card cases, credit card cases, key cases, change purses; umbrellas; belts of leather.

Class 25 Clothing, footwear, headgear; sportswear, ski clothing, clothing for snowboarders, clothing for roller-skaters and ice-skaters; gloves; belts; snowboard and ski boots; absorbent inserts for use with footwear.

Class 28 Sports equipment and apparatus; snow skis; ski poles; snowboards; snowboard bindings; skates; in-line skates; skating boots; knee pads, wrist pads and elbow pads, all for athletic use; protective gloves for skating and snowboarding; bags for sports equipment.

After the application had been partially refused following another opposition, the contested goods are the following :

Class 8 Cutlery.

Class 9 3D spectacles; Batteries, electric; Battery chargers; Spectacles [optics]; Cameras [photography]; Cell phones; Cell phone straps; Sunglasses; Sports glasses.

Class 14 Jewellery, including (but not limited to) bracelets, chains, rings, pearls and earrings; Clocks; Watch cases; Watch bands; Watch fobs; Egg-timers.

Class 16 Paper table covers; Table napkins of paper; Coasters for beer glasses.

Class 21 Drinking glasses; Mugs; Coasters, not of paper and textiles; Pepper mills, hand-operated; Salt shakers; Egg cups; Cutting boards for the kitchen; Potholders; Pitchers; Watering cans; Coffeepots, non-electric; Cookie jars; Cake moulds; Knife blocks.

Class 28 Sporting articles, including (but not limited to) apparatus for games; Rackets; Protective paddings [parts of sports suits]; Bob-sleighs; Body boards; Punching bags; Balls for games; Ball wooden tables for table tennis; Tables for indoor football; Table football tables; Bows for archery; Archery implements; Hang gliders; Kites; Electronic targets; Paintballs (ammunition for paintball guns); Fishing equipment; Fish hooks; Gut for fishing; Rods for fishing; Harpoon guns [sports articles]; Harpoon guns (sports articles); Reels for fishing; Paintball guns [sports apparatus]; Skateboards; Skis; Targets; Sling shots (sports articles); Sleighs (sport articles); Lines for fishing.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including (but not limited to)’ used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 Classes 8 and 21

The contested goods cutlery in Class 8 and drinking glasses; mugs; coasters, not of paper and textiles; pepper mills, hand-operated; salt shakers; egg cups; cutting boards for the kitchen; potholders; pitchers; watering cans; coffeepots, non-electric; cookie jars; cake moulds; knife blocks in Class 21 are items commonly used in the household, inter alia for the preparation, handling, storage, etc. of food. As such they are dissimilar to all the opponent’s goods in Classes 16, 18, 25 and 28. They differ in nature and purpose, distribution channels, producers, the method of use and are neither in competition with each other nor complementary to each other.

Contested goods in Classes 9 and 14

The contested goods 3D spectacles; Batteries, electric; Battery chargers; Spectacles [optics]; Cameras [photography]; Cell phones; Cell phone straps; Sunglasses; Sports glasses in Class 9 are electronic items, glasses and cell phone accessories and the jewellery, including (but not limited to) bracelets, chains, rings, pearls and earrings; clocks; watch cases; watch bands; watch fobs; egg-timers in Class 14 are jewellery items and time measuring devices and their parts and accessories. As such they are dissimilar to all the opponent’s goods in Classes 16, 18, 25 and 28. They differ in nature and purpose, distribution channels, producers, relevant public, the method of use and are neither in competition with each other nor complementary to each other.

Contrary to the opponent’s opinion there is in particular no similarity to its goods in Class 25. Goods such as sports glasses in Class 9 and jewellery in Class 14 are considered dissimilar to clothing, footwear and headgear. Their nature and main purpose are different. The main purpose of clothing is to dress the human body, whereas glasses are for improving eyesight or protecting the eyes, and jewels are for personal adornment. They do not have the same distribution channels and are neither in competition, nor complementary. Even though some fashion designers nowadays also sell fashion accessories (such as glasses and jewellery) under their marks, this is not the rule; it tends to apply only to (commercially) successful designers.

