OPPOSITION No B 3 037 648

Essential Export, S.A., Santa Ana, Forum II, Edificio Pacheco Coto, Cuarto Piso, San José, Costa Rica (opponent), represented by Arochi & Lindner, S.L., C/ Gurtubay 6, 3º izquierda, 28001 Madrid, Spain (professional representative)

a g a i n s t

Luca Migliorati, via caterina fieschi 8, 00151 Roma, Italy (applicant), represented by Rossi e Associati Studio Legale, Palazzo Sacchetti Via Giulia 66, 00186 Roma, Italy (professional representative).

On 11/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 034 648 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 411 901 for the figurative mark , namely against all the goods in Classes 25 and 28. The opposition is based on European Union trade mark registration No 6 212 451 for the figurative mark (TM 1), European Union trade mark registration No 15 213 457 for the figurative mark (TM 2) and Spanish trade mark registration No M 2 840 550 for the figurative mark (TM 3). 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.

a) The goods and services

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

TM 1:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; trunks, travelling bags and briefcases; umbrellas, parasols and walking sticks except those intended for sports.

Class 25: Clothing, footwear, headgear, except beachwear, sports clothing, sports shoes and sports headgear.

Class 35: Business administration intended for the manufacture and sale of goods or products except beachwear and goods intended for sports.

TM 2:

Class 18: Leather and imitation leather, Trunks (luggage), Valises, Carrying cases, Portfolio bags, Wallets, Haversacks; Umbrellas and parasols, walking sticks, except haversacks intended for practising sports and except goods intended for practising sports.

Class 25: Underwear and casual clothing, including jeans, Trousers, Jump-suits, Shirts, Tee-shirts, Sweatshirts and sweaters, inter alia; Headgear and footwear, expressly not including: beach clothing, sports clothing, footwear for practising sports and goods designed for practising sports.

Class 35: Wholesaling and retailing of goods, business management and administration, for the sale of goods, business management and consultancy in franchises, advertising, except in connection with beach clothing, sports clothing, footwear for practising sports and goods designed for practising sports.

TM 3:

Class 18: Leather and Leather Imitations, Products of this material not included in other classes; Trunks, Bags, Suitcases, Portfolios, Billettees; Umbrellas, Parasols and Canes except for those used in sports practice.

Class 25: Clothing, footwear, headgear, except beach clothing, sports clothing, shoes for used in the sport practice and hats used in the sport practice.

Class 35: Management and business administration and retailing and wholesaling and through global computer networks of all types of products with the exception of beach clothing and products intended for sports practice.

The contested goods are the following:

Class 25: Clothing; Footwear; Headgear.

Class 28: Sporting articles and equipment; Fairground and playground apparatus; Festive decorations and artificial Christmas trees; Toys, games, playthings and novelties.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘including’ and ‘inter alia’ used in the opponent’s TM 2 list of goods and services, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 25

The contested goods clothing; footwear; headgear include as broader categories the opponent’s goods clothing, footwear, headgear, except beachwear, sports clothing, sports shoes and sports headgear covered by TM 1, casual clothing, headgear and footwear, expressly not including: beach clothing, sports clothing, footwear for practising sports and goods designed for practising sports covered by the TM 2 and clothing, footwear, headgear, except beach clothing, sports clothing, shoes for used in the sport practice and hats used in the sport practice covered by TM 3. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 28

The contested goods in this class are considered dissimilar to all the opponent’s goods in Class 18 and 25.

Leather and imitations of leather in Class 18 refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for sporting articles) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the contested goods.

The remaining opponent’s goods are mainly clothing, headgear and footwear (Class 25) and items either for carrying or storing things (e.g. trunks, bags, wallets) or for protection from sun and rain (umbrellas, parasols) or used as aids for walking (e.g. walking sticks), Class 18. In both classes the opponent has made a limitation, consequently its goods do not include products intended for sports practice. In contrast the contested sporting articles and equipment are goods for various sports and games. Therefore, the Opposition Division considers that there are no points in common between the contested sporting articles and equipment and the opponent’s goods.

