OPPOSITION No B 3 023 689

G-Star Raw C.V., Joan Muyskenweg 39, 1114 AN, Amsterdam-Duivendrecht, Netherlands (opponent), represented by HGF BV, Gedempt Hamerkanaal 147, 1021 KP, Amsterdam, Netherlands (professional representative)

a g a i n s t

Display-Max Licencing & Development GmbH, Hafenstrasse 19, 8280 Kreuzlingen, Switzerland (applicant), represented by Friedrich Graf von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative).

On 05/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 023 689 is partially upheld, namely for the following contested goods and services:

Class 9: Apparatus, instruments and cables for electricity; Information technology and audio-visual, multimedia and photographic devices; Navigation, guidance, tracking, targeting and map making devices; Measuring, detecting and monitoring instruments, indicators and controllers; Safety, security, protection and signalling devices; Information technology and audiovisual equipment; Software; Databases; Media content; Recorded content; Scientific research and laboratory apparatus, educational apparatus and simulators; Scientific and laboratory devices for treatment using electricity; Magnets, magnetizers and demagnetizers; Optical devices, enhancers and correctors; Diving equipment; Accumulators, electric; Batteries for vehicles; Chargers for electric batteries; Apparatus and instruments for accumulating and storing electricity.

Class 12: Vehicles and conveyances; Land vehicles and conveyances; Parts and fittings for vehicles; Wheelbarrows; Mobility conveyances; Electric bicycles; Bicycles; Motorised bicycles; Trailers [vehicles]; Bicycle trailers (riyakah); Cargo trailers; Trailers for transporting bicycles; Electrically operated scooters; Load carrying vehicles; Pedicabs; Self balancing electric scooters; Delivery tricycles; Transport trailers; Electrically powered trolleys.

Class 16: Decoration and art materials and media; Printed matter; Filtering materials of paper; Gums [adhesives] for stationery or household purposes; Works of art and figurines of paper and cardboard, and architects' models; Paper and cardboard; Stationery and educational supplies; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.

Class 25: Clothing; Headgear; Footwear.

Class 37: Vehicle repair, maintenance and refuelling; Tyre maintenance and repair; Maintenance and repair of bicycles; Repair of trailers; Maintenance and repair of motor vehicles for transportation of passengers.

Class 45: Rental of clothing; Rental of protective helmets; Rental of protective clothing and equipment; Providing information on clothing rental; Advisory services in relation to safety.

2. European Union trade mark application No 17 308 214 is rejected for all the above goods and services. It may proceed for the remaining services, namely:

Class 39: Transport; Vehicle parking and storage; Parking and vehicle storage, mooring; Navigation (positioning, and route and course plotting); Travel and passenger transportation; Transportation and delivery of goods; Rental of means of transportation; Rental of cycles; Leasing of trailers; Rental of road vehicles; Providing information relating to bicycle rental services; Road transport services for persons; Computerised information services relating to the carriage of passengers; Freight and cargo transportation and removal services; Rescue, recovery, towing and salvage services; Mail delivery and courier services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 308 214 ‘UNIRAW’ (word mark). The opposition is based on:

1) European Union trade mark registration No 9 914 284 ‘RAW’ (word mark);

2) European Union trade mark registration No 11 493 103 ‘RAW’ (word mark);

3) European Union trade mark registration No 14 993 356 ‘RAW’ (word mark);

4) international trade mark registration No 1 131 972 ‘RAW’ (word mark) designating European Union;

5) European Union trade mark registration No 12 849 774 ‘RAW’ (word mark).

The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier trade marks and Article 8(5) EUTMR in relation to earlier marks 4 and 5.

PRELIMINARY REMARK

Three of the earlier European Union trade mark registrations (earlier marks 1, 2 and 3) on which the opposition is based have pending cancellation proceedings, which are directed against some of the goods they cover and some of the goods on which the opposition is based, namely:

- European Union trade mark registration No 9 914 284 has pending cancellation proceedings C 18566 and C 18565 directed against all the goods in Classes 20 and 24;

- European Union trade mark registration No 11 493 103 has pending cancellation proceedings C 24021, C 17104 and C 17516 directed against all the goods in Class 21;

- European Union trade mark registration No 14 993 356 has pending cancellation proceedings C 18581 directed against all the goods in Classes 20 and 24.

These earlier marks additionally cover other goods and services (on which the opposition is based), namely: EUTM No 9 914 284 is additionally based on all the goods in Classes 9, 14, 16 and 18 (apart from the contested goods in Classes 20 and 24); EUTM No 11 493 103 is additionally based on all the goods and services in Classes 9, 11, 12, 13, 22, 23, 27, 31 and 42 (apart from the contested goods in Class 21) and EUTM No 14 993 356 is additionally based on all the goods and services in Classes 9, 14, 16 and 41 (apart from the contested goods in Classes 20 and 24).

