OPPOSITION No B 3 048 114

Tommy Hilfiger Licensing B.V., Danzigerkade 165, 1013 AP Amsterdam, Netherlands (opponent), represented by Chiever BV, Barbara Strozzilaan 201, 1083 HN, Amsterdam, Netherlands (professional representative)

a g a i n s t

Zhichan Yang, C/ Lago de Bañolas, 14, 28980 Parla, Madrid, Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via 69 -4° Of. 412, 28013 Madrid Spain (professional representative).

On 03/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 114 is partially upheld, namely for the following contested goods and services:

Class 9: Optical devices, enhancers and correctors; spectacles; sunglasses.

Class 14: Time instruments; jewellery boxes and watch boxes; jewellery; key rings and key chains, and charms therefor; gemstones, pearls and precious metals, and imitations thereof; chronometric instruments; jewels; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; iridium alloys; osmium alloys; palladium alloys; silver alloys; rhodium alloys; ruthenium alloys; decorative articles [trinkets or jewellery] for personal use; trinkets coated with precious metal; trinkets of bronze; identification bracelets [jewelry]; commemorative boxes of precious metal; boxes of precious metal; commemorative statuary cups made of precious metal; decorative boxes made of precious metal; ceramic discs for use as tokens of value; fancy keyrings of precious metals; objet d’art of enamelled gold; objet d’art of enamelled silver; objet d’art made of precious stones; works of art of precious metal; silver objets d’art; watches.

Class 18: Walking sticks; luggage, bags, wallets and other carriers; umbrellas and parasols; reins for guiding children; shoulder belts; shoulder belts [straps] of leather; chin straps, of leather; toiletry bags sold empty; kid; boxes made of leather; boxes of leather or leatherboard; imitation leather hat boxes; leatherboard; girths of leather; leather laces; straps for soldiers’ equipment; straps made of imitation leather; leather luggage straps; straps for skates; shoulder straps; leather sold in bulk; imitation leather; imitation leather sold in bulk; polyurethane leather; leather and imitations of leather; leather, unworked or semi-worked; leather for harnesses; leather for furniture; leather for shoes; butts [parts of hides]; cases of leather or leatherboard; labels of leather; casings, of leather, for springs; chamois leather, other than for cleaning purposes; harness fittings; trimmings of leather for furniture; leather twist; sheets of leather for use in manufacture; sheets of imitation leather for use in manufacture; moleskin [imitation of leather]; faux fur; semi-worked fur; furs sold in bulk; curried skins; animal skins; cattle skins; fur; worked or semi-worked hides and other leather; industrial packaging containers of leather; furniture coverings of leather; studs of leather; leather cloth; leather straps; goldbeaters’ skin; valves of leather.

Class 25: Headgear; footwear; clothing.

Class 35: Retail store services in the field of clothing; online retail services relating to clothing; retail services in relation to clothing accessories; retail services connected with the sale of clothing and clothing accessories; retail services relating to fake furs; retail services in relation to fashion accessories; retail services in relation to footwear; retail services in relation to clothing; retail services in relation to fabrics; retail services in relation to headgear; wholesale services in relation to footwear; wholesale services in relation to fabrics; retail services in relation to bags; retail services in relation to luggage; wholesale services in relation to bags; wholesale services in relation to luggage; wholesale services in relation to umbrellas; wholesale services in relation to headgear; retail services in relation to umbrellas; wholesale services in relation to clothing; wholesale services in relation to sporting articles; online retail services relating to handbags; retail services relating to furs; mail order retail services for clothing; online retail services relating to luggage.

2. European Union trade mark application No 17 568 221 is rejected for all the above goods and services. It may proceed for the remaining goods and services, namely:

Class 9: Navigation, guidance, tracking, targeting and map making devices; scientific research and laboratory apparatus, educational apparatus and simulators; apparatus, instruments and cables for electricity; scientific and laboratory devices for treatment using electricity; safety, security, protection and signalling devices; diving equipment; information technology and audio-visual, multimedia and photographic devices; recorded content.

Class 14: Meditation beads; copper tokens; metal tokens used for mass transit; monetary coin sets for collecting purposes; gold bullion; misbaha [prayer beads]; coins; collectible coins; commemorative coins; gold bullion coins; non-monetary coins; commemorative shields; identity plates of precious metal; grave markers of precious metal; rosaries; prayer beads; prize cups of precious metals; trophies coated with precious metal alloys; trophies coated with precious metals; trophies made of precious metals; trophies made of precious metal alloys.

Class 18: Saddlery, whips and apparel for animals; tefillin [phylacteries]; rawhide chews for dogs.