As to the remaining contested goods, neither those have relevant points in common with the opponent’s goods; they all have different natures and serve different purposes since the contested goods are aimed mainly to entertain, to play with or on and for decoration purposes. The goods in comparison belong to a different market sector and the contested goods are normally manufactured by undertakings which specialise in the production of articles and equipment for fair- and playgrounds, sport, games and toys, decorations and eventually artificial Christmas trees. These undertakings do not usually produce items of, for example, clothing, headgear, footwear, neither they produce trunks, bags, umbrellas or walking sticks, all those not for sports practice. Furthermore, the majority of the contested goods are normally sold in specialised shops (such as sports, toy or home decoration shops), or in a clearly separate section of large department stores; therefore, the distribution channels are also different from those of the opponent’s goods, which are sold mainly in clothing, accessories and shoe shops or in the respective sections of large department stores.

To sum up, the opponent’s goods, all of them not including products intended for sports practice, and the contested sporting articles and equipment; fairground and playground apparatus; festive decorations and artificial Christmas trees; toys, games, playthings and novelties have different natures, purposes and methods of use and are usually manufactured by different undertakings and sold through different distribution channels. Furthermore, they are neither in competition nor complementary.

The contested goods are also dissimilar to the opponent's services in Class 35 (covered by all three earlier marks), which consist mainly of business management and administration services, advertising and retail and wholesale services in general (i.e. not limited in the specification to the sale of particular goods, apart from being limited as they except beachwear and goods intended for sports).

Business management services are intended to help in the management of the business affairs or commercial functions of an industrial or commercial enterprise. The services of business administration cover activities that assist in the running of a commercial enterprise. These services are intended to help companies with the performance of business operations day-to-day operations of an organisation, including the administration and support services in the back office.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective.

Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop.

All these services are provided by specialist companies, which study their client’s needs, create customized strategies and provide all the necessary information and advice in their respective fields. It is clear that all the abovementioned services in Class 35 correspond to professional services intended to directly assist and support other businesses with the promotion of their goods and services and the operation and management of their commercial enterprises.

Even if the opponent’s services at issue are provided to companies which manufacture the goods covered by the mark applied for, this is insufficient for finding similarity between them. Their nature and intended purpose are clearly different. Furthermore, they are neither in competition with each other nor complementary. Additionally, the opponent’s services in Class 35 and the contested goods will not share the same provider/manufacturer, since the contested goods require a know-how which is fundamentally different from the know-how necessary to provide the opponent’s services. Moreover, the relevant public will also be different. In particular, it must be noted that the fact that some goods or services may appear in advertisements is insufficient for finding similarity between advertising services as such and those goods.

The opponent argues that the contested goods in class 28 are included in the specification of goods in class 35 of the earlier trade marks since ‘the prior European marks protects the sale of goods or products except beachwear and goods intended for sports in one case and the sale of goods except in connection with beach clothing, sports clothing, footwear for practising sports and goods designed for practising sports in the other case and the prior Spanish mark that protects retailing and wholesaling and through global computer networks of all types of products with the exception of beach clothing and products intended for sports practice. Therefore the prior marks protect the sale of these contested goods in class 28.’ [sic]

However, the retail services in general (i.e. not limited in the specification to the sale of particular goods, which is the case of the opponent’s services) are not similar to any goods that can be sold at retail. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary. The same principles apply to the wholesale services in general.

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

c) The signs

1) TM 1: 2) TM 2: 3) TM 3:
Earlier trade marks	Contested sign

The relevant territory is the European Union for the two earlier European Union trade marks (TM 1 and TM 2) and Spain for the Spanish trade mark (TM 3).

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 marks are figurative marks; all of them consisting of the verbal element ‘TOTTO’ in black stylized uppercase characters slightly slanting towards the right side. The second and third ‘T’ letters are joined by a single top line and the letters ‘O’ are smaller in size than the ‘T’ letters and their counters are filled with different shades of grey in TM 1 and TM 3 and withred and yellow in TM 2. In addition, the earlier TM 3 includes a figurative element depicting two human simple silhouettes connected by their arms and placed above the verbal element.

The contested mark is also a figurative mark composed of a verbal element ‘TOOSTO’ written in slightly stylized black uppercase letters whereas the second letter ‘O’ includes a pictogram-like depiction of a lightening flash in white.

None of the verbal elements in the marks in question have, as such, any straightforward and clear meaning for the majority of the relevant public and are, therefore, distinctive.