Therefore, as regards these earlier European Union trade mark registrations, the Opposition Division will proceed with the opposition proceedings on the basis of the respective goods and services in the mentioned Classes above, which are not contested and thereby not affected by the cancellation proceedings.

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.

a) The goods and services

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

EUTM No 9 914 284 (earlier mark 1)

Class 9: Spectacles; sunglasses, sunglass products, namely, headstraps, sunglass retainers, eyeglass cases, and sunglasses cases.

Class 14: Watches; bijoux and jewellery.

Class 16: Paper, cardboard and goods from these materials, namely wrapping paper, posters, post cards, filter paper, paper labels, table napkins of paper, waxed paper, paper ribbons, paper sheets (stationery), writing paper, envelopes, packaging paper, paper bags and pouches, flags of paper, face towels of paper; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; plastic material for packaging (not included in other classes).

Class 18: Goods made of leather and imitations of leather not included in other classes; trunks and travelling bags, rucksacks, bags, pocket wallets, umbrellas, parasols and walking sticks.

EUTM No 11 493 103 (earlier mark 2)

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12: Vehicles; apparatus for locomotion by land, air or water.

Class 13: Firearms; ammunition and projectiles; explosives; fireworks.

Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics).

Class 23: Yarns and threads, for textile use.

Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

Class 31: Agricultural, horticultural and forestry products not included in other classes, except when unprocessed or in a natural state; live animals; foodstuffs for animals; malt.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; design of fashion articles; product development; interior design and decoration.

EUTM No 14 993 356 (earlier mark 3)

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; electronic gift cards; magnetic coded gift cards; holders for magnetically encoded gift cards; Spectacles [optics]; Sunglasses; Eyeglass frames; Cases for spectacles and sunglasses; chains and cords for eyeglasses and sunglasses; Anti-dazzle shades; Containers for contact lenses; Magnifying glasses; Binoculars; Monocles; Directional compasses; Cameras; Radios; Telephones, portable telephones; Cell phone straps; Mobile phone accessories and covers; Measuring tapes; Time clocks (time recording devices); magnets audio-visual devices; Audio visual recordings; Downloadable audiovisual recordings; Computers; Tablet computers; Cases, sleeves and bags adapted for computers, laptop computers and tablet computers; downloadable software applications for wireless mobile devices, computers, and tablets for the distribution of multimedia content containing text, graphics, images, audio and video; Electronic publications, downloadable.

Class 14: Amulets [jewellery, jewelry (Am)]; Jewels; Bracelets and anklets, brooches, badges, pins, earrings, chains, trinkets, medallions, necklaces (jewellery), lockets, charms, rings (jewellery), cloisonné jewellery; Badges of precious metal; Beads for making jewelry; horological and chronometric instruments, including watches, alarm clocks, clocks, pocket watches and other timepieces and timekeeping instruments in this class; leather watch bands and leather watch straps; Clock cases; Watch straps, watch bands, watch chains; Sundials; figurines, ornaments, trinkets, and works of art made of or using precious metals or brass or coated therewith; Busts of precious metal; Boxes of precious metal; Coins; Cuff links, Tie pins, Tie bars, Tie bars, lapel pins, Jewelry pins for use on hats, Ornamental pins; Ornaments [jewellery, jewelry (Am)]; Ornaments for shoes; jewelry holders and cases; Watch cases; Key rings [trinkets or fobs]; keychains; Key rings [trinkets or fobs]; medals, trophies, pill boxes, and stands for clocks all being made of or coated with precious metals.

