OPPOSITION No B 3 050 368

Colin McCaffrey and Mark McGrade, 52 Beechwood Lisnaskea, Enniskillen BT920L, United Kingdom (opponents), represented by A2 Estudio Legal, C/ Alcalá 143, 3º Derecha, 28009 Madrid, Spain (professional representative)

a g a i n s t

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

On 25/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 368 is rejected in its entirety.

2. The opponents bear the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 383 316, (figurative mark), namely against all the goods in Classes 18 and 25. The opposition is based on United Kingdom trade mark registration No  3 177 974 (figurative mark), and United Kingdom non-registered trade mark . The opponents invoked Article 8(1)(b) and Article 8(4) 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.

a) The goods

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

Class 25: Clothing.

The contested goods are the following:

Class 18: Leather and imitations of leather; leather, un-worked or semi-worked; processed or unprocessed leather and hides, artificial leather, cowhide, lining leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; shooting sticks; whips, harness and saddlery; bags; handbags; shoulder bags; cases; suitcases; briefcases; rucksacks; belts; purses; travelling cases; backpacks; duffel bags; bags for campers; shopping bags; carrier bags; furniture covering of leather; leather straps (not for clothing); pocket wallets; toilet bags; accessories for clothing and fashion, namely, purses, handbags, wallets, clutch bags, tote bags; key cases; pocket wallet holders (in the nature of wallets) for credit cards or visiting cards, toilet bags (not fitted), travelling bags; leather bags, bags of synthetic materials; wallets; attaché cases; music cases; satchels; diaper bags; beach bags; bumbags; sports bags; casual bags; beauty cases; carriers for suits, for shirts and for dresses; tie cases; notecases; credit card cases and holders; tool bags; messenger bags; document bags; business card cases; collars for animals; hat boxes of leather; luggage tags; sling bags for carrying infants; vanity cases.

Class 25: Clothing, footwear, headgear; sports clothing; socks; maternity wear; clothing for men, women and children, namely, coats, rain coats, anoraks, parkas, blazers, jackets, cardigans, boleros, sport coats, wind resistant jackets, suits, tuxedos; vests, dresses, evening gowns, jumpers, jerseys, skirts, pants, slacks, trousers, jeans, jean shirts, jump suits, coveralls, flight suits, gym suits, jogging jerseys, blouses, tunics, sweatshirts, t-shirts, tops, halter tops, tank tops, body suits, camisoles, chemises, undershirts, slips, foundation garments, body shapers, bustiers, briefs, boxer shorts, underpants, panties, lounge wear, night gowns, night shirts, negligees, robes, pyjamas, hosiery, tights, leggings, socks; ties, neckties, bow ties, scarves, shoals, neckerchiefs, gloves, mittens, belts, swimwear, bathing suits, beachwear, beach cover-ups, sarongs; ski wear, ski suits, ski pants, ski gloves, thermal socks, infant wear, play suits; footwear, namely, shoes, boots, sandals, flip flops, thongs, pool sliders and slippers; headgear namely, hats, caps, headbands, ear warmers; ready-made clothing; clothing of leather or suede; overalls; pullovers; shirts; swimming suits; training suits; jogging suits; mufflers; ear muffs; shawls; lingerie; bras; bodies; sleep sets; waterproof clothing; dancing clothing; shorts; clothing, footwear and headgear for children and babies; clothing, footwear and headgear all for sports and leisurewear; knitwear in the nature of sweaters; footwear in the nature of trainers; joggers, namely jogging suits; hoodies; polo shirts; sweat tops; track suits; leotards; trunks; waistcoats; bridesmaid dresses; ponchos; raincoats; dressing gowns; knickers; basques; stoles; wraps; cravats; kaftans; rompers; fleeces; fleece shirts; windbreakers; aprons; clothing for babies; babies' bibs, not of paper; dinner jackets; braces; babies' sleepsuits; garters; sock suspenders; bandanas [neckerchiefs]; special sporting and gymnastic wear; special sporting and gymnastic footwear; ankle boots; babies' pants [underwear]; bath sandals; bath slippers; bath robes; bathing caps; bathing trunks; swimsuits; beach clothes; beach shoes; berets; boas [necklets]; bodices [lingerie]; boot uppers; boots for sports; breeches for wear; cap peaks; caps [headwear]; clothing for gymnastics; clothing of imitations of leather; collars [clothing]; combinations [clothing]; corselets; corsets [underclothing]; cuffs/wristbands [clothing]; cyclists' clothing; detachable collars; dress shields; fishing vests; fittings of metal for footwear; football shoes/football boots; footmuffs, not electrically heated; footwear uppers; fur stoles; furs [clothing]; gabardines [clothing]; galoshes; gymnastics shoes; half-boots; hat frames [skeletons]; heelpieces for stockings; heelpieces for footwear; heels; hoods [clothing]; jumper dresses; pinafore dresses; lace boots; layettes [clothing]; leg warmers; masquerade costumes; money belts [clothing]; motorists' clothing; neckties; non-slipping devices for footwear; outerclothing; overcoats, topcoats; paper clothing; paper hats [clothing]; petticoats; pockets for clothing; ready-made linings [parts of clothing]; saris; sashes for wear; shirt fronts; shirt yokes; short sleeve shirts; shower caps; ski boots; skorts; skull caps; sleep masks; slippers; inner soles; soles for footwear; spats; gaiters; sports jerseys; sports shoes; sports singlets; stocking suspenders; stockings; studs for football boots; stuff jackets [clothing]; sweat-absorbent stockings; sweat-absorbent underwear and underclothing; sweat-absorbent socks; teddies [undergarments]; tips for footwear; togas; top hats; trouser straps/gaiter straps; turbans; underwear/underclothing; uniforms; valenki [felted boots]; veils [clothing]; visors [headwear]; welts for footwear; wet suits for water-skiing; wooden shoes; girdles; bra strap extenders; snoods.