Contested goods in Class 16

The contested goods paper table covers; table napkins of paper; coasters for beer glasses. are dissimilar to all the opponent’s goods in Classes 16, 18, 25 and 28. They differ in nature and purpose, distribution channels, producers, relevant public, the method of use and are neither in competition with each other nor complementary to each other. There is in particular no similarity to the opponent’s goods in Class 16 printed matter concerning the sporting industry, sporting events and sporting goods; newsletters and trade brochures about the sporting industry, sporting events, and sporting goods; teaching and instructional materials in the field of sport; posters, stickers and decals; pictures, photographs; stationery, pens. Apart from being in the same class these goods have nothing in common with the contested goods, which are disposable paper items used to protect surfaces from stains. However, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification

Contested goods in Class 28

The contested sporting articles, including (but not limited to) apparatus for games; rackets; protective paddings [parts of sports suits]; bob-sleighs; body boards; punching bags; balls for games; ball wooden tables for table tennis; tables for indoor football; table football tables; bows for archery; archery implements; hang gliders; kites; electronic targets; paintballs (ammunition for paintball guns); fishing equipment; fish hooks; gut for fishing; rods for fishing; harpoon guns [sports articles]; harpoon guns (sports articles); reels for fishing; paintball guns [sports apparatus]; skateboards; skis; targets; sling shots (sports articles); sleighs (sport articles); lines for fishing are included in the broad category of, or overlap with, the opponent’s sports equipment and apparatus. Therefore, they are identical.

b) 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 are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

AN ORIGINAL PENGUIN	Raw Penguins
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 element ORIGINAL of the earlier mark is a word of Latin origin that forms part of many EU-languages (e.g. English, German, Spanish, etc.). Even where it is not part of the native language, consumers throughout the Union will still understand its meaning, as in any case it can be considered a basic English word. It is non-distinctive for the goods in question as it merely indicates that they are genuine/authentic. The element AN of the earlier mark is an English indefinite article and will most likely also be understood by a considerable part of the public, at least by English-speaking consumers. It will be perceived as merely introducing the following words and is therefore, if at all, less distinctive.

The common element PENGUIN in the signs will be understood by English speakers, however also by a lot of other consumers, due to similar words in their language (e.g. German ’Pinguin’, Italian ‘pinguino’, French ‘pingouin’, etc.), as referring to the animal. In any case it has no clear meaning for the goods in question and is therefore distinctive.

The element RAW of the contested sign will be understood by English-speakers as referring to something in its natural, crude, unprocessed state. For the rest of the public it is meaningless. In any case it has no clear meaning for the goods in question and is therefore distinctive.

Visually and aurally (irrespective of different pronunciation rules in different parts of the territory) , the signs coincide in the letters PENGUIN* in their respective last word element. They differ in the letters AN ORIGINAL ******* of the earlier mark versus RAW *******S of the contested sign.

Therefore, taking into account the distinctiveness of the elements for various parts of the public, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The concept of ORIGINAL is in any case non-distinctive and has therefore no impact on the comparison. There is at least an average degree of similarity on account of the common element PENGUIN.

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

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union connection with men’s wear, women’s wear, children’s wear, footwear, headgear, accessories, eyewear and fragrance.

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).

The opponent submitted the following evidence:

‘The PENGUIN brand, protected by the Earlier EUTMs, was launched in 1955 as a fashion and lifestyle trade mark. Known for its unique and detail-oriented clothing, Penguin offers a full range of men’s wear, women’s wear, children’s wear, footwear, headgear, accessories, eyewear and fragrance. The Penguin mark has been used ever since the 1950s. The Penguin iconic golf shirt became a symbol of suburban leisure. The Penguin style is retro, well-groomed and classic, making it the perfect brand for those who seek an independent, intellectual and active lifestyle. It has a strong celebrity and fashion pack following, and the likes of Oasis, James Franco, Johnny Depp and Brad Pitt are among the celebrities which have been seen in Penguin clothes.’

Excerpts from a Brand Guide for the trade mark “ORIGINAL PENGUIN"

Exhibit TW 1

JIGSAW leaflet regarding a Penguin fragrance line and general information about the brand

Exhibit TW 2

Excerpts from the presentation An Original Penguin – Fragrance Launch jigsaw

Exhibit TW 3

‘The Penguin trade marks, both the figurative and the word sign, are featured on all and any products of the Penguin fashion goods as well as on hangtags, labels etc.’