Class 16: Paper, cardboard; paper goods, namely, paper ribbons, paper bows; Boxes of cardboard or paper, wrapping paper, bags of paper and/or cardboard; Bags [envelopes, pouches] of paper for packaging; Notebooks; Notepads; Slipcases and spiral canister label; writing pads/writing tablets; Printed matter, Namely printed shopping bags, Pamphlets, Magazines [periodicals]; Printed matter, Namely catalogues, Mail-order catalogues, Pamphlets, Pamphlets, Newsletters; Printed matter, namely newspapers, Publications, Calendars, Agendas, Handbooks [manuals]; Printed matter, Namely forms, Invitation cards, Place cards, Note cards, Greeting cards; Printed matter, namely postcards, Announcement cards [stationery], Books, Stamps, Stickers [stationery]; Bookbinding material; Adhesive tapes for stationery or household purposes; Bookends; Document files [stationery]; Document holders [stationery]; Clipboards; Stationery; Adhesives for stationery or household purposes; Document files [stationery]; Push pins; Paper-clips; Paperweights; Writing instruments; Pens; Pencils; Nibs of gold; Drawing instruments; Pen clips; Pencil leads; Pencil holders; Penholders; Stands for pens and pencils; Pencil sharpening machines, electric or non-electric; Rubber erasers; Rulers; Drafting rulers; Artists' materials; Canvas for painting; Notebooks, Drawing materials; Paint brushes; Drawing sets; Figurines [statuettes] of papier mâché; Lithographic works of art; Paintings [pictures], framed or unframed; Posters; Photographs; Typewriters and office requisites except furniture; Cases for stamps [seals]; Ink pads; Instructional and teaching material (except apparatus); Printers' type; Printing blocks; albums, scrapbooks, photograph stands; blotters, boxes for pens; Cabinets for stationery, Clipboards, Elastic bands for offices, Folders for papers; Globes; Ink pads, Inkwells, Nibs, Office perforators, Paperclips and Paper hooks, Pen boxes, Pencil sharpeners; Staples for offices, Staples for offices; Trays for sorting and counting money, Typewriter keys, Typewriter ribbons; Desk trays; Checkbook covers; Money holders; Banknotes; Money clips; Passport covers; Chaplets; Bookmarkers; Letter-openers; note books and document portfolios of leather, leather diaries.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Academies [education]; Educational examination; Entertainment; Amusement park services; Vocational guidance; Casino facilities [gambling] (Providing -); Circuses; Club services [entertainment or education]; Coaching [training]; Music composition services; Electronic desktop publishing; Amusement arcade services; Zoological garden services; Disc jockey services; Entertainer services; Recording studios; News reporters services; Services of schools [education]; Language interpreter services; Animal training; Discotheque services; Tuition; Videotaping; Film production, other than advertising films; Movie studios; Rental of motion pictures; Conducting fitness classes; Photography; Photographic reporting; Health club services [health and fitness training]; Religious education; Gambling; Gymnastic instruction; Arranging and conducting of colloquiums; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of seminars; Arranging and conducting of symposiums; Workshops (Arranging and conducting of -) [training]; Scriptwriting services; Entertainment information; Education information; Information services relating to recreation; Sign language interpretation; Calligraphy services; Nursery schools; Boarding schools; Layout services, other than for advertising purposes; Physical education; Tutoring; Microfilming; Mobile library services; Modelling for artists; Organisation of fashion shows for entertainment purposes; Videotape editing; Museum facilities (Providing -) [presentation, exhibitions]; Music-halls; Production of music; Night clubs; Dubbing; Vocational retraining; Subtitling; Publication of electronic books and journals on-line; Radio entertainment; Television entertainment; Writing of texts, other than publicity texts; Organization of balls; Operating of lotteries; Arranging of beauty contests; Organisation of sports competitions; Organization of exhibitions for cultural or educational purposes; Organization of shows [impresario services]; Organisation of competitions [education or entertainment]; Arranging and conducting of concerts; Orchestra services; Personal trainer services [fitness training]; Ticket agency services [entertainment]; Booking of seats for shows; Training (Practical -) [demonstration]; Production of shows; Planning (Party -) [entertainment]; Production of television and radio programs; Correspondence courses; Sport camp services; Publication of texts, other than publicity texts; Golf facilities (Providing -); Recreation facilities (Providing -); Providing karaoke services; Providing non-downloadable electronic publications online; Providing on-line music, not downloadable; Providing on-line videos, not downloadable; Game services provided on-line from a computer network; Providing sports facilities; Theater productions; Timing of sports events; Performances (Presentation of live -); Publication of books; Library services; Camp services (Holiday -) [entertainment]; Rental of audio equipment; Rental of stage scenery; Rental of skin diving equipment; Rental of movie projectors and accessories; Rental of sound recordings; Rental of radio and television sets; Rental of toys; Games equipment rental; Rental of sports grounds; Rental of sports equipment, except vehicles; Rental of stadium facilities; Rental of tennis courts; Rental of stage scenery; Rental of lighting apparatus for theatrical sets or television studios; Rental of videotapes; Rental of video cameras; Rental of video recorders; Translation and interpretation; Cinema presentations; None of the aforesaid services relating to wrestling, wrestling events or wrestlers.

IR No 1 131 972 (earlier mark 4)

Class 25: Clothing; footwear; headgear; belts (clothing).

EUTM No 12 849 774 (earlier mark 5)

Class 25: Clothing, footwear and headgear for young people and young adults, including jeans, clothing made of denim, urban wear and street wear.

