OPPOSITION No B 3 045 633

Numero 8 S.r.l., Via Copernico 14, 30020, Noventa di Piave (VE), Italy (opponent), represented by GLP S.r.l., Viale Europa Unita, 171, 33100, Udine (UD), Italy (professional representative)

a g a i n s t

Dennis Hauck, Ostpreußenstrasse 89, 81927 München, Germany (applicant), represented by Eversheds Sutherland (Germany) LLP, Brienner Straße 12, 80333

München, Germany (professional representative).

On 13/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 045 633 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 519 224 , namely against all the goods in Class 25. The opposition is based on European Union trade mark registration No 4 213 906 . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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, headgear, footwear.

The contested goods are the following:

Class 25: Footwear, clothing, headgear.

Footwear, clothing and headgear are identically contained in both lists of goods.

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 will be average.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. In the contested sign, there is a verbal element ‘MUSIC’ in the bottom right corner of the sign that is barely perceptible. As this element is likely to be disregarded by the relevant public, it will not be taken into consideration.

The triangle contained in both marks is a basic geometrical symbol with no particular stylisation (since it is depicted in a simple straight black line). As such, this element is weak. This is corroborated by the fact that a triangle depicted in straight black lines is a common laundry symbol used on the labels of clothing and other fashion articles to indicate whether and how a particular item can be bleached (an empty triangle allowing any type of bleaching agents).

The cross-like element of the earlier mark is also a basic geometrical figure merely consisting of two intersecting lines. It might remind the public of a cross usually made in lists or forms to choose the applicable option, or of the letter ‘X’ or of a symbol for prohibition (e.g. a triangle with a cross on it means ‘do not bleach’ on a label of clothing). Consequently, this element is considered weak as well.

The stylised verbal element ‘SAYWHAT’ of the contested sign will be understood by the English-speaking public in the EU as the English phrase ‘say what’ used to express surprise. It has no clear meaning in relation to the relevant goods. For the remaining part of the public this element has no meaning. In either case, the element is distinctive.

The marks have no element that could be considered clearly more dominant (visually eye-catching) than other elements. In the case of the contested sign, the size of the triangle is not so significant that it would clearly dominate the whole mark and overshadow the element ‘SAYWHAT’ which has also a considerable size.

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). Consequently, the verbal element ‘SAYWHAT’ has a stronger impact than the triangle in the contested sign.

Visually, the signs coincide in the image of a triangle which is however weak. The marks differ in the cross symbol of the earlier mark and the stylised verbal element ‘SAYWHAT’ of the contested sign (which has a stronger impact being a verbal element).

Therefore, the signs are visually similar only to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, there is nothing that would link the marks when they are pronounced. The Opposition Division cannot agree with the opponent that the triangle in both marks will be pronounced as ‘DELTA’ (i.e. as the Greek letter) and there would, therefore, be an aural similarity between the marks. In the context of the whole earlier mark and of the whole contested sign, and also in the context of the relevant goods in Class 25, there is nothing that would suggest to the consumers that they should perceive the triangle precisely as the Greek letter ‘delta’ and pronounce it accordingly. The public will rather perceive the element only as a geometrical symbol of a triangle which cannot be pronounced.

The contested sign will be pronounced as ‘SAYWHAT’ whereas the earlier mark will either be perceived as a purely figurative mark consisting of a triangle and a cross (and thus will not be pronounced) or will be pronounced as ‘X’ (by reference to the cross). In the former case, it is not possible to compare the marks aurally. In the latter case, the signs do not aurally coincide in any element and are, therefore, not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both marks will be associated with the weak concept of a triangle. However, they differ in the other concepts of the marks, namely the cross or the single letter ‘X’ in the earlier mark and, for the English-speaking public, the element ‘SAYWHAT’. On the whole, the signs are conceptually similar only to a low 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 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 mark enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with all the relevant goods in Class 25. 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:

 Enclosure 1: Overview of the different registrations for the earlier mark worldwide.

 Enclosure 2: Undated internal document with a list of mono-brand stores in Italy, a list of countries where there are distributors or authorized sellers and a list of countries under the title ‘E-commerce’.

 Enclosure 3: Three print-outs from the websites of three on-line retailers offering the opponent’s clothing and footwear. The goods are identified for example as ‘SUN68 Polo’, ‘SUN68 T-Shirt’ or ‘SUN68 Sneakers’ but on some of them the earlier trade mark can be seen (often in a very small size). One print-out is dated outside the relevant period and two are undated.

 Enclosure 4: Dozens of invoices for the sale of mostly clothing articles to clients in different EU countries for the total amount in the area of hundreds of thousands of euros, dated between 2007 and 2017. There is the sign in the heading of the invoices.

 Enclosure 5: Undated print-out from the opponent’s website www.sun68.com showing the earlier mark.

 Enclosure 6: Undated print-out from the opponent’s profile on Facebook titled ‘SUN68.official’, showing the earlier mark and the mark ‘SUN68’.

 Enclosure 7: Undated print-out from the opponent’s profile on Instagram titled ‘SUN68’, showing the earlier mark and the mark ‘SUN68’ together with various polo shirts.

 Enclosure 8: Internal document with an overview of sales volumes for the years 2007-2018, in the area of tens of millions of euros.

 Enclosure 9: Internal document with information on advertising expenses for the years 2012-2017 and documents from press events in 2015 and 2018 (in this case after the relevant period) where clothing articles, including the opponent’s ones, were presented to specialised public. The earlier trade mark is shown in connection with the goods.

 Enclosure 10: Dozens of advertisements and articles from magazines and internet websites concerning the opponent’s clothing and footwear. The documents mostly show either the marks ‘SUN68’ and or they do not clearly show any mark at all. The earlier mark is shown only on a few occasions. The documents are dated 2012-2017.

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.

It transpires from the evidence that the opponent’s primary brand used for its goods is ‘SUN68’ and that the earlier trade mark is used rather as an ancillary trade mark. It is not very clear from the evidence whether the earlier mark is used for all the goods or only some of them. It follows that the public would be acquainted more with the trade mark ‘SUN68’ than with the earlier trade mark.

In addition, several important documents, namely enclosures 2 and 8 and the first part of enclosure 9, containing for example the sales volumes or advertising expenditures, are only in the form of internal documents without any accompanying evidence or sworn declaration. This means that their probative value is low.

Moreover, most of the evidence concerns only clothing whereas there is not much evidence relating to footwear and no clear evidence concerning headgear.

On the whole, the opponent did prove that the earlier trade mark was used to some extent on the market. However, it failed to prove a sufficient degree of recognition of the earlier mark by the public that would warrant the finding of enhanced distinctiveness in the present case.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average.

e) Global assessment, other arguments and conclusion

The goods are identical. The earlier trade mark’s degree of distinctiveness is lower than average. The degree of attention of the relevant public, namely the public at large, will be average.

The marks are visually and conceptually similar only to a low degree whereas they are not similar aurally. The only similarity between the marks lies in the image of a triangle which is a weak element. Consequently, this similarity is not sufficient to cause likelihood of confusion on the part of the public and the remaining elements of the marks are sufficient for the public to tell the marks apart.

In particular, there is no likelihood of association and the public is unlikely to perceive the contested sign as a sub-brand of the earlier mark, as claimed by the opponent. The weakness of the common element argues strongly against such a perception. The public will not attribute a common commercial origin to goods whose trade marks both contain a simple triangle and, at the same time, feature other different elements.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, 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

Victoria DAFAUCE MENENDEZ

Vít MAHELKA

Cindy BAREL

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.