OPPOSITION No B 2 792 250

Mills Brothers B.V., Ellen Pankhurststraat 21, 5032 MD Tilburg, Netherlands (opponent), represented by Bakker & Verkuijl B.V., Alexander Office Prinsenkade 9D, 4811 VB Breda, Netherlands (professional representative)

a g a i n s t

Silvia Oviedo Marquina, Sant Maria 19 1º A, 08221 Terrassa/Barcelona, Spain (applicant), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative).

On 20/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 792 250 is upheld for all the contested goods, namely:

Class 25: Tee-shirts; jumpers; short-sleeved t-shirts; undershirts; children’s wear; shirts and slips; underwear; short trousers; maillots [hosiery]; sweat shirts; sweat bands for the wrist; sports headgear [other than helmets]; casual shirts; casual shirts; polo shirts; polo shirts; ankle socks; socks and stockings; head sweatbands; caps with visors.

2. European Union trade mark application No 15 483 506 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 483 506 for the figurative mark , namely against all the goods in Class 25. The opposition is based on Benelux trade mark registration No 836 807 and European Union trade mark registration No 410 399, both for the word mark ‘THE STING’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The date of filing of the contested application is 28/06/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union (for earlier European Union trade mark registration No 410 399) and in Benelux (for earlier Benelux trade mark registration No 836 807) from 28/06/2011 to 27/06/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Class 25: Clothing, footwear, headgear.

According to Article 10(3) EUTMDR (formerly Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 14/07/2017, in accordance with Article 10(2) EUTMDR (formerly Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 19/09/2017 to submit evidence of use of the earlier trade marks. After an extension of the time limit requested by the opponent, the final deadline was 19/11/2017. On 20/11/2017, within the time limit (19/11/2017 fell on a Sunday), the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Appendix 1: document containing 17 pictures of ‘THE STING’ stores (outside and inside). These pictures show 10 different stores (according to the opponent, eight are in the Netherlands, one is in Belgium and one is in the United Kingdom). The document is undated and the store sign appears in various ways, such as , , , and .

• Appendix 2: document containing pictures of the trade mark ‘THE STING’ on labels, clothing, hang tags, clothes hangers and shopping bags. The document is undated and the mark appears in various ways, including as , and .

• Appendix 2A: screenshot demonstrating that the domain name www.thesting.com has been used since 28/02/1997.

• Appendix 3A: style sheet for a tank top for women, dated 27/02/2015.

• Appendix 3B: style sheet for a long-sleeved top for women, dated 27/02/2015.

• Appendix 3C: style sheet for a T-shirt for men, dated 17/08/2015.

• Appendix 3D: style sheet for a sweater for men, dated 18/05/2016.

• Appendix 3E: style sheet for a T-shirt bearing the word ‘Amsterdam’. The document is undated.

• Appendix 3F: style sheet for a T-shirt bearing the word ‘Antwerpen’.

• Appendix 3G: style sheet for a tank top bearing the word ‘Antwerpen’.

• Appendix 4: four order confirmations dated during the period from 01/12/2015 to 04/07/2016. These confirmations refer to orders for tank tops, long-sleeved tops, sweaters and trousers bearing the label ‘THE STING’ made by a Dutch clothing manufacturer.

• Appendix 5: drawings of the design of the truck that transports clothing under the trade mark ‘THE STING’ and pictures of such trucks, including the truck used in London. The document is undated.

• Appendix 6: three articles:

• an article published in BN DeStem, dated 26/11/2013, referring to a shopping night at a ‘THE STING’ store;

• an article published in Dichtbij about the opening of a store in Tilburg, dated 23/09/2016;

• ‘THE STING’ products featured in the Grazia Magazine Shop Gids (shopping Guide), dated January 2014. The products are ear muffs.

• Appendix 7: flyers, featuring the mark ‘THE STING’, for the following special events:

• ‘THE STING’ pre-sale shopping night, dated 15/12/2015;

• ‘THE STING’ shopping night, dated 29/05/2015;

• ‘THE STING’ store opening in Tilburg (‘34 years in Tilburg’), dated 22 September (the year is not stated).