The contested goods and services are the following:

Class 9: Apparatus, instruments and cables for electricity; Information technology and audio-visual, multimedia and photographic devices; Navigation, guidance, tracking, targeting and map making devices; Measuring, detecting and monitoring instruments, indicators and controllers; Safety, security, protection and signalling devices; Information technology and audiovisual equipment; Software; Databases; Media content; Recorded content; Scientific research and laboratory apparatus, educational apparatus and simulators; Scientific and laboratory devices for treatment using electricity; Magnets, magnetizers and demagnetizers; Optical devices, enhancers and correctors; Diving equipment; Accumulators, electric; Batteries for vehicles; Chargers for electric batteries; Apparatus and instruments for accumulating and storing electricity.

devices; Navigation, guidance, tracking, targeting and map making devices; Measuring, detecting and monitoring instruments, indicators and controllers; Safety, security, protection and signalling devices; Information technology and audiovisual equipment; Software; Databases; Media content; Recorded content; Scientific research and laboratory apparatus, educational apparatus and simulators; Scientific and laboratory devices for treatment using electricity; Magnets, magnetizers and demagnetizers; Optical devices, enhancers and correctors; Diving equipment; Accumulators, electric; Batteries for vehicles; Chargers for electric batteries; Apparatus and instruments for accumulating and storing electricity.

Class 12: Vehicles and conveyances; Land vehicles and conveyances; Parts and fittings for vehicles; Wheelbarrows; Mobility conveyances; Electric bicycles; Bicycles; Motorised bicycles; Trailers [vehicles]; Bicycle trailers (riyakah); Cargo trailers; Trailers for transporting bicycles; Electrically operated scooters; Load carrying vehicles; Pedicabs; Self balancing electric scooters; Delivery tricycles; Transport trailers; Electrically powered trolleys.

Class 16: Decoration and art materials and media; Printed matter; Filtering materials of paper; Gums [adhesives] for stationery or household purposes; Works of art and figurines of paper and cardboard, and architects' models; Paper and cardboard; Stationery and educational supplies; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics.

Class 25: Clothing; Headgear; Footwear.

Class 37: Vehicle repair, maintenance and refuelling; Tyre maintenance and repair; Maintenance and repair of bicycles; Repair of trailers; Maintenance and repair of motor vehicles for transportation of passengers.

Class 39: Transport; Vehicle parking and storage; Parking and vehicle storage, mooring; Navigation (positioning, and route and course plotting); Travel and passenger transportation; Transportation and delivery of goods; Rental of means of transportation; Rental of cycles; Leasing of trailers; Rental of road vehicles; Providing information relating to bicycle rental services; Road transport services for persons; Computerised information services relating to the carriage of passengers; Freight and cargo transportation and removal services; Rescue, recovery, towing and salvage services; Mail delivery and courier services.

Class 45: Rental of clothing; Rental of protective helmets; Rental of protective clothing and equipment; Providing information on clothing rental; Advisory services in relation to safety.

As a preliminary remark, 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.

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

Apparatus and instruments for accumulating and storing electricity; Software; Magnets are identically contained in both lists of goods (including synonyms).

The contested Accumulators, electric; Batteries for vehicles are included in the broad category of the opponent’s apparatus and instruments for accumulating electricity. Therefore, they are identical.

The contested information technology and audio-visual, multimedia and photographic devices; information technology and audiovisual equipment are included in the broad category of, or overlap with, the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested apparatus, instruments and cables for electricity; chargers for electric batteries are included in, or overlap at least partially with the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore, they are identical.

The contested Navigation, guidance, tracking, targeting and map making devices are included in the broad category of, or overlap with, the opponent’s data processing equipment. Therefore, they are identical.

The contested Measuring, detecting and monitoring instruments, indicators and controllers are included in, or overlap with the opponent’s measuring, checking (supervision) apparatus and instruments. Therefore, they are identical.

The contested Safety, security, protection and signalling devices are included in, or overlap with the opponent’s signalling and life-saving apparatus and instruments. Therefore, they are identical.

The contested databases; Media content; Recorded content are included in, or overlap with the opponent’s computer software. Therefore, they are identical.

The contested Scientific research and laboratory apparatus, educational apparatus and simulators; Scientific and laboratory devices for treatment using electricity are included in, or overlap with the opponent’s scientific and teaching apparatus and instruments. Therefore, they are identical.

The contested Optical devices, enhancers and correctors are included in the broad category of the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested magnetizers and demagnetizers are at least similar to the opponent’s magnets. These goods have the same general nature and can coincide in producers and distribution channels.

The contested Diving equipment is similar to the opponent’s nautical apparatus and instruments. These goods usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 12

The contested Vehicles and conveyances; Land vehicles and conveyances are identical to the opponent’s vehicles; apparatus for locomotion by land, air or water, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, the contested goods.

The contested Wheelbarrows; Mobility conveyances; Electric bicycles; Bicycles; Motorised bicycles; Trailers [vehicles]; Bicycle trailers (riyakah); Cargo trailers; Trailers for transporting bicycles; Electrically operated scooters; Load carrying vehicles; Pedicabs; Self balancing electric scooters; Delivery tricycles; Transport trailers; Electrically powered trolleys are various types of land vehicles and are therefore included in the broad category of the opponent’s vehicles. Therefore, these sets of goods are identical.

The contested Parts and fittings for vehicles are similar to the opponent’s Vehicles, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 16

Printed matter; Paper and cardboard are identically contained in both lists of goods.