A part of the public, may perceive the verbal element of the earlier marks, especially when pronounced, as a reference to the word ‘toto’. This could be then understood differently, since the word ‘toto’ has several meanings. ‘Toto’ is, for example, a small coconut cake in Jamaican cuisine, or a name of an American rock band formed in 1977 in Los Angeles. Toto was also a gorilla that was adopted and raised very much like a human child. None of those meanings have, however, any relation to the goods at issue, and are therefore considered distinctive.

On the other hand, ‘toto’ is a Czech and Slovak pronoun meaning ‘it, this’. Another part of the public may perceive it as an allusion to the Latin term ‘in toto’ meaning in all, complete, in total, whole (https://dictionary.cambridge.org/dictionary/english/toto) or to the word ‘toto’ with its meaning baby, child (e.g. English-speaking part of the public, see https://www.merriam-webster.com/dictionary/toto). If perceived these ways, the verbal elements are rather weak as they would be perceived as hint to the characteristic of the relevant goods (aimed at the kids, being complete) or as mentioned above it will be perceived simply as the pronoun ‘it, this’.

The stylization of the earlier TM 1 and TM 2 is of a purely decorative nature whereas the figurative element of the earlier TM 3 is equally distinctive as the verbal element there.

The contested mark may be perceived by a part of the Italian public as misspelling of the word ‘tosto’ which means mainly without delay or hesitation, promptly, at once, fast. This meaning is underlined by the figurative element of the contested mark, the pictogram-like depiction of a lightening flash. Since this meaning has no relevance to the goods at issue, even if perceived this way, the verbal element as well as the figurative elements is considered distinctive.

None of the marks has an element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their first and last two letters, respectively. However, they differ in the stylization of these characters as well as of their overall stylization. They furthermore differ in the letters placed in the middle of the signs, namely ‘T’ in the earlier marks and ‘OS’ in the contested sign. While, generally, the beginning of words has a greater impact on the consumer, the specific circumstances of the case may allow a different conclusion to be drawn (07/05/2009, T-185/07, CK Creaciones Kennya, EU:T:2009:147, § 45). In the present case, what matters more is that the above mentioned different letter arrangement is equally important and has a great impact on the overall impression given by the signs. Moreover, the contested sign and the TM 3, both have an additional figurative element, where the one in the earlier mark, even if not dominant, is visually striking.

Bearing in mind the abovementioned findings, the earlier TM 1 and TM 2 and the contested mark are visually similar to at most an average degree while the degree of visual similarity between the TM 3 and the contested mark is low.

Aurally, the pronunciation of the signs coincides in the sound of their letters ‘T’ and the last syllable ‘TO’, present identically in both signs. However, due to the letter arrangement of the two marks, the relevant public will pronounce the earlier marks as ‘TO-TTO’ (the second letter of the earlier marks is identical to the preceding letter and as such reinforces the same sound) and the contested mark as ‘TOS-TO’, respectively as ‘TUS-TO’, depending on the pronunciation rules in the parts of the relevant territory. As the figurative elements are not a subject to a phonetic assessment, there is no difference in the assessment between the earlier TM 1, TM 2 and the contested sign and the earlier TM 3 and the contested sign.

Bearing in mind the foregoing, the signs are aurally similar to an average degree in case the contested sign will be pronounced as ‘TOSTO’ and to a lower than average degree when pronounced as ‘TUSTO’.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The contested sign will, due to the figurative element, evoke the association of a lightning flash. Likewise, the earlier sign TM 3 will due to its figurative element evoke a concept of two human (embraced) silhouettes. Moreover, more differences between the marks might be perceived by the part of the public that will associate the marks with the meanings mentioned above. Therefore, as none of the concepts that the signs under comparison evoke is in any way similar to each other, respectively in some cases only one sign will evoke a concept, the marks must be considered not conceptually similar.

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.

According to the opponent, the earlier trade marks has a reputation in the European Union and Spain, respectively, in connection with all the goods and services for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 Item 1: A table composed by the opponent containing (according to the opponent) a summary of information from the invoices and catalogues submitted as Items 2 and 3. It includes invoice number, date (from 02/08/2012 to 08/03/2017) and place where the invoice sent (Croatia, Greece, Ireland, Italy, Slovenia, Spain and Portugal), product code and name, catalogue name and the image of the relevant product.