Class 35: Business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; retail services in relation to downloadable electronic publications; wholesale services in relation to saddlery; retail services in relation to saddlery; wholesale services in relation to sewing articles.

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 17 568 221 for the sign , namely goods and services in Classes 9, 14, 18, 25 and 35. The opposition is based on European Union trade mark registrations No 138 529 and No 1 212 679, and on Benelux trade mark registration No 979 451, all three for the sign . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 979 451.

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 mark

According to the opponent, the earlier trade mark has a reputation in Belgium, Luxembourg and the Netherlands.

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 07/12/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the Benelux prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps for personal use; perfumery, eau de cologne, toilet water, perfumes, fragrances for personal use, essential oils; cosmetics; make-up products, namely, lip sticks, lip glosses, mascaras, eye shadows, eyeliners, blushes, pressed powders, loose powders, foundations; nail care products, namely, nail polish and nail polish remover; non- medicated toiletries; non-medicated skin care products, namely, cosmetic creams and lotions for skin care, moisturizing creams, facial masks and skin firming creams and lotions; cosmetic preparations for baths and showers, namely, bath oil, bath salts, bath beads and bath crystals, talcum powders for toilet use, hair lotions, shampoos; dentifrices; antiperspirants, deodorants for personal use; shaving articles, namely, shaving soaps, shaving gel and shaving cream, after-shave, after-shave lotions and gels; shoe polish and creams; hair dyes; cosmetics for animals.

Class 9: Photographic, cinematographic and optical apparatus and instruments; optical goods such as spectacles, protective spectacles, spectacle glasses, contact lenses, sunglasses; sunglass products, namely, headstraps, sunglass retainers, eyeglass cases and sunglasses cases, spectacles presentation boxes, spectacles chains and spectacles cords, parts for all aforesaid goods; cameras cases; cases and holders for portable computers and mobile phones; blank audio tapes, blank audio cassettes, blank video tapes, video cameras; blank video cassettes, blank compact discs; compact discs featuring music, blank laser discs, video disks and magnetic optical discs featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; blank magnetic data carriers, blank recording discs; pre-recording discs featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; computers; computer peripheral equipment; recorded computer programs featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; mouse pads; magnetic coded cards featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; compact discs (audio-video) featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; optical compact discs featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; compact disc players, downloadable electronic publications in the nature of books, magazines, newsletters, brochures and catalogues in the fields of fashion, modelling, cosmetics and lifestyles; pocket calculators; video game cartridges; headphones; loudspeakers; communication, telecommunication, telephone and mobile telephone apparatus and instruments; telephones, mobile telephones, communication devices and cases therefore; ringtones [downloadable]; screen savers and screen wallpaper (software); reading tablets and other devices for reading and viewing text; images and audio-visual content, downloadable; software applications (apps), including apps for installation on telephones, mobile telephones and communications and wireless communication devices; telephone handsets, communication and wireless communication devices; bags and cases adapted for holding or carrying telephones, mobile telephones, communications and wireless communications equipment, and other similar accessories for telephones; electronic and computerized personal organizers; computer software for downloading, publishing, displaying, posting, labelling, blogging, sharing or other ways of providing electronic media or information via the Internet or other communication networks; electronic publications provided on-line via databases or via the internet (including web sites).

Class 14: Jewellery, namely, bracelets, necklaces, brooches, rings, earrings, charms, tie tacks, hat ornaments of precious metals, badges of precious metals, buckles for watchstraps; pins being jewellery, cufflinks, key rings (trinkets or fobs); jewellery and precious stones; horological and chronometric instruments, namely, watches, wrist-watches, straps for wrist-watches and watch cases, clocks, chronographs, chronometers, alarm clocks; watches cases; jewellery cases; shoe ornaments of precious metal; precious metals and their alloys.

Class 18: Leather unworked or semi worked and imitations of leather; animal skins; full line of bags, namely, all-purpose sports and athletic bags; overnight bags; book bags; tote bags; travelling bags; backpacks; handbags; luggage, namely suitcases; purses; brief cases; travel bags; duffel bags and cloth shopping bags; beach bags, wheeled shopping bags, school bags; garment bags for travel; straps for luggage; overnight cases; clutch bags; travel kit bags sold empty; suitcases with wheels attached; billfolds; wallets, pocket wallets, change purses, coin purses, key cases, leather credit card cases; combined money and credit card holders; card cases, cosmetic cases sold empty, cases and holders for cosmetic articles; beauty-cases for storing cosmetics; umbrellas, parasols and walking sticks; whips, collars for animals; harness for animals; animal skins, hides; leather trimmings for furniture; gut for making sausages.