The contested Gums [adhesives] for stationery or household purposes are included in the broad category of the opponent’s Adhesives for stationery or household purposes. Therefore, they are identical.

The contested Works of art and figurines of paper and cardboard, and architects' models overlap with the opponent’s Figurines [statuettes] of papier mâché; Lithographic works of art. Therefore, they are identical.

The contested Decoration and art materials and media include goods, such as the opponent’s Paintings [pictures], framed or unframed; Posters; Photographs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics are included in, include, or overlap with the opponent’s Boxes of cardboard or paper, wrapping paper, bags of paper and/or cardboard; Bags [envelopes, pouches] of paper for packaging. Therefore, they are identical.

The contested Stationery and educational supplies are included in, or overlap with the opponent’s Stationery. Therefore, they are identical.

The contested Filtering materials of paper are included in, or overlap with the opponent’s stationery. Therefore, they are identical.

Contested goods in Class 25

Clothing; Headgear; Footwear are identically contained in both lists of goods.

Contested services in Class 37

The contested Vehicle repair, maintenance and refuelling; Tyre maintenance and repair; Maintenance and repair of bicycles; Repair of trailers; Maintenance and repair of motor vehicles for transportation of passengers are all related to the repair, maintenance and installation of vehicles. The undertakings that produce the opponent’s vehicles in Class 12 also usually offer these services, and consumers are aware of this fact. Moreover, using the same undertaking to provide both the goods and the services gives a certain guarantee of quality, and the spare parts may have particularities that mean that only that undertaking can render the services in an appropriate way. To this extent, there is a certain interdependence leading to a complementary character. These goods and services have the same relevant public and may have the same producers/providers and distribution channels. Therefore, the aforementioned contested services and the opponent’s vehicles are similar.

Contested services in Class 39

The contested services in this class include, in general, transport, storage, rental and leasing of different types of vehicles and other transportation means, related information thereof and mail and courier services. These services do not have any relevant connections with the all the opponent’s goods and services (in Classes 9, 11, 12, 13, 14, 16, 18, 22, 23, 25, 27, 31, 41 and 42). These sets of goods and services differ in nature and/or intended purpose. They are usually marketed by different undertakings and differ in method of use and distribution channels. Furthermore, these goods and services are not complementary or used in combination, and they have different commercial origins.

For example, transport services are not considered similar to any goods in Classes 9, 11, 12, 13, 14, 16, 18, 22, 23, 25, 27 and 31. Transport services refer, for example, to a fleet of lorries or ships used for moving goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition.

Storage services refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee. Those services are not similar to all the opponent’s goods in the mentioned Classes, which could be packed or stored. The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels, and are not in competition.

Therefore, for all the abovementioned reasons the contested services in Class 39 are dissimilar to all the opponent’s goods and services.

Contested services in Class 45

The contested advisory services in relation to safety include services such as advisory services in relation to protection of property and individuals. These services are similar to a low degree to the opponent’s measuring, signalling apparatus and instruments; cameras in Class 9. The core business of the contested services is to provide security and safety advisory services to other businesses or to nonprofessional consumers (protection of their property and/or people, hazard control). In order to provide others with a protection of goods and people against danger, loss and criminals, many different means and products might be used. It is not exceptional that special devices and safety/signalling equipment are provided to the clients to fulfil this target. The contested services are provided by specialised companies which study their client’s needs and provide all the necessary information, advice and equipment for enhancing customer’s safety and security and creating a personalised strategy regarding protection. For example, present day safety advisory and security service companies provide to their clients not only advice but also equipment such as alarm and signalling systems, movement sensors, measuring instruments relating to movement, security cameras and microphones and other similar devices and safety equipment in order to ensure intelligent control, monitoring, security and control platforms for offices, homes, buildings and individuals. Therefore, such goods and services have the same general purpose, namely to protect property and human beings, and they target the same public and can coincide in distribution channels. They are also complementary to the extent that safety and security equipment, alarms, cameras, etc. are essential in providing efficient and reliable safety advisory services.

The contested Rental of clothing; Rental of protective helmets; Rental of protective clothing and equipment; Providing information on clothing rental are similar to at least a low degree to the opponent’s rental of skin diving equipment; rental of sports equipment, except vehicles; none of the aforesaid services relating to wrestling, wrestling events or wrestlers in Class 41. These services have the same nature and purpose, namely the letting or hiring of different types of clothing, including protective clothing and equipment. These services may be rendered by the same undertakings and may coincide in relevant public.

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 or similar to various degrees are directed both at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, the frequency of purchase, their price specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

RAW	UNIRAW
Earlier trade marks	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 element ‘RAW’, which the signs have in common, is meaningful for the English-speaking part of the public. As it will influence the concepts conveyed by the marks at issue, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as consumers in the United Kingdom, Ireland and Malta, as well as consumers who have sufficient knowledge of English as a foreign language.