 Item 2: a) Excerpts from catalogues of accessories such as wallets, multipurpose little bags, waistpacks, scarves, gloves with the title ‘catalogo accesorios’. The catalogues are not dated, but according to the opponent each catalogue makes reference in the first and second number to the year and the third one to the season. The relevant numbers included on the title of the catalogues are 121, 122, 131, 132, 141, 142, 151, 152, 171 and 172. They are in Spanish and English, do not include any reference to the price or the way how to order the relevant goods.

b) Excerpts from catalogues of backpacks with the title ‘catalogo maletines’. The relevant numbers included on the title of the catalogues are 131 and 161. According to the opponent in the first mentioned catalogue there is a picture of a map that specifies the countries where the goods are commercialized, including Spain and Portugal and in the second catalogue on the page 8 on the bottom, ‘there is a specification of the EU countries where the goods are commercialized, including Albania, Bosnia, Bulgaria, Cyprus, Slovenia, Spain, Greece, Ireland, Italy, UK, Portugal, and some others.’ However, the Opposition Division points out that this catalogue is only Spanish and the currency is in $, which is not a currency of any of the EU countries.

c) Excerpts from catalogues of clothing with the title ‘catalogo ropa’ and the relevant numbers according to the opponent are 122, 132, 151, 152 and 161. These catalogues do not include the photos of the products instead they include sketches of the clothing.

According to the opponent some of the catalogues include a picture of a map that specifies the countries where the goods are commercialized. The mentioned maps look for example as follows:

 Item 3: Invoices from the period of the time between 2012 and 2017. The invoices from 2012, 2015, 2016 and 2017 do not include the word ‘totto’, they include only the following logo and are addressed to the distribution partner of the opponent in Spain. The invoices issued in 2013 and 2014 include invoices addressed to the distribution partner of the opponent in Spain, those bear only the following logo Some invoices are addressed from the mentioned distribution partner to third parties in, for example, Greece, Ireland, Italy. Those include either the mark or the following logo in their top part. The Opposition Division notes that the amount of the products is often in small quantities such as 8 pcs, 2 pcs, 1 pcs or similar.

 Item 4: Summary of the decision issued by the Spanish Patent and Trademark Office (SPTO) on January 16, 2018, recognizing that the following Spanish trade marks A-15213456 “TOTTO” (word-device), M-2840550 “TOTTO” (word-device) and A-6212451 “TOTTO” (word-device) enjoy reputation for goods in Class 25.

 Item 5: Extracts of the opponents website in UK (https://www.totto.uk.com/) and Spain (https://www.totto.es/).

 Item 6: a) An extract of the TOTTO´s Facebook profile in Portugal and a photo dated 05/12/2012, which is submitted as a proof that this profile is active since that date. The photo shows that the profile has more than 4 million followers.

b) An extract of the TOTTO´s Facebook profile in Spain and a photo dated 01/11/2012, which is submitted as a proof that this profile is active since that date. The photo shows that the profile has more than 4 million followers.

 Item 7: Several press articles published according to the opponent in Spain and the UK. The articles published in Spain are in Spanish, the translation of the title of each article is provided by the opponent:

- “TOTTO: design and comfort for demanding consumers”, published in La Razon online on 20/05/2014;

- “’Violetta’ and Totto's backpacks take over the return to school” published on www.cincodias.com on 01/09/2014;

- “TOTTO school bags available in the UK for the first time”, published on 21/05/2015, the source is not clear;

- “TOTTO projects massive expansion in Spain” published on FASHION network online on 26/07/2016;

- “TOTTO opens its own sixth store in Madrid” published on FASHION network online on 25/05/2017;

- “Colombia: TOTTO ensures its expansion in Europe with openings in Spain” published on www.america/retail.com/colombia/colombia-totto-asegura-su-expanson-en-europe-con-aperturas-en-espana/, on 27/03/2017);

- TOTTO raises a march in Spain: opens its sixth store in Madrid” published in ‘modaes latinoamerica’ online on 26/05/2016;

 Item 8: Five photos which according to the information provided by the opponent, are from three international fairs in Madrid (Intergift), Barcelona (Expohogar) and Frankfurt in 2015. The photos depict the logos including the verbal element ‘TOTTO’ and stands where mostly backpacks and suitcases are on display.