• Appendix 8: overview of all ‘THE STING’ stores and offices where clothing under the trade mark ‘THE STING’ is sold. There are stores in the Netherlands, Belgium, Germany and the United Kingdom.

• Appendix 9: printouts from the opponent’s website, taken from the Wayback Machine (2013-2014), and printouts from Facebook (dated 03/07/2016, 30/06/2016, 27/06/2016, 16/06/2016, 05/11/2015, 11/10/2015, 28/07/2015, 07/10/2014 and 25/09/2014).

• Appendix 10: spreadsheets containing statistics regarding sales of ‘THE STING’ products. According to the opponent, these statistics related to three products. Most of the pages are dated within the relevant period (2015).

• Appendix 11A: seven advertisements in newspapers in the Netherlands, Germany and Belgium, dated 31/01/2011, 03/02/2011, 10/02/2011, 28/06/2012, 04/09/2012, 05/09/2012 and 29/11/2012.

• Appendix 11B: six advertisements in newspapers in the Netherlands, Germany and Belgium, dated 29/11/2012, 27/06/2013 (two newspapers), 20/11/2013 and 28/11/2013 (three newspapers).

• Appendix 12: covers of ‘THE STING’ magazine, published from July 2009 to January 2013.

Place of use

The appendices, in particular appendices 1, 2 and 11, show that the places of use are Belgium, Germany, the Netherlands and the United Kingdom.

Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period. Some of the evidence is dated after or before the relevant period and some is undated. Nevertheless, the time of use requirement is satisfied.

Extent of use

As a preliminary remark, the applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

In assessing the extent of the use of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

Moreover, the purpose of the proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 36-38, and the case-law cited therein).

Even though the declarations have a low probative value and the figures are not all backed up by purely independent or impartial sources, there is still a large amount of evidence that supports the claims made. In particular, appendices 1 and 2 demonstrate that the opponent has had several stores in which products bearing the mark ‘THE STING’ were sold. In addition, appendix 11 demonstrates that the opponent was advertising its goods during a significant period of time. Moreover, the Opposition Division endorses the opponent’s reasoning regarding appendix 4 and considers that, despite the applicant’s arguments, the fact that the opponent sold 30 000 products between 2015 and 2016 to a manufacturer of clothing, without being decisive, corroborates the opponent’s arguments. Furthermore, even though the opponent’s main market seems to be the Netherlands, its presence in several Member State markets (also Germany and the United Kingdom) is an important factor. Finally, despite the applicant’s arguments, the evidence encompasses a significant period of time, as can be seen from appendices 4, 6, 9 and 11, which demonstrate use of the mark in each year of the relevant period.

Consequently, in an overall assessment, taking into account the circumstances of the case and evaluating the materials in conjunction with each other, it is clear that the opponent has been using its mark for a number of years and has an important commercial presence.

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the earlier signs were used in such a way as to establish a clear link between the goods and the opponent. The Opposition Division considers that the evidence shows use of the signs as trade marks.

Use of the mark as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 57(2) and (3) EUTMR, Article 15 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of Article 15(1), second subparagraph, point (a), ‘is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade’ (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

A finding of an alteration of the distinctive character of the mark as registered, taking the above into account, requires an assessment of the distinctive and dominant character of the added and/or omitted elements, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the different elements within the arrangement of the trade mark (10/06/2010, T‑482/08, Atlas Transport, EU:T:2010:229, § 31, and the case-law cited therein).

Having regard to the aforesaid considerations, to determine whether the use of the marks demonstrated by the evidence constitutes use of the marks as registered, the Opposition Division will have to establish if the differences between the marks as used and as registered are negligible.