Both marks are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper or lowercase characters. Furthermore, for the same reasons, the marks have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s).

The earlier marks are all for the same sign, namely a word mark, consisting of the single verbal element ‘RAW’. The contested sign consists of the verbal element ‘UNIRAW’.

While it is acknowledged that the contested sign is composed of a single verbal element, nevertheless, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In this regard, it must be mentioned that in view of the structure of the contested sign and of the respective underlying concepts, it will be broken down into the elements ‘UNI’ and ‘RAW’.

The word ‘RAW’, contained in the signs will be understood as ‘not cooked; in a natural state, without having been through any chemical or industrial process; not yet been studied in detail (information)’. The element ‘UNI-’ contained in the beginning of the contested sign is a prefix and means ‘having or consisting of only one’ (definitions extracted from Cambridge Advanced Learner's Dictionary online, at https://dictionary.cambridge.org/). As none of these elements has any descriptive, non-distinctive or otherwise weak meaning for the relevant goods and services, it is considered that their inherent distinctiveness is normal.

Visually and aurally, the signs coincide in the inherently distinctive verbal element ‘RAW’, which constitutes the only element of the earlier marks and is entirely contained in the contested sign, in which it has an independent inherently distinctive role. The signs differ in ‘UNI’ which has no counterpart in the earlier marks. Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, as indicated above, the verbal element ‘RAW’ in the signs will be associated with the same concept(s). The signs differ in the additional concept of ‘uni’ of the contested sign. In relation to the additional concept of ‘uni-’, account must be taken of the fact that it is a prefix and, as such its semantic role presupposes a certain degree of subordination to the element that follows. Therefore, the signs are conceptually similar to at least 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.

d) Distinctiveness of the earlier marks

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 marks 1, 2 and 3 are particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of these three earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

According to the opponent, the earlier marks 4 and 5 have been extensively used and enjoy 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 at the present stage of the proceedings (see below in ‘Global assessment’). Consequently, the assessment of the distinctiveness of these earlier marks will rest on their distinctiveness per se. Considering what has been stated above, the inherent distinctiveness of these earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

In the present case, the contested goods and services are partly identical and similar to various degrees and, partly dissimilar to the opponent’s goods and services. The relevant goods and services are directed at the public at large and at professional consumers and the level of attention varies from average to high.

The signs are visually and aurally similar to an average degree and conceptually to at least an average degree.

The similarities between the signs are on account of the common and normally distinctive element ‘RAW’, which constitutes the only verbal and inherently distinctive element of the earlier mark and an inherently distinctive element within the contested sign.

The Opposition Division highlights the fact that, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUMTR there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes owing to their similarities that they are derived from the same undertaking or indeed an economically-linked undertaking.

While it is indeed true that the signs differ in the element ‘UNI’ in the beginning of the contested sign, in the present case it is highly conceivable that the relevant consumer will 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). This is likely to be the case even when the public may exercise a higher level of attention, as the similarity of the signs is sufficient for the consumers to consider that the respective goods and services, even those similar to a low degree, have the same origin.

In view of the foregoing and taking into account all the relevant circumstances of the case, including the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes, that the signs are sufficiently similar to induce a likelihood of confusion on the part of the relevant public.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s trade mark registrations, listed above (1 to 5). 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade marks.

The rest of the contested services, namely all the contested services in Class 39 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 services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks 4 and 5 due to their extensive use/reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the mentioned earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks 4 and 5 in relation to the dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

As mentioned above, the opponent has also based its opposition under Article 8(1)(b) EUTMR on the following goods in Classes 20, 21 and 24 covered by the following earlier trade marks (1, 2 and 3) and subject to pending cancellation proceedings, namely:

- EUTM No 9 914 284 (with pending cancellation proceedings C 18566 and C 18565 against all the goods in Classes 20 and 24):

Class 20: Furniture, mirrors, picture frames.

Class 24: Textile goods, not included in other classes; bed and table covers.

- EUTM No 11 493 103 (with pending cancellation proceedings C 24021, C 17104 and C 17516 against all the goods in Class 21):

Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

- EUTM No 14 993 356 (with pending cancellation proceedings C 18581 against all the goods in Classes 20 and 24):

Class 20: Furniture, mirrors, picture frames and holders; photo frames and holders; calendar frames and holders; hand held mirrors with frames; Bedding, except linen; Beds; Benches [furniture]; bins, not of metal, chests, not of metal; Book rests [furniture]; Busts of wood, wax, plaster or plastic; Chests for toys; Poles for curtains; Curtain rollers; Cushions; Easy chairs; Standing desks; Display stands and boards; Fans for personal use, non-electric; Statuettes of wood, wax, plaster or plastic; Flower stands; Letter boxes, not of metal or masonry; Lockers; Locks, not of metal, for vehicles; Locks, other than electric, not of metal; Mattresses; Nuts, not of metal; Office furniture; Packaging containers of plastic; Pet cushions; Pillows; Placards of wood or plastics; Playpens.