 Item 9: An Affidavit duly signed on 2017 by D. Julio Jose Seneor, a Colombian citizen, who is the Legal Representative of the opponent. This document is in Spanish and includes information on the sales volume of the goods sold in Spain from 2012 to 2017 as follow:

- 2011-2012: 872.921 Euros

- 2012-2013: 1.596.110 Euros

- 2013-2014: 2.917.435 Euros

- 2014-2015: 4.872.010 Euros

- 2015-2016: 6.597.571 Euros

- 2016-2017: 7.078.299 Euros

These numbers are split between the relevant goods as follows:

The Opposition Division notes that mochillas means backpacks, accesorios – accessories and ropa - clothing. In the affidavit it is also declared that the investment made by the opponent in relation to the advertising is the following:

The affidavit includes also reference to several links where the products bearing ‘TOTTO’ mark could be seen, such as

- Facebook Totto España - https://www.facebook.com/TottoEspana

- Instagram España - https://instagram.com/tottoespana/

- Youtube España

- Twitter - @tottoespana

- www. totto.es

- Amazon España – http://www.amazon.es

- www.modalia.com

- http://www.molaviajar.com/codigo-promocion-totto-espana/

- https://www.elcorteingles.es/totto/papeleria/

- http://interrailtotto.com/bases_legales

- http://www.gestionandohijos.com/tag/totto-espana/

- http://www.multiprecio.com.es/Complementos/Bolsas_de_viaje/29-142-0-9655-1.html#.V_KgVfnhDIU

- http://www.modaes.com/empresa/20160725/las-mochilas-de-la-colombiana-totto-conquistan-espana-veinte-nuevas-tiendas-en-cinco-anos-es.html

- https://storify.com/TottoEspana/nueva-tienda-totto-en-la-puerta-del-sol-de-madrid

- http://mamiconcilia.com/mochilas-personalizadas-totto-lab/

- http://www.lavozdegalicia.es/noticia/vigo/vigo/2016/02/03/nina-dio-vuelta-mundo/0003_201602V3C12995.htm

- http://bureau-vallee.es/159382-mochila-universitario-morral-tocax.html

- http://es.fashionnetwork.com/news/Totto-proyecta-expansion-masiva-en-Espana,717041.html#.V_KtZ_nhDIU

 Item 10: Includes a list of over 1660 sales points which are selling “TOTTO” products in Spain.

 Item 11: Compilation of articles from “El Corte Ingles” which, according to the opponent, reported about the opening of the first European centre of “TOTTO`s customizing backpacks”. All the articles are in Spanish and were published in the following media:

- Cinco días, 02/06/2016;

- La Vanguardia 01/06/2016;

- República 01/06/2016;

- Negocios.com 01/06/2016;

- Lainformación.com 01/06/2016;

- Efe Empresas 01/06/2016;

- El Mundo Financiero 02/06/2016;

- Noticiero Textil 02/06/2016;

- Capital Madrid 02/06/2016;

- Republica.com 01/06/2016;

- Cronicadecantabria.com 01/06/2016;

- Negocios.com 01/06/2016;

- Siglo XXI 01/06/2016;

- Periodista Digital 01/06/2016;

- Interbusca 01/06/2016;

- Informativos Telecinco 01/06/2016;

- Bolsamania 01/06/2016;

- Norbolsa 01/06/2016;

- Expansión.com 01/06/2016;

- Yahoo! España 01/06/2016;

- El Economista.es 01/06/2016;

- Invertia 01/06/2016;

- http://www.eco-viajes.com, de fecha 01/04/2016;

- http://mamiconcilia.com, de fecha 01/04/2016.

An earlier trade mark must have acquired enhanced distinctiveness respectively reputation prior to the time of filing of the contested EUTM application (or any priority date). In the present case, the contested EUTM application was filed on 30/10/2017, hence the earlier marks must have acquired enhanced distinctiveness/reputation prior to this date (and still at the time of the decision).