Some of the contested goods are identical or similar to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large. The degree of attention is considered to be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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 earlier right consists of the stylized silhouette of a deer’s head, facing right, and impressive, sharp and jagged antlers stick out at the top. The image is depicted in black against a white background and only gives the contours of the head with one eye, without any further detail or features of the head. Below this image and covering about one third of the size of the mark, the words TRORY and IRELAND can be seen. The word TRORY is written in significantly bigger black, bold letters than the word IRELAND, which is even difficult to read. TRORY, as submitted by the applicant in its Exhibit 1, is the name of a tiny village in Northern Ireland with a population of about 300 people. Hence it is very unlikely that the relevant British public will recognize this word as indicating a geographical origin and therefore it is considered to be distinctive. The word IRELAND however refers to the isle of Ireland and will be considered by the relevant public as an indication of the origin of the goods concerned. Therefore, it is non-distinctive.

The contested sign is purely figurative and consists of the fairly realistic, close to life, drawing of a deer’s head, facing left, where the contours are outlined in black. The head and the antlers are depicted in soft contours with smooth lines, and one can also see the nose, eyes and ears of the dear. The drawing also contains partially a fur coat on the neck of the animal.

The earlier mark has no element that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the marks differ already in the fact that the earlier mark contains two verbal elements, whereas the contested sign is purely figurative. Even if IRELAND is non-distinctive, the public will clearly see the distinctive word TRORY. Furthermore as explained above, also the images of the dears are clearly different in shape, features, antlers, and the kind of drawing (black silhouette against a drawing) and the sides the heads – left respectively right - are facing. Overall there are very noticeable differences between the two marks and there is no visual similarity between them.

Aurally, it should be noted that the figurative elements of the marks cannot be pronounced and are not subject to a phonetic assessment. As the contested sign is purely figurative, it is not possible to make an aural comparison of the signs at hand.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. In both signs, the relevant public will perceive the concept of a stag. However, the earlier mark consists also of the verbal element TRORY, which has no meaning for the public, and the non-distinctive term IRELAND. Overall, the Opposition Division concludes that the semantic content of the earlier sign is similar to an average degree to the concept conveyed by the contested sign, as both signs depict an animal which belongs to the same species.

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 opponents did not explicitly claim that their mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The contested goods are assumed to be identical, and the earlier right disposes of a normal distinctiveness.

The signs are visually dissimilar, cannot be compared aurally and are conceptually similar to an average degree.

Although the opponents submit that the representation of the earlier UK mark is highly similar to that of the contested application because of the depiction of the same animal, the Office is of the opinion that the differences between the marks outweigh the conceptual similarity. The earlier mark possesses not only a distinctive verbal element, namely TRORY, but also strong eye-catching different visual elements such as the completely different kind of depictions, namely a black and white silhouette versus a more close to life drawing, and the overall ‘soft and smooth’ impression of the contested design. The marks only share the same conceptual –average- similarity, namely the depiction of a part of a stag.

The mere fact that there are two figurative representations of the same general phenomenon (here: a stag) or motif does not automatically constitute a likelihood of confusion. Figurative marks are protected the way they are actually depicted, not as regards the general category of phenomena they are about (see Judgment of the Court of Justice, Case C-251/95, Sabèl BV v Puma AG, Rudolf Dassler Sport [1997] OJ OHIM 1/98, p. 91, paragraph 25).