Class 24: Fabrics and textile goods not included in other classes, namely, household linen, bed linen, bath linen, bed sheets, pillow shams, pillow cases, blankets, comforters, quilts, bedspreads, bed covers, coasters, duvet covers, duvets, dust ruffles, mattress covers, towels of textile, bath towels, beach towels, travelling rugs, face cloths, shower curtains, table linen, table covers, table cloths, fabric table runners, table napkins of textile, place mats of textile material, curtains of textile, draperies, unfitted fabric furniture covers, fabric flags, handkerchiefs of textile; cloth labels; curtain tie-backs in the nature of textile curtains holders; net curtains; upholstery fabrics, wall hangings of textiles; labels of textile for identifying clothing; labels of textile.

Class 25: Clothing for men, women and children and infants namely, shirts, golf shirts, t-shirts, polo shirts, knit tops, woven tops, sweatshirts, tank tops, sweaters, blouses, jerseys, turtle-necks, shorts, sweatpants, warm-up suits, blazers, sport coats, trousers, jeans, skirts, dresses, wedding dresses, suits, overalls, jumpers, vests, jackets, coats, raincoats, parkas, ponchos, swimwear, bikinis, swim trunks, overcoats, rainwear, wind resistant jackets, clothing for dancing namely leotards and ballet suits, sleepwear, pyjamas, bathrobes, shower caps, chasubles, underwear, lingerie, boxer shorts, belts made of leather (for clothing), ties; headgear namely, hats, wool hats, caps, visors, headbands (clothing), ear muffs (clothing); scarves, shawls, wristbands, cloth bibs; footwear, gym shoes, sneakers, socks, stockings, hosiery, shoes, boots, beach shoes, sandals, slippers; gloves (clothing); suspenders; layettes (clothing); sashes; wet suits for water-skiing; maniples; sleep masks; wedding clothing.

Class 35: Retail store services, and assistance on commercial business in connection with perfumery, cosmetics, clothing, footwear, headgear, textile goods, goods made of leather or imitations of leather, bags, eyewear, jewellery, watches, horological and chronometric instruments, household accessories and articles; the aforesaid services also in connection with franchising; online retail store services by mail order companies in the field of clothing, perfumery, household accessories, cosmetics, watches, jewellery, eyewear, records, compact discs, cassettes, videos, books, art pictures, cards, calendars, posters, prints, stickers and cartoon printed books; administrative services in respect of the closing of franchise agreements for perfumery, cosmetics, clothing, footwear, headgear, textile goods, goods made of leather or imitations of leather, bags, eyewear, jewellery, watches, horological and chronometric instruments, household accessories and articles; assistance in franchised commercial business management; organisation of trade fairs for commercial or advertising purposes; advertising; office functions; aforementioned services also provided via Internet; presentation of goods on communication media, for retail purposes; commercial administration of the licensing of the goods and services of others; promotional services; sales promotion for others; personnel management consultancy; relocation services for businesses; secretarial services; accounting; rental of vending machines; sponsorship search.

The opposition is directed against the following goods and services:

Class 9: Navigation, guidance, tracking, targeting and map making devices; scientific research and laboratory apparatus, educational apparatus and simulators; optical devices, enhancers and correctors; apparatus, instruments and cables for electricity; scientific and laboratory devices for treatment using electricity; safety, security, protection and signalling devices; diving equipment; information technology and audio-visual, multimedia and photographic devices; recorded content; spectacles; sunglasses.

Class 14: Time instruments; jewellery boxes and watch boxes; jewellery; key rings and key chains, and charms therefor; gemstones, pearls and precious metals, and imitations thereof; chronometric instruments; jewels; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; iridium alloys; osmium alloys; palladium alloys; silver alloys; rhodium alloys; ruthenium alloys; decorative articles [trinkets or jewellery] for personal use; trinkets coated with precious metal; trinkets of bronze; identification bracelets [jewelry]; commemorative boxes of precious metal; boxes of precious metal; commemorative statuary cups made of precious metal; decorative boxes made of precious metal; meditation beads; ceramic discs for use as tokens of value; copper tokens; metal tokens used for mass transit; monetary coin sets for collecting purposes; gold bullion; fancy keyrings of precious metals; misbaha [prayer beads]; coins; collectible coins; commemorative coins; gold bullion coins; non-monetary coins; objet d’art of enamelled gold; objet d’art of enamelled silver; objet d’art made of precious stones; works of art of precious metal; silver objets d’art; commemorative shields; identity plates of precious metal; grave markers of precious metal; rosaries; prayer beads; prize cups of precious metals; trophies coated with precious metal alloys; trophies coated with precious metals; trophies made of precious metals; trophies made of precious metal alloys; watches.