Enhanced distinctiveness requires recognition of the mark by the relevant public and, in making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

The evidence of enhanced distinctiveness acquired through use must refer to both (i) the relevant geographical area (which is the European Union in the case at hand) and (ii) the relevant goods and/or services (the aforementioned goods and services in Classes 18, 25 and 35 in the present proceedings). The nature, factors, evidence and assessment of enhanced distinctiveness are the same as for reputation although the threshold for a finding of enhanced distinctiveness may be lower.

Preliminary remark regarding the translation of the submitted evidence

A part of the evidence is in Spanish without any translation. The Opposition Division notes that the opponent is not under any obligation to translate the evidence filed with a view to establishing reputation of the earlier sign, unless it is specifically requested to do so by the Office (Article 7(4) EUTMDR in conjunction with Article 24 EUTMIR). Hence it is at the Office’s discretion whether or not to request a translation. In exercising this discretion, the Office balances the interests of both parties while paying attention to the fact that the applicant should be able to understand the meaning of the substantive content of the evidence submitted. In the present case the fact that the translation of a part of the evidence was not submitted did not affect the applicant’s right of defence and in any case it will not cause any detriment to its rights, as will be seen below. Neither it affected the opponent’s rights since the Opposition Division looked into the whole evidence carefully and analysed it with a due care.

Assessment of the evidence

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use, respectively that it enjoys reputation in the relevant territories.

Insofar as the affidavit is concerned, the probative value of this kind of evidence is generally given less weight than independent evidence since it has been drawn up by the interested parties themselves. Even if such statements cannot be considered to have no probative value at all, it is necessary to assess whether the contents of the declarations made are supported by the other items of evidence submitted. In this respect, as regards the turnover figures and figures in relation to the advertising provided in the affidavit, they originate from the interested parties themselves and are not supported by any independent evidence, such as accounting documents or annual reports. Albeit the opponent submitted many invoices from the relevant period, many of them do not include any reference to the verbal element ‘TOTTO’ instead they depict only the following figurative element . Moreover, the amount of the products included in the invoices is often in small quantities such as 8 pcs, 2 pcs, 1 pcs.

Likewise, even if the opponent submitted a list of shop names and addresses in support of its claim that products sold under the earlier marks have been sold in 1660 sales points across Spain, there is no other evidence to prove or suggest that products bearing the earlier marks are actually sold in all the establishments listed.

With respect to many hyperlinks to various websites included in the affidavit, where allegedly further information about the recognition of the earlier marks could be find, the Opposition Division points out that a mere indication of a website does not constitute evidence. The onus of supplying evidence is on the opponent and not on the Office or the applicant. It is clear that the nature of a hyperlink to a website does not allow the content and data to which it is meant to refer to be copied and transmitted as a document so that the other party can access that information. In addition, websites are easily updated, and most do not provide any archive of previously displayed material or display records that enable members of the public to establish precisely when any particular content was published. The authenticity and integrity of the information cited with only a hyperlink to a website cannot, therefore, be verified. Consequently, the submission of links to websites cannot be considered as a valid piece of evidence and cannot be taken into account.

As regards the extracts from the catalogues, many of them are only in Spanish; some are in Spanish and English. The majority of them do not include any reference to the price or the way how to order the relevant goods. Some of them, e.g. a catalogue submitted as a part of the Item 2a, named by the opponent as ‘Backpack 161’ shows the prices in dollars ($), which is not a currency of any of the EU countries. Even if some of the catalogues include a map, which according to the opponent, shows where the products are distributed, this is not supported by further information, such as the contact details of the distributors in the relevant countries, the information on how to order the products and/or where to find the distributors etc.

The submitted parts from the catalogues do not confirm the actual distribution or sale of the relevant products, as they contain no reference regarding commercial transactions, nor do they indicate when, where or to what extent the earlier marks have come to the attention of the public. Without any further and additional evidence, originating from objective sources, it is not clear how many of the catalogues were indeed distributed to the consumers or where the distribution took place.

Regarding the screenshots of the opponent’s websites (Item 5), these do not provide sufficient evidence of the earlier marks’ reputation. Without any further and additional objective evidence, these screenshots do not establish the intensity of the commercial use of the earlier signs, which may be shown by, inter alia, a certain number of visits, emails received via the websites or the volume of interest/business generated. Neither do the screenshots from the opponent’s Facebook pages (Item 6) provide sufficient evidence of the marks recognition. Even if the provided screenshots show the number of likes of the opponent Facebook profiles in Portugal and Spain, they do not provide clear information where and by whom these pages have been accessed, at least some indication of the access by the consumers from the relevant territory would be useful.