Representations of animals per se cannot readily be monopolised by a trade mark proprietor, since other providers must also retain the possibility of using a representation of the same animal. Under European Union trade mark law, there can be no protection for concepts behind a trade mark in the abstract.

Even if two figurative signs are of a particular animal type, there is only a likelihood of confusion if the figurative representations of the signs under comparison have common features. In the present case, however, there are no such common features which are striking enough to offset the differences (18/04/2018, R 1547//2017-2, DEVICE OF A BLACK BIRD (fig.)/RABE et al., § 35).

Especially with regard to the goods concerned in Class 25, generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T‑117/03 ‑ T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the differences in the figurative elements are particularly relevant when assessing the likelihood of confusion between them.

This means that in this case the differences in the graphic representation of the picture elements, and the verbal element TRORY, suffice to exclude likelihood of confusion. This is because the signs at issue are similar only insofar as they depict the same species of an animal. They differ in all other respects (see above).

Therefore, the visual differences of the signs outweigh their conceptual similarity. The Office concludes that even assuming that the goods are identical, there is no likelihood of confusion on the part of the public and that the opposition fails on the ground of Article 8 (1)(b) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) Prior use in the course of trade of more than mere local significance

The opposition is based on the above cited non-registered mark used in the course of trade in the United Kingdom.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non- registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its marks. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods and services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s services originate from the opponent. In other words, the public would be likely to believe that services put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods claimed under its mark.

Goodwill is normally proved by evidence of, inter alia, trading activities, advertising and consumers’ accounts. Genuine trading activities, which result in acquiring recognition by the public and gaining customers, are usually sufficient to establish goodwill. Even small businesses can enjoy goodwill. Value may be added to a business and goodwill generated without attaining the level of recognition needed to establish enhanced distinctiveness or reputation. However, it is necessary to prove trading activity above a minimum threshold. Moreover, commercial trading activities have to relate specifically to the goods or services sold under the earlier right on the market in the United Kingdom or Ireland in order to establish goodwill and not to the opponent’s commercial trading activities in general.

In the present case, the contested trade mark was filed on 24/10/2017. Therefore, the opponents were required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom and had acquired goodwill prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for clothing.

On 14/09/2018 the opponents submitted evidence of use in the course of trade. As the opponents requested to keep certain commercial data contained in the evidence 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: United Kingdom Trademark Act 1994

 ANNEX 2: Three invoices from 2017 to three different clients for clothing in the United Kingdom, the total amount invoiced being about 4000.- GPD. Those invoices do not show the earlier right.

 ANNEX 3: Judgment of Lord Justice Slade from 1987 about the condition ‘of more than mere local significance’.

 ANNEX 4: Copy of the Irish Post Awards of November 2016, where one publicity with the opponents earlier right is pictured.

 ANNEX 5: A scan of a google page - not dated - concerning the Irish Linen Centre, where one of the opponent’s garments can be seen. Concerning the Lisburn Museum, visitor statistics for 2015 were provided, but no reference to the earlier right can be seen.

 ANNEX 6: Screenshots of famous sport players of 2015 and 2016 wearing shirts of the opponents. On these pictures the earlier right of the opponents cannot be identified.

 ANNEX 7: Decision of Geoffrey Hobbs QC in Wild Child about the conditions for misrepresentation of 17/02/1998.

 In their submissions itself the opponents presented one undated picture of their shirts bearing the earlier right .

The review of these documents shows, that the use and a goodwill with respect to the above cited earlier trade mark have not been proven.

The opponents submitted only three invoices to clients. These invoices do not show the earlier right and are not issued by the opponents but by TRORY IRELAND. Even assuming that these invoices were issued on the opponents behalf, three isolated invoices concerning a very limited sum and only addressed to three clients are not in any way sufficient proof for the required goodwill. Such sales and invoices are insignificant and do not even establish use of the non-registered right in more than a mere locality. Therefore, the opponents did not meet the minimum threshold of trading activity.

It should be mentioned furthermore that screenshots of people wearing supposedly the opponent’s garments are insufficient proof, as for example the opponents could also have provided these shirts for free in order to get publicity. The fact that the opponents claim to be a sponsor for an award, does not proof goodwill neither, and the opponents furthermore did not submit any proof of such a sponsorship like invoices etc. .

Since all three conditions to sustain a passing off claim must be met for it to be successful, the opposition based on Article 8 (4) EUTR is dismissed since the opponents failed to prove that their sign enjoys goodwill or is known for specific goods under their mark.

Therefore, there is no need to consider whether the other conditions are met.

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 opponents are the losing parties, they must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Peter QUAY

Karin KLÜPFEL

Tobias KLEE

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.