Samples of hangtags and labels

Exhibit TW 4

Samples of clothing articles

Exhibit TW 5

Samples of shoes

Exhibit TW 6

Samples of accessories (bags, key rings, cases)

Exhibit TW 7

‘The Penguin brand is present in North America, Europe and South America with over 1,250 points of sale and more than 61 Penguin mono-brand stores worldwide.’

Printout from Bread & Butter Brand Bible Winter 2014 under the domain breadandbutter.com

Exhibit TW 8

‘As to the European Union, Penguin products are available for purchase in stores in many EU Member States, inter alia in the UK, Italy, Denmark, Sweden, Belgium, Spain, France, the Netherlands, Germany, Ireland and Finland.’

Samples of invoices to distributors in the UK, Spain, France and Ireland Exhibit TW 9

Witness statement of Francisco Gonzalez-Meza Hoffmann, Managing Director Perry Ellis Europe Limited, of March 10, 2014

Exhibit TW 10

‘Further, the opponent operates an online shop offering goods under the opposition trade marks for sale.’

Hard copies of excerpts from webpages under the domain originalpenguin.co.uk.

Exhibit TW 11

‘Consumers within the EU will also be familiar with the Penguin trade marks from online retailers offering the opponent’s products.’

Hard copies of excerpts from the webpages under the domains tkmaxx.com and zalando.de.

Exhibit TW 12

‘Moreover, the opponent operates a number of flagship stores for the Penguin brand in the UK, for example in Stratford, Covent Garden, Aberdeen, Portsmouth, Cheshire Oaks and Boxpark.’

Photos of shop windows of flagship stores

Exhibit TW 13

Results from the store locator on originalpenguin.co.uk

Exhibit TW 14

‘In the June 2011 edition of Drapers, a UK B2B magazine covering the fashion retail sector, Penguin was ranked among the 10 bestselling brands for men’s footwear.’

Drapers June 2011 article on men’s footwear

Exhibit TW 15

‘For example, the Penguin brand has been recognised by the cool brands 2011/2012 10^th anniversary edition.’

Copy of Penguin entry in cool brands 2011/2012 10th anniversary edition 2001-2011 – an insight into some of Britain’s coolest brands

Exhibit TW 16

‘The opponent spends significant amounts for PR and marketing. For example, the budget for advertisement in print media, in particular magazines, has amounted to more than GBP 100,000.00 (121,309.00 EUR) per year. Moreover, the total PR and marketing budget has amounted to more than GBP 500,000.00 (606,540.00 EUR) per year.’

Witness statement of Francisco Gonzalez-Meza Hoffmann, Managing Director Perry Ellis Europe Limited, of March 10, 2014 already submitted as Exhibit TW 10

‘The opponent has been regularly exhibiting at major fashion trade fairs in Europe, for example the renowned Bread & Butter trade show which takes place every year in Berlin, since 2010’

Printouts of the Bread & Butter area plan of 2010, 2011 and 2012; from Bread & Butter Brand Bible Summer 2010, 2011 and 2012; invite from Bread & Butter 2013 and stand overview and plan of Bread & Butter 2014

Exhibit TW 17

Invoices of the Bread & Butter of 2010, 2011, 2012, 2013 and 2014

Exhibit TW 18

Stand overview and details of the opponent’s presence at the Bread & Butter of 2014

Exhibit TW 19

Witness statement of Francisco Gonzalez-Meza Hoffmann, Managing Director Perry Ellis Europe Limited, of March 10, 2014 already submitted as Exhibit TW 10

‘and (through Kenmark Optical) at the international trade fair for eyewear Silmo in Paris.’

Advertisement of Kenmark Optical in Verdere magazine

Exhibit TW 20

PENGUIN wall at Silmo 2013

Exhibit TW 21

Screenshots from websites under the domain silmoparis.com

Exhibit TW 22

Witness statement of Francisco Gonzalez-Meza Hoffmann, Managing Director Perry Ellis Europe Limited, of March 10, 2014 already submitted as Exhibit TW 10

‘The Opponent is also actively promoting its products under the Earlier EUTMs in social media. For example, as per end 2013, it had more than 12,000 fans in the UK alone. At the same time, it had almost 10,000 followers on twitter in the EU. This figure has risen to more than 14,000 followers as of March 2017. The EU facebook account Original Penguin has currently more than 450,000 likes.’