Class 18: Saddlery, whips and apparel for animals; walking sticks; luggage, bags, wallets and other carriers; umbrellas and parasols; reins for guiding children; shoulder belts; shoulder belts [straps] of leather; chin straps, of leather; toiletry bags sold empty; kid; boxes made of leather; boxes of leather or leatherboard; imitation leather hat boxes; leatherboard; girths of leather; leather laces; straps for soldiers’ equipment; straps made of imitation leather; leather luggage straps; straps for skates; shoulder straps; leather sold in bulk; imitation leather; imitation leather sold in bulk; polyurethane leather; leather and imitations of leather; leather, unworked or semi-worked; leather for harnesses; leather for furniture; leather for shoes; butts [parts of hides]; cases of leather or leatherboard; labels of leather; tefillin [phylacteries]; casings, of leather, for springs; chamois leather, other than for cleaning purposes; harness fittings; trimmings of leather for furniture; leather twist; sheets of leather for use in manufacture; sheets of imitation leather for use in manufacture; moleskin [imitation of leather]; rawhide chews for dogs; faux fur; semi-worked fur; furs sold in bulk; curried skins; animal skins; cattle skins; fur; worked or semi-worked hides and other leather; industrial packaging containers of leather; furniture coverings of leather; studs of leather; leather cloth; leather straps; goldbeaters’ skin; valves of leather.

Class 25: Headgear; footwear; clothing.

Class 35: Business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; retail store services in the field of clothing; online retail services relating to clothing; retail services in relation to clothing accessories; retail services in relation to downloadable electronic publications; retail services connected with the sale of clothing and clothing accessories; retail services relating to fake furs; retail services in relation to fashion accessories; retail services in relation to footwear; retail services in relation to clothing; retail services in relation to fabrics; retail services in relation to headgear; wholesale services in relation to saddlery; wholesale services in relation to footwear; wholesale services in relation to fabrics; retail services in relation to bags; retail services in relation to luggage; retail services in relation to saddlery; wholesale services in relation to sewing articles; wholesale services in relation to bags; wholesale services in relation to luggage; wholesale services in relation to umbrellas; wholesale services in relation to headgear; retail services in relation to umbrellas; wholesale services in relation to clothing; wholesale services in relation to sporting articles; online retail services relating to handbags; retail services relating to furs; mail order retail services for clothing; online retail services relating to luggage.

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 30/10/2018 the opponent submitted the following evidence:

• Exhibits 1.1, 1.2 and 1.3: extracts from the opponent’s Dutch website and extracts from the websites of the retail stores Selfridges, Galeries Lafayette, KaDeWe, El Corte Inglés and De Bijenkorf showing the opponent’s goods, such as clothing, bags, accessories, footwear, watches and fragrances.

• Exhibit 2: registration certificates of the opponent’s earlier marks.

• Exhibit 3: extracts from the website of ‘pvh’ (Phillips-van Heusen Corporation, the company to which the opponent is affiliated) with a review of the opponent. It states that in 2017 the group made a profit of USD 7.4 billion and that its goods were distributed in more than 100 countries. The brand was honoured by Fast Company on their 2018 list of ‘The World’s Most Innovative Companies’ in the Style section and received the ‘Retail Employer of the Year Award’ at the 2018 World Retail Congress. Extracts from the website ‘geoffreybeenefoundation’ stating that in 2012 the designer Tommy Hilfiger was awarded the Geoffrey Beene Lifetime Achievement Award from the Council of Fashion Designers of America.

• Exhibit 4: an affidavit signed on 25/10/2018 by the IP Legal Counsel of PVH Europe B.V., to which the opponent is affiliated. This document contains information on the history of the opponent and its business trajectory as a global apparel and fashion accessories retail company with a worldwide distribution network. Information on the retail sales figures of the opponent’s goods are also provided.

• Exhibits 5.1, 5.2 and 6: extracts from the opponent’s global website showing the EU countries in which it is possible to shop for the opponent’s products online.

• Exhibits 7, 7.1, 7.2 and 7.3: extracts from the website web.archive.org with examples of major online retailers selling Tommy Hilfiger goods, such as Amazon, ASOS and Zalando.

• Exhibit 8: extracts from the opponent’s Dutch website showing the opponent’s clothing.

• Exhibits 9, 9.1 and 9.2: pictures of Tommy Hilfiger shop fronts and interiors that the opponent indicates are located in Belgium, Czech Republic, Denmark, Germany, Italy, the Netherlands, Finland and the United Kingdom.