Class 24: Textiles and textile goods, not included in other classes; Beach towels; Bath linen, except clothing; Bath mitts; Bed blankets; Bed linen; Bed covers; Fabrics; Face towels [made of textile materials]; Handkerchiefs of textile; Linens; Knitted fabric; Labels of cloth; Flax fabrics; Lingerie fabric; Mattress covers; Mosquito nets; Curtains; Pillowcases; Shams; Place mats, not of paper; Bed sheets; Shower curtains of textile or plastic; Sleeping bag liners; Tablecloths, not of paper; Table linen, not of paper; Tablemats, not of paper; Textile napkins; Table runners; Towels of textile; Travelling rugs [lap robes].

The remaining contested services are all the services in Class 39. The goods in Classes 20, 21 and 24 covered by mentioned earlier EUTMs (1, 2 and 3) and on which the opposition is based, are clearly different to the remaining contested services in Class 39. These sets of goods and services do not have any relevant connections. The remaining contested services in Class 39 include transport, storage, rental and leasing of different types of vehicles and other transportation means, related information thereof and mail and courier services. These services differ in nature and/or intended purpose from the opponent’s goods. They are usually marketed by different undertakings and differ in method of use and distribution channels. Furthermore, these goods and services are not complementary or used in combination, and they have different commercial origins. Consequently, they are dissimilar.

Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

REPUTATION — ARTICLE 8(5) EUTMR

The Opposition Division will now proceed to examine the opposition in relation to earlier EUTM No 12 849 774 and international trade mark registration No 1 131 972 designating European Union, in relation to which the opponent invoked Article 8(5) EUTMR and claimed reputation in the EU.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

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

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient.

The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark. In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 09/10/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

IR No 1 131 972 (earlier mark 4)

Class 25: Clothing; footwear; headgear; belts (clothing).

EUTM No 12 849 774 (earlier mark 5)

Class 25: Clothing, footwear and headgear for young people and young adults, including jeans, clothing made of denim, urban wear and street wear.

The remaining contested services against which the opposition remains directed against are the following:

Class 39: Transport; Vehicle parking and storage; Parking and vehicle storage, mooring; Navigation (positioning, and route and course plotting); Travel and passenger transportation; Transportation and delivery of goods; Rental of means of transportation; Rental of cycles; Leasing of trailers; Rental of road vehicles; Providing information relating to bicycle rental services; Road transport services for persons; Computerised information services relating to the carriage of passengers; Freight and cargo transportation and removal services; Rescue, recovery, towing and salvage services; Mail delivery and courier services.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 27/07/2018 the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

Annex 1: Printouts showing rankings for top selling jeans brands in the world in 2016 and 2017, in particular ‘Top 10 Most Favourite Jeans Brands’ (referring to ‘G-Star Raw’) or ‘Top Ten Best Selling Jeans Brands in the World 2016-2017’ (referring to ‘G-Star Jeans’ and ‘G-Star’).

Annex 2: Printout from 2017 from ranker.com showing that ‘G-Star’ ranked 7^th in ‘Best Jeans and Denim Brands’.

Annex 3: Store finder showing a map and a list of ‘G-STAR RAW’ stores all over the European Union.

Annex 4: Screenshots from G-Star Raw’s website and some stills from a promotional movie in connection with 2016 G-Star RAW global promotional campaign.

Annex 5: Selection of photographs from EU cities showing billboards, posters, advertisements, etc. from 2016 Promotional Campaign of ‘RAW’ of ‘G-Star Raw’.

Annex 6: Selection of press articles published in print and online magazines in France, Sweden, Belgium, the Netherlands, the UK and Spain and referring to the 2016 Promotional Campaign of ‘RAW’ of ‘G-Star Raw’.

Annex 7: Pictures of ‘RAW’ clothing items from the RAW’s 2016 collection of G-Star.

Annex 8: Overview and examples of G-Star RAW advertising campaigns in 2008, 2009, 2010, 2011, 2012, 2013 and 2015 showing various clothing items including cover pages of magazines and sources where the advertisements appeared.

Annexes 9 and 10: Pictures/photographs of ‘RAW’ used on various clothing articles and collections.

Annex 11: RAW collection lines by G-star, in particular photographs and printouts showing clothing items from ‘RAW CORRECT’, ‘RAW ESSENTIALS’, ‘STAY RAW’, ‘RAW CARGO’, ‘RAW TAILORED’ and ‘RAW UTILITY’ lines.

Annex 12: Prizes and awards - Overview and list of awards received in the period 2004 – 2017 by G-Star RAW. The annex also includes a list of trade fairs and fashion shows that G-Star attended in the period 2004 – 20017.

