OPPOSITION No B 2 963 117

Next Retail Limited, Desford Road, Enderby, Leicester, Leicestershire LE19 4AT, United Kingdom (opponent), represented by Marks & Clerk LLP, 15 Fetter Lane, London EC4A 1BW, United Kingdom (professional representative)

a g a i n s t

TBL Licensing LLC, 200 Domain Drive, Stratham, New Hampshire 03885, United States of America, (applicant), represented by Cooley (UK) LLP, Dashwood 69 Old Broad Street, London EC2M 1QS, United Kingdom (professional representative).

On 21/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 963 117 is upheld for all the contested goods.

2. European Union trade mark application No 16 816 902 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 of (Class 24) European Union trade mark application No 16 816 902 for the word mark ‘NXTWOOL’. The opposition is based on, inter alia, European Union trade mark registration No 17 607 474 for the figurative mark . It is noted that the opposition was initially based on the European Union trade mark application No 15 568 876 for the figurative mark , which, since the beginning of the opposition proceedings, has been divided, with the relevant class for the present proceedings falling under the aforementioned trade mark registration. The opponent invoked Article 8(1)(b) and Article 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 aforementioned European Union trade mark registration (for which no proof of use was requested and which is, moreover, not subject to proof of use).

1. The goods

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

Class 24: Textiles, not included in other classes; plastic material as a substitute for fabric; household linen; curtains.

The contested goods are the following:

Class 24: Textiles and substitutes for textiles; household linen; curtains of textile or plastic; wool base mixed fabric for use as a textile in the manufacture of clothing, footwear, headwear, backpacks.

All of the contested goods are identical to the listed opponent’s goods, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods include, are included in, or overlap with, the opponent’s goods.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large (e.g. household linen) as well as at the professionals (e.g. textiles, wool base mixed fabric for use as a textile in the manufacture of clothing, footwear, headwear, backpacks).

The degree of attention is considered to be average.

3. The signs

	NXTWOOL
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 earlier mark, consisting of a slightly stylized verbal element ‘next’, is meaningful in certain territories, for example in those countries where English is understood and spoken.

Furthermore, it can be reasonably assumed that the English-speaking part of the relevant public will perceive and read the contested mark as the words ‘NEXT’ and ‘WOOL’. This is because when perceiving a word sign, the consumers will break it down into elements which suggest a specific meaning or resemble words known to them (06/10/2004, T‑356/02, Vitakraft EU:T:2004:292, § 51; 13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

It is noted that the combination of three letters ‘N, X and T’ as ‘NXT’ is nowadays commonly used in English as the abbreviation of the word ‘next’ e.g. in text messaging, in business communication (for the latter see e.g. https://www.abbreviations.com/term/158039).

Due to the above findings, the similarities between the signs will be higher for the English-speaking public. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on that part of the public such as consumers in the United Kingdom, Ireland and Malta.

The word ‘next’ means 1) as an adjective: (of a time) coming immediately after the time of writing or speaking; coming immediately after the present one in order, rank, or space; 2) as an adverb: on the first or soonest occasion after the present; immediately afterwards; (with superlative) following in the specified order; 3) as a noun: the next person or thing; 4) as a preposition: (archaic) next to or 4) as a determiner: (a next), West Indian, another (see e.g. https://en.oxforddictionaries.com/definition/next). Since none of those meanings have any immediate conceptual relation to the goods in question, the verbal element ‘next’ as well as the first part of the contested sign ‘nxt’ are considered distinctive.

On the other hand, bearing in mind that the relevant goods are all textiles, textile substitutes and the goods thereof, which could consist at least partially of wool, the second part of the contested sign, the verbal element ‘WOOL’, is non-distinctive as it clearly refers to the characteristics of these goods. As such this element has a minimal (if any) impact on the comparison of the signs.

Visually, the signs coincide in the three letter combination ‘NXT’ and differ in the additional letter ‘e’ of the earlier mark, placed between the letters ‘n’ and ‘x’, in the slight stylisation of the earlier mark as well as in the additional, yet non-distinctive verbal element ‘WOOL’ of the contested sign.

The Opposition Division points out that when comparing signs in terms of their word elements, similarity may be found despite the fact that the letters are graphically portrayed in different typefaces, in italics or bold, in upper or lower case or in colour (18/06/2009, T-418/07, LiBRO, EU:T:2009:208; 15/11/2011, T-434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663; 29/11/2012, C-42/12 P, Alpine Pro Sportswear & Equipment, EU:C:2012:765, appeal dismissed). In addition, as regards the contested mark, it is noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T 254/06, RadioCom, EU:T:2008:165, § 43).