• Exhibits 10, 10.1, 10.2, 10.3 and 10.4: pictures of Tommy Hilfiger clothing, headgear, footwear, belts and bags, some taken from the opponent’s Belgian, Dutch and Luxembourgish websites.

• Exhibits 11.1, 11.2 and 11.3: some pages from the opponent’s Men’s and Women’s sportswear catalogues entitled Fall/Winter 2011, 2012, 2014, 2015 and Spring/Summer 2016.

• Exhibits 12.1.1 to 12.8: annual reports from 2010, 2011, 2012, 2013, 2014, 2015, 2016 and 2017 of PVH, the company to which the opponent is affiliated, showing the retail figures of the group.

• Exhibits 13.1 to 13.8: a selection of invoices from 2014, 2015 and 2016 to retail stores, namely El Corte Inglés in Spain; Torfs in Belgium; Bijenkorf in the Netherlands; Zalando, Otto and Amazon in Germany; and TJX in the United Kingdom.

• Exhibits 13.9 to 13.11: extracts from the website web.archive.org with examples of major online retailers selling ‘Tommy Hilfiger’ goods, such as El Corte Inglés, Torfs and Bijenkorf.

• Exhibit 14: undated internal document stating that the opponent’s customers number around six million in their database.

• Exhibits 15 and 17: documents entitled ‘European editorial highlights’ with a collection of advertisements of apparel articles and fashion accessories in European fashion/lifestyle magazines (cover, circulated copies and copy of the advertisement) issued in 2009, 2010, 2015, 2016 and 2017. The magazines include: Material Girl and Look! (Austria), Feeling (Belgium), Eurowoman (Denmark), Marie Claire, Biba and Elle (France), Elle and Vogue (Germany), Elle, Madame Figaro and Instyle (Greece), Irish Country Magazine (Ireland), Posh, Donna Moderna and Marie Claire (Italy), Vogue and Grazia (the Netherlands), Harper’s Bazaar, Pani, Twój Styl and Zwierciadło (Poland), Women’s Health (Portugal), Glamour and Elle (Romania), Corazón TVE, El Pais Semanal, Smoda, Hola, L’Officiel, and Mujer Hoy (Spain), Damernas Värld (Sweden) and Grazia and Women and Home (the United Kingdom).

• Exhibit 16: the media plans for advertisement campaigns for 2010 to 2012 in Belgium, Denmark, Germany, Ireland, Spain, France, Italy, the Netherlands, Austria, Portugal, Finland, Sweden and the United Kingdom.

• Exhibits 18.1 and 18.2: excerpts from ‘Digital IQ Index: Fashion’, ranking Tommy Hilfiger as 9^th in 2016 and 14^th in 2017 among the top worldwide brands in the luxury goods market.

• Exhibit 18.3: an internal document showing the awards obtained by the opponent, such as Millward Brown Brandz 2014 (including an article on ‘Men’s Week’) and 2015. Excerpts from ‘Digital IQ Index: Fashion’ ranking Tommy Hilfiger as 10^th in 2013 and 12^th in 2015.

• Exhibit 19: proof of posting in March 2012 with pictures of billboards on the streets or at bus and tram stops in countries such as Belgium, Denmark, Spain and the Netherlands.

• Exhibit 20: pictures of opponent’s clothing and footwear.

• Exhibit 21: Tommy Hilfiger’s own Wikipedia page and Facebook, Google+, Instagram and Twitter profiles.

• Exhibit 22: extracts of press releases on Tommy Hilfiger’s shows from 2014 to 2017 in different fashion magazines.

• Exhibit 23: Tear sheet from 2017 with information on the profit generated (USD 7.4 billion) and the global presence of the mark.

• Exhibit 24: extracts from the websites gentlemansdivision.com, global.tommy.com, teenvogue.com, mr-mag.com, thedrum.com, and fashionunited.uk showing collaborations with well-known athletes, models and artists, such as Rafael Nadal, Gigi Hadid, The Chainsmokers and Lewis Hamilton, as well as collaborations with Mattel and Formula 1 racing with Mercedes-AMG Petronas Motorsport.

• Exhibit 25: cover of the book American Dreamer published by Tommy Hilfiger on 01/11/2016, with the earlier mark shown on it.

• Exhibit 26: article ‘From Destiny’s Child to Bruno Mars: A Quick History of Stars Rocking Tommy Hilfiger’ published on 02/08/2017 on the website billboard.com showing pictures of several celebrities wearing clothing with the earlier mark, such as Destiny’s Child, TLC, Britney Spears, Gwen Stefani, Aaliyah and Bruno Mars.

• Exhibit 27: extracts from the websites golf-monthly.co.uk, justjared.com and dailymail.co.uk showing pictures of Tommy Hilfiger sponsorships for several sports (Nick Dougherty – golf; Rafael Nadal – tennis; and Lewis Hamilton - Formula 1 racing).