Socialbakers charts, Penguin distribution of fans

Exhibit TW 23

Screenshot Penguin EU, twitter feed for Penguin Europe

Exhibit TW 24

Screenshot Penguin EU, twitter feed for Penguin Europe (2017)

Exhibit TW 25

Search results for the term “original penguin” on twitter

Exhibit TW 26

Screenshot Penguin EU, facebook account for Penguin Europe (2017)

Exhibit TW 27

‘The Opponent also runs similar social media accounts, inter alia, on youtube, pinterest and instragram.’

Screenshot and hard copies of excerpts from Original Penguin on youtube

Exhibit TW 28

Search results for the term “original penguin” on pinterest

Exhibit TW 29

Exemplary images from the instagram account “@originalpenguin”

Exhibit TW 30

‘The Earlier EUTMs enjoy very broad media coverage. By way of example, we enclose hereto a selection of press clippings from the years 2005 through 2016:’

Selection of press clippings 2005-2016

Exhibits TW 31-42

‘Further information about the brand “original penguin” can be found in the current Brand Book published by the opponent.’

ORIGINAL PENGUIN Brand Book 2016

Exhibit TW 43

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

Whilst a fair amount of marketing efforts were demonstrated in the field of clothing, the opponent failed to submit sufficient evidence regarding the commercial scope of use of the marks. The Opposition Division notes in particular that turnover and sales numbers relating to goods sold under the mark in the relevant territory were neither submitted nor evidenced and that almost none of the sample invoices submitted bear any of the marks concerned. Furthermore, whilst some of the invoiced goods are identifiable as articles of clothing, a considerable amount of the invoiced goods are actually not identifiable by their description. Also the opponent blacked out all commercially relevant data (which was unnecessary given that confidential treatment of this data could have been requested), hence making it impossible to assess the commercial scope of use based on these invoices.

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 have 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, despite the presence of some weak or non-distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

Account is taken of the fact that 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

Taking into account the aforesaid a likelihood of confusion between the earlier mark and the contested sign cannot be excluded with sufficient certainty, given that the goods in Class 28 are identical and the signs are similar on all levels of the comparison.

It is conceivable that the relevant consumer might perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a partial 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 6 587 992 ‘AN ORIGINAL PENGUIN’. It follows from the above that the contested trade mark must be rejected for the goods in Class 28 found to be identical to those of the earlier trade mark No 1.

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.

The opponent has also based its opposition on the earlier EUTM No 5 866 819 ‘PENGUIN’ (word mark) , registered for

Class 3 Soaps ; perfumery, essential oils, cosmetics, hair lotions ; dentifrices.

Class 18 Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25 Clothing, footwear, headgear.

Whilst this trade mark is more similar to the contested sign, it does not cover any goods that are similar to the remaining contested goods in Classes 8, 9, 14, 16 and 21. There is in particular no similarity between the earlier mark´s goods in Class 25 and the contested goods in Class 14, for the reasons already set out in the comparison of goods under section a) of this decision. Also the goods in Class 3 and 18 of this earlier right are clearly different from the remaining contested good as they do not coincide in any of the relevant criteria.

Whilst enhanced distinctiveness was also invoked for this mark his cannot change the outcome as enhanced distinctiveness cannot lead to a likelihood of confusion between dissimilar goods; the similarity of goods and services is in any case a necessary condition for the application of Article 8(1) EUTMR. Furthermore, the assessment of evidence of enhanced distinctiveness under section d) of this decision equally applies to this earlier right, the evidence submitted being the same for all marks that are basis of the opposition; enhanced distinctiveness was not proven.

Therefore, 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.

Finally, the opponent has also based its opposition on the following earlier trade marks:

EUTM No 4 850 178 (figurative mark) registered for

Class 3 Perfume, cologne, eau de toilette, soap, body lotion, shower gel, body cream, body powder, after shave lotion, after shave balm, personal deodorants.

Class 9 Eyewear; eyeglasses, sunglasses, goggles and spectacles; frames for eyeglasses, sunglasses, goggles and spectacles; CD cases, personal digital assistant cases, cell phone holders; cases for eyeglasses, sunglasses, goggles and spectacles; parts and fittings for the aforesaid goods.