Annex 13: Pictures from various trade shows and fashion events.

Annex 14: Pictures showing G-star RAW stores and storefronts.

Annex 15: Outdoor advertising - pictures of advertising on walls, billboards, buses, etc.

Annex 16: Several printouts showing that ‘RAW’ has social media presence in Facebook, You Tube, Instagram and Twitter.

Annex 17: Details and pictures in relation to ‘RAW for the Oceans Campaign’.

Annex 18: Information and pictures in relation to ‘RAW’ promotional events such as ‘RAW Nights’ parties and ‘RAW RHYTHM Festival’.

Annex 19: Extracts from ‘RAW MAGAZINES’ such as issue 1 from 2009, issue 1 of 2010, spring/summer 2011, issues 6 of 2012, etc.

Annex 20: RAW crossovers, in particular information about co-branding with other lifestyle products such as urban style bicycles ‘RAW Cannondale’, ‘RAW Billiard Tables’, ‘RAW Leica’s’ camera, etc.

Annex 21: Statement by Jos van Tilburg, founder of G-Star, dated 17/04/2009. The statement indicates the history and position of the trade mark ‘RAW’, including sales figures. In the declaration it is mentioned that ‘RAW’ is used independently in, inter alia, clothing lines, lifestyle and luxury products, event marketing and parties.

Annex 22: Detailed Marketing Campaign Breakdowns showing advertising figures break downs in relation to three G-Star Raw campaigns in different EU countries, in particular of the campaigns ‘The Art of Raw’, ‘RAW Kasabian’ and ‘RAW for the Oceans’.

Annex 23: IPSOS Survey report 2016 conducted in the Netherlands and Belgium showing that 38% of the respondents within the target group in Belgium and 54% in the Netherlands are familiar with the trade mark ‘RAW’ of G-star in relation to clothing.

Annex 24: GFK Survey Report 2014 conducted in the Netherlands, Belgium and Germany showing, for example, that 45% of Dutch respondents mention G-Star when seeing ‘RAW’; and when primed with the category clothing, an extra 16% mentions G-Star.

Annex 25: IVOMAR Survey 2011 conducted in the Netherlands amongst 200 respondents.

Annex 26: UK Survey report 2009. A market survey conducted by Gfk NOP in the United Kingdom in 2009 showing that a total of 142 of 252 respondents knew the trade mark ‘RAW’ of G-STAR.

Annex 27: G-STAR RAW Milestones.

Annexes 28, 29: Decision of Trademark Court no.2 of Alicante, decision No.387/2107 ‘MANGO-RAW’ of 18/10/2017 and a translation in English mentioning that ‘RAW’ has a reputation in the EU.

The abovementioned evidence indicates that the earlier trade marks have been used for a substantial period of time. The sales figures and marketing efforts suggest that the trade marks have a consolidated position in the market. While it is true that there are many instances of use of the earlier marks in conjunction with additional elements and mainly the phrase ‘G-Star’, there are indications that ‘RAW’ is also used and recognised individually. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade marks enjoy a certain degree of recognition among the relevant public in relation to clothing in the European Union.

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

The opponent failed, however, to prove such recognition of its trade marks for the remaining goods that are not clothing. While there are some instances of use, there is no specific reference to those goods in the surveys and the evidence as a whole.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

c) The ‘link’ between the signs

As seen above, the earlier marks enjoy a certain degree of recognition among the relevant public and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)

In the present case, while the relevant section of the public for the goods or services covered by the conflicting marks is the same or overlaps to some extent, those goods or services are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public.

The earlier trade marks enjoy some degree of recognition for clothing in Class 25 and the contested sign seeks protection for services of transport, storage, rental and leasing of different types of vehicles and other transportation means, related information thereof and mail and courier services in Class 39 (listed above). These type of goods and services belong to entirely different and unrelated industries and economic sectors.

The contested services are so different and so dissimilar to the opponent’s goods that that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. The significant differences in usage or distribution channels between the mentioned contested services and the opponent’s goods for which a certain degree of recognition exists make it very unlikely that the public will establish a link between the signs in dispute. It is highly unlikely and hardly plausible that the public would be reminded of the earlier mark when purchasing the contested services bearing the contested mark. In this regard it is reminded that the Court has stressed that one factor when considering a link must be ‘the nature of the goods or services for which the conflicting marks were registered, including the degree of … dissimilarity between those goods or services, and the relevant section of the public’ (27/11/2008, C 252/07, Intel, EU:C:2008:655, §42).

In the present case, the nature of the goods and services is such that there is a high degree of dissimilarity between them and they follow completely divergent distribution channels. In view of the high degree of dissimilarity that exists between the relevant goods and services, this large gap makes it unlikely that the contested mark would remind the relevant consumer of the earlier mark.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gueorgui IVANOV

Liliya YORDANOVA

Jakub MROZOWSKI

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.