• Exhibit 28: an overview of all the opponent’s trade mark registrations and applications worldwide.

On the basis of the above evidence the Opposition Division concludes that the earlier trade mark has a reputation in Benelux.

As far as the affidavit in Exhibit 4 is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the content of the declaration is supported by the other items of evidence.

The affidavit states that the opponent’s mark has a global distribution network in 115 countries, with more than 1 800 retail stores worldwide, including in all 28 EU countries. Its sales were USD 7.4 billion in 2017. For more than 20 years Tommy Hilfiger has attended Europe’s major international fashion fairs and fashion shows and has published advertisements in high-end fashion and lifestyle magazines. The opponent spent USD 160 million in marketing in 2016 and increased that expenditure to USD 170 million in 2017. These data, coupled with the information contained in the rest of the evidence, especially the advertising material circulated in the Benelux, show that the mark has been promoted intensively in this territory.

These facts and figures are supported by the above evidence. It is clear that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested to by diverse independent sources. The sales figures, the marketing expenditure for the intensive advertising campaigns, intern alia, in Benelux, the market share and the references in the press to its success shown by the evidence all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to clothing, headgear, footwear, belts, bags, luggage, watches, jewellery accessories and glasses whereas there is little reference to the remaining goods in Classes 9, 14 and 18 and no reference to the goods in Classes 3 and 24, nor to the services. This is clear, for example, from the affidavit, sales figures, press clippings and advertisements, where only the above goods are mentioned.

Therefore, the Opposition Division concludes that the mark has a reputation in Benelux for clothing, headgear, footwear, belts, bags, luggage, watches and jewellery accessories and glasses.

b) The signs

Earlier trade marks	Contested sign

The relevant territory is Belgium, Luxembourg and the Netherlands.

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 mark is figurative, with two parallel, horizontal navy blue lines between which there are white (on the left) and red (on the right) rectangles with no vertical borders.

The contested sign is a figurative mark consisting of a navy blue rectangular frame within which there are two squares; the left one white and the right one red. Set against the squares are the verbal elements ‘DOLCE’ and ‘GUSTO’ in standard upper-case letters, separated by a dot.

The verbal elements ‘DOLCE’ and ‘GUSTO’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

Neither of the figurative elements in the signs has any meaning for the relevant public in relation to the goods and services. Therefore, said figurative elements are distinctive within their respective signs.

The marks have no elements that could be considered clearly more distinctive or more dominant (eye-catching) than other elements.

However, 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 signs coincide in the white and red rectangles/squares of the marks, even though the earlier mark has no borders on the sides. The signs also coincide in the navy blue horizontal lines. However, they differ in the width of these lines — which are thin in the contested sign and thick in the earlier mark — and in the absence of vertical blue lines in the earlier mark. The signs also differ in the distinctive verbal elements ‘DOLCE’ and ‘GUSTO’ of the contested sign which have no counterpart in the earlier mark.

Therefore, given the stronger impact of the verbal elements in the contested sign, the signs are visually similar to a low degree.

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, the public in the relevant territory will not associate any meaning with the verbal elements in the contested sign and will perceive in both signs a horizontal rectangular shape formed by navy blue lines and two rectangles or squares; a white one on the left and a red one on the right. Therefore, the marks are similar to an average degree.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) The ‘link’ between the signs

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.

As seen above, the signs are similar to some extent. The inherent distinctive character of the earlier mark is at least normal and the opponent has demonstrated that its mark has acquired an enhanced distinctiveness through intensive use and advertisement. The Opposition Division has concluded above that the mark has a reputation in Benelux for clothing, headgear, footwear, belts, bags, luggage, watches and jewellery accessories and glasses.

The reputed goods in Class 25 are identical to the contested ones in the same Class. In Classes 9, 14 and 18, the reputed goods are identical or similar to some of the contested goods, but some other contested goods are dissimilar to those of the opponent’s reputed goods in Classes 9, 14, 18 and 25.

In particular, the contested optical devices, enhancers and correctors; spectacles; sunglasses in Class 9, are identical or at least similar to the reputed glasses.

