OPPOSITION No B 2 929 837

The Net-a-Porter Group Limited, 1 The Village Offices, Westfield, Ariel Way, London W12 7GF, United Kingdom (opponent), represented by HGF Limited, 8th floor, 140 London Wall, London EC2Y 5DN, United Kingdom (professional representative)

a g a i n s t

Used A Porter International AB, Box 2324, 103 18 Stockholm, Sweden (applicant), represented by Heidenstam Legal Advokat AB, Kaptensgatan 12, 114 57 Stockholm, Sweden (professional representative).

On 11/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 929 837 is upheld for all the contested goods and services.

2. European Union trade mark application No 16 585 507 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 585 507 ‘USED-A-PORTER’. The opposition is based on, inter alia, European Union trade mark registration No 13 302 435 ‘NET-A-PORTER’ for goods in Classes 3, 9, 14, 16, 18, 21, 24, 25, 28 and European Union trade mark registration No 9 467 441 ‘NET-A-PORTER’ for goods and services in Classes 9, 16, 41 in relation to which the opponent invoked Article 8(1)(b) EUTMR. The opponent based the opposition also on further earlier rights in relation to which it invoked apart from Article 8(1)(b) EUTMR the grounds of Article 8(4) and 8(5) EUTMR respectively.

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 13 302 435 and European Union trade mark registration No 9 467 441. Since these two earlier rights are for the word mark ‘NET-A-PORTER’ and have the same territorial coverage, any reference to ‘earlier rights’ or ‘earlier (trade) marks’ in plural shall be understood in singular and vice versa, unless the text explicitly provides otherwise.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

European Union trade mark registration No 13 302 435:

Class 9: Information in electronic form; electronic downloadable publications in the fields of fashion, news, lifestyle, culture, entertainment, travel, social networking; electronic applications for electronic telecommunications equipment; leather phone covers, leather computer cases; diary covers; leather camera case; glasses, sunglasses; speakers, speaker docks; headphones; music systems.

Class 14: Horological and/or chronometric instruments; watches; key fobs, key chains as jewellery [trinkets or fobs], key rings [trinkets or fobs]; jewellery, earrings, necklaces, rings, bracelets, cuffs (jewellery), cufflinks, tie clips, tie pins; costume jewellery; statues or statuettes of precious metal; articles made of or coated with precious metal or their alloys; precious stones; articles including precious stones; jewellery boxes and watch boxes.

Class 25: Jumpers, knitwear; sweatshirt; t-shirt, shorts, jackets, blazers, coats, blouses, shirts, blouses, pullovers; dresses; skirts; pants, trousers, jeans; jumpsuits; beachwear; sweaters; evening wear; waistcoats; suits; scarves; shawls; swimwear; active wear; lounge wear; sleepwear; leisurewear, sportswear; lingerie, camisoles; bodices; underwear; underclothing; garters; garter belts; bathrobes; ties, neckties, bow ties, cravats, belts; gloves; hosiery, stockings, tights, socks; headgear namely hats, caps and visors.

European Union trade mark registration No 9 467 441:

Class 41: Education, entertainment, sporting and cultural activities.

The contested goods are the following:

Class 9: Mobile data communications apparatus.

Class 14: Decorative articles [trinkets or jewellery] for personal use.

Class 25: Ready-made clothing.

Class 41: Sports and fitness.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 9

The contested mobile data communications apparatus is similar to the opponent’s electronic applications for electronic telecommunications equipment, as they can coincide in producer, distribution channels and end user. Moreover, they are complementary.

Contested goods in Class 14

The contested decorative articles [trinkets or jewellery] for personal use include as a broader category the opponent’s key chains as jewellery [trinkets or fobs], key rings [trinkets or fobs]. The Opposition Division cannot dissect ex officio the broad category of the applicant. The goods are, therefore, identical.

Contested goods in Class 25

The contested ready-made clothing includes as a broader category several of the opponent’s goods in Class 25 such as jackets, blazers, coats. The Opposition Division cannot dissect ex officio the broad category of the applicant. The goods are, therefore, identical.

Contested services in Class 41

The contested sports and fitness are included in the opponent’s broad category ‘sporting activities’. The services 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 and services found to be identical are directed at the public at large. The degree of attention in relation to these goods and services is considered average. The goods found to be similar (the goods in Class 9) are directed mainly at professionals in the IT sector. The degree of attention is considered higher than average.

c) The signs

NET-A-PORTER	USED-A-PORTER
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Both marks are word marks.

The ‘A-PORTER’ part of the signs alludes to the French expression for ready-to-wear clothing ‘pret-à-porter’, which is primarily used in the fashion domain and will be understood by the average English-speaking consumer.