The earlier marks for which proof of use is to be demonstrated are the word marks ‘THE STING’

First, the earlier marks appear alone in most of the items of evidence, although they are used in a figurative form. Word marks are considered used as registered regardless of the typeface used, the use of upper or lower case letters and the use of colour. Therefore, it would not be correct to analyse the figurative form of a word mark to determine whether or not distinctive character has been altered. However, a very particular typeface (highly stylised) may lead to a different conclusion. In the present case, the use of the mark as and does not alter the distinctive character of the mark. Likewise, in some cases, the mark is used as . The additional element cannot be considered to alter the distinctive character of the mark, because this element is positioned below the sign ‘THE STING’ and is of such a size that it is not predominant in that mark (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, §32). Moreover, this element is non-distinctive (for part of the public).

In view of the foregoing, the nature of use condition is fulfilled.

Use in relation to the registered goods and services

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

In the present case, the evidence mainly proves use for tee shirts, sweater and leggings, which all belong to the category clothing in the opponent’s specification. As the opponent is not required to prove use for all the conceivable variations of the category of goods for which the earlier marks are registered, the Opposition Division considers that the evidence demonstrates genuine use of the trade marks for clothing. On the other hand, no evidence was submitted in relation to the opponent’s footwear. As regards, the opponent’s remaining goods, namely headgear, the depiction in a single image of ear muffs is not sufficient to demonstrate use of the marks for headgear.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade marks during the relevant period in the relevant territory in relation to the following goods:

Class 25: Clothing.

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 410 399.

1. The goods

Following the examination of the proof of use, the goods on which the opposition is based are the following:

Class 25: Clothing

The contested goods are the following:

Class 25: Tee-shirts; jumpers; short-sleeved t-shirts; undershirts; children’s wear; shirts and slips; underwear; short trousers; maillots [hosiery]; sweat shirts; sweat bands for the wrist; sports headgear [other than helmets]; casual shirts; casual shirts; polo shirts; polo shirts; ankle socks; socks and stockings; head sweatbands; caps with visors.

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.

The contested tee-shirts; jumpers; short-sleeved t-shirts; undershirts; children’s wear; shirts and slips; underwear; short trousers; maillots [hosiery]; sweat shirts; sweat bands for the wrist; casual shirts (listed twice); polo shirts (listed twice); ankle socks; socks and stockings are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested sports headgear [other than helmets]; head sweatbands; caps with visors and the opponent’s clothing have the same nature or very similar natures. They also serve the same purpose, in particular in the case of clothing designed to provide protection against the elements, and target the same public. Furthermore, to a certain extent, the contested sports headgear [other than helmets]; head sweatbands; caps with visors are seen not only as something worn on the head to protect against the weather, but also as fashion articles, possibly matching an outfit, and for this reason are sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Moreover, many manufacturers and designers will design and produce both clothing and headgear. Taking all these factors into account, the contested sports headgear [other than helmets]; head sweatbands; caps with visors and the opponent’s clothing are considered 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 are directed at the public at large.

The degree of attention will be average.

3. The signs

THE STING
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The coinciding element ‘STING’ is meaningful in certain territories, for example in those countries where English is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, because this part of the public will perceive a conceptual similarity between the signs.

The earlier trade mark is the word mark ‘THE STING’. The contested sign is a figurative sign consisting of the verbal elements ‘SB’ in bold lower case letters at the top (with the ‘S’ rotated anti-clockwise 90 degrees) and ‘STINGbye.’ at the bottom, with ‘STING’ in upper case letters and ‘bye’ in lower case letters. These verbal elements are surrounded by a blue circle.

Although the average consumer normally perceives a mark (or, in the present case, part of a mark) as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Consequently, while the rule is that marks are perceived as a whole, the exception to the rule is that, under certain circumstances, consumers could break them down into smaller parts.

In the present case, the word ‘STING’, present in both marks, will be understood as meaning ‘the act of stinging; a pain or wound resulting from or as from stinging’ (information extracted from Collins Dictionary on 18/07/2018 at https://www.collinsdictionary.com/es/diccionario/ingles/sting). In the earlier sign, the word ‘THE’ is self-explanatory.

In the contested sign, the word ‘bye’ means ‘goodbye’. Therefore, the element ‘STINGbye.’ would be understood as referring to the removal of a sting. Taking into account the difference in case between the two parts of this element, ‘STINGbye.’ will be broken down into these two parts.