With regard to the contested time instruments; jewellery boxes and watch boxes; jewellery; key rings and key chains, and charms therefor; gemstones, pearls and precious metals, and imitations thereof; chronometric instruments; jewels; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; decorative articles [trinkets or jewellery] for personal use; trinkets coated with precious metal; trinkets of bronze; identification bracelets [jewelry]; commemorative boxes of precious metal; boxes of precious metal; commemorative statuary cups made of precious metal; decorative boxes made of precious metal; ceramic discs for use as tokens of value; fancy keyrings of precious metals; objet d’art of enamelled gold; objet d’art of enamelled silver; objet d’art made of precious stones; works of art of precious metal; silver objets d’art; watches in Class 14, although some of these goods have several factors in common, such as nature, purpose, or are even identical, it cannot be called into question that they share at least the same distribution channels, producers and have the same purpose as the reputed watches; jewellery accessories, as they may coincide in nature, purpose, method of use, distribution channels, relevant public and producers, or pertain to the same fashion sector.

With regard to the contested luggage, bags, wallets and other carriers; reins for guiding children; shoulder belts; shoulder belts [straps] of leather; chin straps, of leather; toiletry bags sold empty; boxes made of leather; boxes of leather or leatherboard; imitation leather hat boxes; leather laces; straps for soldiers’ equipment; straps made of imitation leather; leather luggage straps; straps for skates; shoulder straps; cases of leather or leatherboard; labels of leather; casings, of leather, for springs; leather straps in Class 18, although some of these goods have several factors in common with the opponent’s reputed goods in this Class (bags, luggage), (such as nature or purpose), or are even identical, it cannot be called into question that they share, at least, the same distribution channels, producers and public as the reputed bags, luggage, headgear; footwear; clothing, or pertain to the same fashion sector.

As for the contested services, it is considered that retail services (and wholesale services) concerning the sale of particular goods are similar to a low degree to those particular goods. Therefore, the contested services retail store services in the field of clothing; online retail services relating to clothing; retail services in relation to clothing accessories; retail services connected with the sale of clothing and clothing accessories; retail services relating to fake furs; retail services in relation to fashion accessories; retail services in relation to footwear; retail services in relation to clothing; retail services in relation to fabrics; retail services in relation to headgear; wholesale services in relation to footwear; wholesale services in relation to fabrics; retail services in relation to bags; retail services in relation to luggage; wholesale services in relation to bags; wholesale services in relation to luggage; wholesale services in relation to umbrellas; wholesale services in relation to headgear; retail services in relation to umbrellas; wholesale services in relation to clothing; wholesale services in relation to sporting articles; online retail services relating to handbags; retail services relating to furs; mail order retail services for clothing; online retail services relating to luggage are similar to a low degree to the reputed goods.

As regards some of the remaining goods and services, according to case-law, even if no direct connection can be established between the goods covered by the marks since they are dissimilar, an association with the earlier mark remains possible, taking into account the high degree of similarity between the signs and the strong reputation acquired by the earlier mark (25/01/2012, T‑332/10, Viaguara, EU:T:2012:26, § 52; 08/05/2018, T‑721/16, BeyBeni (fig.) / Ray-Ban (fig.) et al., EU:T:2018:264, § 87).

To this extent, the contested walking sticks; umbrellas and parasols in Class 18 can be considered related to the reputed headgear; footwear; clothing, as they might all be purchased as accessories to fashion articles. Therefore, the Opposition Division concludes that a mental ‘link’ between the signs will also be established for these goods.

Furthermore, the reputed jewellery accessories and the contested goods in Class 14 iridium alloys; osmium alloys; palladium alloys; silver alloys; rhodium alloys; ruthenium alloys are all related to or used in the same commercial field, namely the jewellery industry. These contested alloys, although not precious metals, could be used in the production of jewellery. Therefore, the fact that the reputed goods mainly target end consumers, while the contested goods target mainly a professional public that will use them in the manufacturing process, is not conclusive in this case. Jewellery designers, purchasers of raw materials and components for manufacturing jewellery, manufacturers of jewellery, etc. have to select and buy raw materials on a daily basis. These people are all well aware of the marks in the jewellery industry, especially when they are reputed, as in the present case, and will link the contested sign with the reputed earlier mark.

Equally, some of the goods for which the earlier mark has a reputation, namely belts, bags, luggage; headgear; footwear; clothing and the contested goods in Class 18 kid; leatherboard; girths of leather; leather sold in bulk; imitation leather; imitation leather sold in bulk; polyurethane leather; leather and imitations of leather; leather, unworked or semi-worked; leather for harnesses; leather for furniture; leather for shoes; butts [parts of hides]; ; chamois leather, other than for cleaning purposes; harness fittings; trimmings of leather for furniture; leather twist; sheets of leather for use in manufacture; sheets of imitation leather for use in manufacture; moleskin [imitation of leather]; faux fur; semi-worked fur; furs sold in bulk; curried skins; animal skins; cattle skins; fur; worked or semi-worked hides and other leather; industrial packaging containers of leather; furniture coverings of leather; studs of leather; leather cloth; goldbeaters’ skin; valves of leather are all related to or used in the same commercial field, namely the fashion industry. Therefore, the fact that the reputed goods mainly target end consumers, while the contested goods target mainly a professional public that will use them in the manufacturing process, is not conclusive in this case. Fashion designers, purchasers of raw materials and components for manufacturing clothing, footwear and fashion accessories, manufacturers of clothing and footwear, etc., have to select and buy raw materials and components, on a daily basis. These people are all well aware of the marks in the fashion industry, especially when they are reputed, as in the present case, and will link the contested sign with the reputed earlier mark.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested sign in relation to the above goods and services, the relevant consumers will likely associate it with the earlier mark, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