The photos (Item 8) taken, according to the opponent, at the international fairs in Madrid, Barcelona and Frankfurt in 2015, are not proof that the respective goods have been effectively commercialised within the relevant markets and the relevant period. They neither contain any reference to what extent the earlier marks have come to the attention of the public. Besides, no further information was given as to the importance and impact of those particular trade fairs.

In relation to the national decision from the Spanish Patent and Trademark Office’s recognizing reputation of three of the opponent’s Spanish trade mark in Spain (Item 4), it must be noted that only one of them, the Spanish trade mark No M 2 840 550 is also a basis in the present proceedings. Moreover, the decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399). Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings. In the present case, the national decision submitted by the opponent consists only of one page and does not give any specific further information to understand on what evidence, facts or reasoning the outcome of this decision is based.

The remaining part of the evidence, such as the articles (Items 7 and 11), proves that there has been a certain degree of media coverage mainly in relation to opponent’s expansion of his business in Spain, however, it does not provide a clear idea on the nature and extent of the use of the earlier marks. Furthermore, even if the opponent mentions for example that it opens its sixth store in Madrid or includes as already mentioned above the list with the distributors in Spain, these figures, are not put into the context of the relevant market and competitors and, therefore, the Opposition Division is unable to establish the market position of the opponent’s goods and services bearing the relevant marks.

Although the evidence submitted might be an indication that the opponent’s marks have been on the Spanish market for some time, it is not enough to prove that the earlier marks have obtained a reputation within the relevant territories.

The evidence submitted does not provide sufficient and clear information, originating from objective sources, about the recognition of the earlier marks. It lacks, for example market survey or any other third-party information that could prove that the opponent’s marks are reputed in the relevant territories for the goods and services invoked.

Despite showing some use of the earlier marks in relation to mainly backpacks, bags, multipurpose bags, at least in Spain, the aforementioned evidence fails to provide any information on the degree of recognition of the trade marks by the relevant public in the relevant territories, including Spain. Hence, it does not meet the threshold to prove either enhanced distinctiveness or the reputation of the earlier marks as it does not contain sufficient information about any other relevant factors, such as the market shares held by the marks, how intensive, geographically widespread and longstanding the use of the mark has been.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks 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 marks must be seen as normal, despite of the presence of the weak element in these marks for a part of the relevant public, in case the element ‘TOTTO’ will be understood as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sabel, EU:C:1997:528, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The contested goods have been found partly identical and partly dissimilar to the opponent’s goods and services. In relation to the relevant goods, the attention of the public at large is average. The earlier mark enjoys an average degree of distinctiveness.

The signs are visually and aurally similar to at most an average degree, mainly due to the presence of the coinciding first and last two letters, respectively. However, the earlier marks include additional letter ‘T’ and the contested sign additional letters ‘O’ and ‘S’, which have no counterparts in the other signs. Furthermore, the signs in comparison are differently stylized and the contested sign and the TM 3 include a figurative element, both clearly perceptible. All these differences disperse a sense of similarity between the signs. Besides, conceptually, the signs are not similar.

Therefore, as commented above, the conflicting signs contain clearly perceivable differences which are sufficient to exclude any likelihood of confusion between the marks. The Opposition Division finds that when being confronted with the conflicting marks, the relevant consumers will instantly spot characteristic double letter ‘TT’ of the earlier marks and the double letter ‘OO’, followed by the letter ‘S’ in the contested sign as well as the graphical differences between signs.

Furthermore, it is noted that 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 their different stylisation, their different letter arrangement as well as by the additional figurative element of the contested sign and in case of TM 3 also by the additional (and different) figurative element are particularly relevant when assessing the likelihood of confusion between the signs at issue.

Considering all the above, and even if a part of the conflicting goods have been found identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

REPUTATION — ARTICLE 8(5) EUTMR

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 above-mentioned 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

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined 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.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition 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.

Since the opponent is the losing party, it 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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Tu Nhi VAN

Renata COTTRELL

Marta 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.