The elements ‘THE STING’ and ‘STINGbye.’ both have an average degree of distinctive character, as neither has a meaning in relation to the goods at issue. The element ‘SB’ is meaningless for the relevant public. Nevertheless, alongside the element ‘STINGbye.’, the relevant consumers will perceive ‘SB’ as standing for the two parts of the element ‘STINGbye.’. ‘SB’ has an average degree of distinctiveness, even where it is perceived as the initials of the element ‘STINGbye.’

The blue circle is purely decorative and is non-distinctive.

As correctly pointed out by the applicant, the element ‘SB’ is slightly more dominant than the element ‘STINGbye’, given the size of the former. Nevertheless, the Opposition Division disagrees with the applicant and considers that the element ‘STINGbye.’ remains perfectly identifiable in the contested sign and is not overshadowed by the element ‘SB’.

Visually, the signs coincide in the string of letters ‘STING’, present identically in the signs; they differ in their additional elements, namely the element ‘THE’ in the earlier mark and the elements ‘bye’ and ‘SB’, as well as the figurative element, in the contested sign, even though this figurative element has almost no impact on the comparison.

In addition, the verbal component of a 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).

Given the fact that it is depicted in upper case letters, the word ‘STING’ plays an independent distinctive role in the contested sign and will immediately be perceived, as already mentioned.

Moreover, even though, as correctly pointed out by the applicant, the word ‘STING’ is the second element of the earlier mark, the addition of the element ‘THE’ is so insignificant that it would go unnoticed by an average consumer (22/05/2017, R 851/2016-5, THE COMMODORES / Commodores et al., §47); therefore, the word ‘STING’ is the most significant element of the earlier sign.

Considering that the most significant part of the earlier mark is reproduced, and is perfectly legible, in the contested sign, but also taking into account the depiction of the contested sign, as well as its additional elements, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘STING’, present identically in the marks, and differs in the sound of their additional elements, particularly the word ‘bye’.

The Opposition Division considers that, in the contested mark, ‘STINGbye’ is the only word that will be pronounced, as consumers will perceive the acronym ‘sb’ as its initial letters (17/03/2016, R 496/2015-1, M MASTIHA (fig.) / mastihashop VOYAGE TO THE EAST MEDITERRANEAN THE CHIOS MASTIHA GROWERS ASSOCIATION (fig.) et al., § 25).

Therefore, contrary to the applicant’s arguments, the Opposition Division considers that at least part of the relevant public will pronounce the marks as ‘sting/bye’ and ‘the/sting’. Consequently, both marks will have two syllables and one of the two will be identical.

Given the foregoing, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, they are conceptually similar to an average degree.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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

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 signs are visually similar to a low degree, aurally highly similar and conceptually similar to an average degree. The goods are partly identical and partly similar.

The earlier mark has an average degree of distinctiveness and the relevant public will display an average degree of attention.

The signs are similar to a certain extent, as they have the element ‘STING’ in common and this element plays a significant role in both marks.

The importance of certain visual dissimilarities may be diminished by 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). The consumers, in addition, may be prompted to choose goods from the categories in question in response to a television advertisement, for example, or having heard them being spoken about, in which cases the consumers might retain the phonetic impression of the mark in question as well as the visual aspect (04/06/2013, T‑514/11, Betwin, EU:T:2013:291, § 74).

Furthermore, in the fashion industry, it is not uncommon for the same mark to be configured in various ways according to the products it designates. In that sector, it is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various clothing lines from one another, in particular female and male clothing (25/05/2012, T‑233/10, Jumpman, EU:T:2012:267, § 53). In the present case, consumers may legitimately believe that the contested sign denotes a new line of goods provided under the opponent’s mark, for instance plus-size clothing, footwear or headgear.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 410 399. It follows that the contested trade mark must be rejected for all the contested goods.

As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(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, she must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (formerly Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Martin EBERL

Birgit FILTENBORG

Julie, Marie-Charlotte HAMEL

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.