Therefore, the signs are visually similar to at least a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the elements ‘next’/’nxt’. As already mentioned above the letter combination ‘NXT’ will be perceived as the abbreviation of the word ‘next’ and pronounced as such. The pronunciation differs in the sound of the verbal element ‘WOOL’ of the contested mark, which has no counterpart in the earlier mark. However, as established above, that element is non-distinctive.

Bearing in mind the above findings and the fact that the beginning of a mark also plays a more essential part in striking the attention of the consumer than the ending, the signs are aurally similar to high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the mark’s verbal elements. Despite the conceptual differences produced by the additional word ‘WOOL’, in the contested sign, the public will be still aware of the semantic content of the initial part ‘NXT’ as the word ‘NEXT’ when perceiving that sign as a whole. Moreover, as already stated above, the verbal element ‘WOOL’ is non-distinctive and cannot indicate the commercial origin.

Consequently, the signs are conceptually similar to a high degree.

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C‑251/95, Sabèl,

EU:C:1997:528, § 16).

Besides, account has to be also 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; (16/07/2014, T-324/13, Femivia, EU:T:2014:672, § 48 and case-law cited).

In the present case, the contested goods have been found identical to the opponent’s goods and are directed at the public at large and professionals whose degree of attention is deemed to be average.

The earlier trade mark and the contested sign are similar on the account that the relevant public will clearly recognise the word ‘next’, respectively its misspelling in the contested sign. As already stated above, the second part of the contested sign will be perceived as the verbal element ‘WOOL’, which is non-distinctive and cannot indicate the commercial origin. Therefore, it has a minimal (if any) impact on the comparison of the signs. The stylisation of the earlier mark is very minimal and the fact that the earlier mark is depicted in lowercase letters and the contested mark in capital letters is not particularly relevant since the contested sign is a word mark and, therefore, the protection (potentially) granted to it relates to the respective verbal element and not to its depiction. While the differences between the marks in comparison will be not overlooked, they are not sufficient to counteract the visual, aural and conceptual similarity between the two marks, and as such do not allow the consumers to distinguish between them safely.

In addition, the Opposition Division notes, that it is a common practice for manufacturers/service providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product/service lines, or to endow their trade mark with a new, modernized image.

Accordingly, it is very likely in this case that the relevant consumer may perceive the contested sign 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 (see by analogy 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Consequently, the public may attribute the same (or an economically linked) commercial origin to the goods at issue, which are identical.

The applicant refers to previous decisions of the Office, namely to the decision of the Opposition Division No 3 955 499 issued on 29/03/2007 and concerning earlier mark ‘FAN’ and contested mark ‘FANBRUSH’, in order to support its arguments. 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the mentioned previous decision submitted to the Opposition Division is to some extent factually similar to the present case, the outcome may not be the same.

The applicant furthermore refers to the decision of the Board of Appeal No R0077/2003-2, issued on 11/05/2004 and concerning the following two marks ‘BOSKER’ vs ‘BOXSTER’. It cited the following ‘the Board of Appeal specifically acknowledged that “comparing the marks mechanically, in a vacuum so to speak” is “not the correct way to deal with the trade mark conflicts in Europe” (para. 19). In finding that “the contested decision must be annulled”, the Board held that “the main defect in the decision is that it neglects the reality of the market place” (para. 17). The reality of the marketplace in this case is that the Applicant has used the Applicant’s Mark for at least one year and is not aware of any instances of actual confusion with the Opponent’s Marks. While the Opponent is not obliged to prove actual confusion, the Applicant submits that the absence of evidence of actual confusion to date suggest there is no likelihood of confusion in the future.’ [sic]

The Opposition Division notes that, if it would have compared the marks at issue mechanically, it might have come to another result indeed. However, the Opposition Division in this case took well into account the perception of the relevant average English-speaking consumer, who is deemed to be reasonably well informed and observant.

As regards the applicant’s arguments that ‘the Applicant has used the Applicant’s Mark for at least one year and is not aware of any instances of actual confusion with the Opponent’s Marks’, it is pointed out that according to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

Hence, it should be proved that the relevant marks coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

In this case, the applicant adduced no evidence in support of the claim that the mark applied for coexisted on the market with the opponent’s earlier mark/s and that indeed due to this co-existence the likelihood of confusion between the marks was diminished respectively eliminated.

Therefore, in the absence of convincing arguments and evidence of the applicant’s aforementioned claim, the said claim must be rejected as unfounded.

Considering all the above and also taking into account the interdependence principle, there is a likelihood of confusion on the part of the English-speaking 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 17 607 474. It follows that the contested trade mark must be rejected for all the contested goods.

As the aforementioned 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 two earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). At the same time it is unnecessary to examine the evidence of use in relation to these other earlier rights as requested by the applicant and filed by the opponent.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is also no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Besides, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Tu Nhi VAN

Renata COTTRELL

Marta Maria CHYLIŃSKA

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.