In English, ‘PORTER’ is also an English family name, a type of drink and a person employed to carry luggage, parcels, supplies etc., especially at a railway station or hotel. In the context of both marks above however, taking into account also the designated goods, the reasonably informed consumer will see it as alluding to ‘pret-à-porter’ rather than conveying any of the meanings specified above.

In English, the word ‘NET’ will be associated with, among other meanings, an openwork fabric of string, rope, wire etc.; mesh. Due to intensive use in a certain context, ‘NET’ is nowadays understood by the relevant public as the (informal) short form of ‘internet’. Therefore, the combination of ‘NET-’ and ‘A-PORTER’ in the earlier sign involves a use of ‘à-porter’ that does not comport with its traditional use in the fashion world. However, given the renown of the phrase ‘pret-à-porter’, the relevant consumer will see the ‘à-porter’ ending, in the similar sounding ‘NET-A-PORTER’, as clearly alluding to ‘pret-à-porter’. Consequently, the earlier mark ‘NET-A-PORTER’ as a whole refers in an intellectually engaging way to the concept of the internet and alludes more vaguely to ‘ready to wear’, ‘ready to use’ by using a formula traditionally associated with fashion.

Although the mark suggests electronic communication (internet) and clothing, it does so in a clever way from the perspective of the English-speaking consumer, namely by using the ending of a French phrase known in a fashion context and doctoring it to introduce a similar-sounding beginning that references the internet. The Opposition Division regards the cleverness of this construction as eliminating any suggestion of allusiveness that may affect its distinctiveness – certainly for the English-speaking consumer (See also section d) below).

The above conclusion is supported by the Boards of Appeal of EUIPO. In the decision in Appeal No. R0469/2017-2, dated 12/10/2017, paragraph 32 states: ‘…, given that the French ‘pret’ has been replaced by the English words ‘NET’, in the earlier mark, and ‘HAT’ in the later mark, and given the significant departure from the non-distinctive ‘pret-à-porter’, neither the verbal part as a whole or in part can be deemed non-distinctive, although a degree of allusiveness cannot be discounted.’

Similar considerations apply also to the contested sign. The word ‘USED’ of the contested sign indicates that something is not new anymore, something that was bought or sold second-hand. The contested sign will be easily perceived by the relevant public with the meaning of a used object which is ‘ready to wear’ or ‘ready to be used’ (again).

Neither of the signs has an element which can be considered dominant (visually more eye-catching) than other elements.

Visually, the signs coincide in ‘A-PORTER’ and the letter ‘E’ of their first verbal elements ‘NET’ and ‘USED’ respectively. However, they differ in the first letter of the earlier mark, namely ‘N’ versus the first two letters of the contested mark ‘US’ as well as in the last letters of the first verbal elements, namely ‘T’ versus ‘D’. Both signs show an identical structure and length (being composed of three verbal elements, two of which are the same and connected with hyphens).

Therefore, the signs are similar at least to an average degree.

Aurally, the pronunciation of the marks coincides in /A PORTER/, present identically in both signs. The pronunciation coincides to a certain extent further in the sound of the letters ‘D’ and ‘T’ which placed at the end of the words will be pronounced in a very similar way. The pronunciation differs in the sound of the two letters of the verbal element ‘USED’, namely ‘US’ versus the sound of the letters ‘NE’ of the contested sign. It is to be noted that due to the same structure of the verbal elements and their identical length as a whole and as far as their separate elements are concerned, the signs will be pronounced with the same rhythm and intonation.

Therefore, the signs are highly similar.

Conceptually, the first elements of the marks in question are not similar; ‘NET’ has a specific meaning that will be universally understood as explained above and ‘USED’ has a different meaning. Nevertheless, as set out above, the marks coincide in the ending ‘-A-PORTER’. This ending, borrowed from the world of fashion, engenders similar concepts of ‘ready to wear’, ‘prepared’ or ‘easy to use’. Therefore, there is a low degree of conceptual similarity between the marks albeit that it resides in a quite imprecise allusion. Indeed, both marks are a direct and clever reference to the original term ‘pret-à-porter’ which involves some word play in that ‘NET’ and ‘USED’ sound similar to and/or are meant to replace ‘pret’.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation in relation to the goods in Classes 9, 14, 25 and/or 41.

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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods in Classes 14 and 25 and the services in Class 41 are identical and the goods in Class 9 are similar. The signs have been found visually similar at least to an average degree, aurally highly similar and conceptually similar to a low degree. The earlier mark has a normal degree of distinctiveness and the level of attention of the relevant consumer is average in relation to the goods and services in Classes 14, 25 and 41 and higher than average in relation to the goods in Class 9.