Class 14 Watches, clocks, watch cases and time pieces; straps, bands and bracelets for watches, clocks, watch cases and time pieces; parts and fittings for the aforesaid goods.

Class 18 Small leather goods; belts, wallets, purses, bags, handbags, cases, briefcases, cases for agendas, portfolios, key cases, and backpacks.

Class 25 Clothing, footwear and headgear; knit and woven shirts, T-shirts, sweatshirts, outerwear, jackets, coats, vests, pants, shorts, sweaters, hats, belts, ties, swimsuits, hosiery, underwear.

EUTM No 3 203 239 (figurative mark) registered for

Class 18 Small leather goods; belts, wallets, purses, bags, handbags, cases, briefcases, cases for agendas, portfolios, key cases, address book covers, passport cases, CD cases, personal digital assistant cases, cell phones holders and backpacks.

Class 25 Clothing, footwear and headgear; knit and woven shirts, T-shirts, sweatshirts, outerwear, jackets, coats, vests, pants, shorts, sweaters, hats, belts, ties, swimsuits, hosiery, underwear.

EUTM 13 465 927 ‘AN ORIGINAL PENGUIN BY MUNSINGWEAR’ (word mark)

Class 3 Perfume, cologne, eau de toilette, soap, body lotion, shower gel, body cream, body powder, after shave lotion, after shave balm, personal deodorants.

Class 9 Eyewear; eyeglasses, sunglasses, goggles and spectacles; frames for eyeglasses, sunglasses, goggles and spectacles; cases for eyeglasses, sunglasses, goggles and spectacles; parts and fitting for the aforesaid goods; electronic accessories, namely carrying cases adapted for electronic equipment, namely, mobile phones, smart phones, handheld mobile digital electronic devices and tablet computer, headphones, ear buds, CD cases and computer stylus.

Class 14 Watches, clocks, watch cases and time pieces; straps, bands and bracelets for watches, clocks, watch cases and time pieces; parts and fitting for the aforesaid goods.

Class 18 Small leather goods; belts, wallets, purses, bags, handbags, cases, briefcases, cases for agendas, portfolios, key cases, address book covers, passport cases, CD cases, personal digital assistant cases, cell phones holders and backpacks.

Class 24 Home textiles.

Class 25 Clothing, footwear and headgear; knit and woven shirts, T-shirts, sweatshirts, outerwear, jackets, coats, vests, pants, shorts, sweaters, hats, belts, ties, swimsuits, hosiery, underwear.

These marks are protected for goods that are partially identical or similar to the remaining goods of the contested mark. However, even under the assumption that all the remaining contested goods are identical to the respective goods of these earlier marks, which is the best case scenario under which the opponent’s case can be considered, there can be no likelihood of confusion regarding the remaining contested goods.

This is because these other earlier rights are considerably less similar to the contested mark ´Raw Penguins´.

EUTM No 4 850 178 is a purely figurative mark that is visually dissimilar to the contested word mark and an aural comparison between purely figurative marks and word marks is not possible. Even if part of the public would recognize a heavily stylized penguin in this mark, the fact remains, that the mark only protects this specific depiction; a mere conceptual similarity to the contested word mark’s verbal element PENGUIN is not sufficient for a likelihood of confusion.

The remaining marks EUTM No 3 203 239 and EUTM 13 465 927 ‘AN ORIGINAL PENGUIN BY MUNSINGWEAR’ contain further figurative elements and/or additional words, which are not present in the contested trade mark, in particular the distinctive verbal elements ‘BY MUNSINGWEAR’; and, therefore, these marks are visually and aurally at most similar to a low degree to the contested sign ‘Raw Penguins’ and their overall impression differs sufficiently to rule out any likelihood of confusion.

Whilst enhanced distinctiveness was also invoked for these marks, the evidence being the same as already assessed above, this cannot change the outcome. The assessment of the evidence submitted under section d) of this decision equally applies to these earlier rights. The opponent failed to prove enhanced distinctiveness for these marks.

Therefore, even for identical goods, 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.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Konstantinos MITROU

Tobias KLEE

Lars HELBERT

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.