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). This is also valid for the cases where the consumer’s level of attention is higher than average.

It is to be noted also that 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.

In the case at hand, taking into account the average distinctive character of the earlier mark and the identity/similarity of goods and services, any of the two situations described above cannot be safely excluded. The marks can easily be confused with each other.

It is true that in principle the beginnings of the marks are more important in terms of recognition and recall. However, this consideration cannot hold true in all cases (16/05/2007, T‑158/05, Alltrek, EU:T:2007:143, § 70). This is applicable in the present case, in particular in the light of the identical structure of the marks, their average distinctiveness and the similar length of their first verbal elements.

Even if consumers do not directly confuse the two marks there is still a likelihood of association due to the same structure of the verbal elements, where the consumers may think that the contested sign is a version of the earlier mark designating a particular line of goods.

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.

The applicant refers to a decision of the Swedish Patent and Market Court dated 03/02/2017 which discharged the decision of the Swedish Patent Office and decided. that there is no likelihood if confusion between the signs ‘NET-A-PORTER’ and ‘USED-A-PORTER’, since the component ‘A-PORTER’ was descriptive and the beginnings of the marks which usually attract the consumer’s attention were different.

The Opposition Division points in this regard that decisions of national courts and of national offices in cases regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office. According to case-law, the European Union trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it and applies independently of any national system.

Still, their reasoning and outcome should be duly considered. Whilst it is, in principle, permissible to take into account decisions of national courts and authorities, these decisions should be examined with all the required care and in a diligent manner (judgment of 15/07/2011, T-108/08, Good Life, EU:T:2011:391, § 23). Usually the understanding of such a decision will require the submission of sufficient information, in particular about the facts on which the decision was based. Their indicative value will therefore be limited to the rare cases when the factual and legal background of the case was presented completely in the opposition proceedings and is conclusive, clear and not disputed by the parties.

The Opposition Division duly considered the decision of the Patent and Market Court in Sweden, which overturned the decision of the Swedish Patent Office. The mere fact that the Swedish Patent Office and the Swedish Patent and Market Court have reached two completely different outcomes in their decisions shows that the factual and legal background of the dispute between the parties is far from being conclusive, clear and not disputed by the parties. The Opposition Division considers, therefore, the indicative value of these decisions to be extremely low, if not non-existent.

As indicated above the Opposition Division finds the two decisions of EUIPO’s Boards of Appeal much more relevant for the current case.

In Appeal Decision No. R0469/2017-2, dated 12/10/2017 (HAT A PORTER (fig.) / NET-A-PORTER) the Board found in paragraph 44 that:

‘While it is true that the marks differ in some aspects-the later mark carries a device element, the earlier mark, not, and the marks differ in the first word ‘HAT’ and ‘NET’-this is not sufficient to remove a risk of confusion between them. Even if consumers were to recall and distinguish between the terms ‘HAT’ and ‘NET’, they will conclude that the difference merely corresponds to sub-brands of the same undertaking (see by analogy 30/112006, T-43/05, Brothers by Camper, EU:T:2006:370, § 89). They will believe that both marks derive from the same trader using the (near) identical tag ‘A PORTER’/ ‘A-PORTER’, especially since the goods are absolutely identical. The Board recalls that a low degree of similarity between the signs may be offset by a high degree of similarity (in this case, identity) between the goods (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In any event, given that relevant consumers will rarely be able to make a direct comparison between the different marks but must place their trust in imperfect recollection, it is highly likely that the relevant public will confuse one sign for the other (see by analogy, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In decision R 1673/2014-4 (Chêf-à-porter / NET-A-PORTER) the Board found in paragraph 34 that:

‘As stated, the signs under comparison are similar, visually and aurally to an above average degree. The inherent distinctiveness of the earlier marks is normal. In view of the fact that the conflicting goods and services are identical and highly similar, the Board finds that there is a likelihood of confusion, even if the differences between the marks lie in their beginnings’.

The Opposition Division does not see any reason to deviate from the findings of the Boards in relation to the distinctiveness of the verbal element ‘A-PORTER’ and in relation to the presence of likelihood of confusion.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 302 435 and European Union trade mark registration No 9 467 441. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier rights European Union trade mark registration No 13 302 435 and European Union trade mark registration No 9 467 441 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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). Same is obviously valid for the other grounds on which the opposition is based in relation to these other earlier rights.

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, it 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 (former 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

Liliya YORDANOVA

Plamen IVANOV

Martin LENZ

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.