However, the Opposition Division considers that there is no market connection between the reputed goods and the following goods and services:

Class 9: Navigation, guidance, tracking, targeting and map making devices; scientific research and laboratory apparatus, educational apparatus and simulators; apparatus, instruments and cables for electricity; scientific and laboratory devices for treatment using electricity; safety, security, protection and signalling devices; diving equipment; information technology and audio-visual, multimedia and photographic devices; recorded content.

Class 14: Meditation beads; copper tokens; metal tokens used for mass transit; monetary coin sets for collecting purposes; gold bullion; misbaha [prayer beads]; coins; collectible coins; commemorative coins; gold bullion coins; non-monetary coins; commemorative shields; identity plates of precious metal; grave markers of precious metal; rosaries; prayer beads; prize cups of precious metals; trophies coated with precious metal alloys; trophies coated with precious metals; trophies made of precious metals; trophies made of precious metal alloys.

Class 18: Saddlery, whips and apparel for animals; tefillin [phylacteries]; rawhide chews for dogs.

Class 35: Business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; retail services in relation to downloadable electronic publications; wholesale services in relation to saddlery; retail services in relation to saddlery; wholesale services in relation to sewing articles.

The nature of these contested goods and services is so different to any of the reputed goods and the respective market sectors are so far apart that the contested sign is unlikely to bring the earlier mark to the mind of the relevant consumer. These goods and services have a different nature, intended purpose and method of use. Their producers or providers, distribution channels and relevant public are completely divergent. Furthermore, they are neither complementary nor in competition.

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 in relation to the above contested goods and services.

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that the applicant is seeking to ride on the coat-tails of the reputed earlier sign to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation, the marketing effort expended by the opponent to create and maintain the earlier mark’s image. Consumers will establish a link between the marks concerned and transfer the positive image of the reputed earlier mark to the goods and services covered by the contested sign.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to its distinctive character and repute.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

 The applicant has chosen a design that uses the same colour tones, namely navy blue (for lines) and white and red (for squares).

 The contested sign has an identical layout, where the white and red squares of equal sizes are positioned on the left and the right respectively, and meet exactly in the middle of the sign. The navy blue lines are also parallel and of equal height. The colour shades are identical or highly similar, that is to say the red, white and navy blue tints are all the same.

 The above can hardly be a coincidence.

 The applicant has chosen his sign with the sole intention of benefiting from the reputation and prestige of the opponent’s mark in order to enjoy the extensive marketing effort expended by the opponent.

Having examined the opponent’s arguments and the evidence submitted to prove the reputation of the earlier mark, and taking into account the degree of similarity between the signs, the Opposition Division is of the opinion that there is a likelihood that the contested sign will, for the consumer in Benelux, bring to mind the earlier mark. The contested sign will then take unfair advantage of, or be detrimental to, the distinctive character of the earlier mark.

According to the Court of Justice of the European Union as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36).

On the basis of the above, the Opposition Division concludes that the use of the contested sign would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

The opponent also argues that use of the contested sign would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested sign would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods and services:

Class 9: Optical devices, enhancers and correctors; spectacles; sunglasses.

Class 14: Time instruments; jewellery boxes and watch boxes; jewellery; key rings and key chains, and charms therefor; gemstones, pearls and precious metals, and imitations thereof; chronometric instruments; jewels; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; iridium alloys; osmium alloys; palladium alloys; silver alloys; rhodium alloys; ruthenium alloys; decorative articles [trinkets or jewellery] for personal use; trinkets coated with precious metal; trinkets of bronze; identification bracelets [jewelry]; commemorative boxes of precious metal; boxes of precious metal; commemorative statuary cups made of precious metal; decorative boxes made of precious metal; ceramic discs for use as tokens of value; fancy keyrings of precious metals; objet d’art of enamelled gold; objet d’art of enamelled silver; objet d’art made of precious stones; works of art of precious metal; silver objets d’art; watches.

Class 18: Walking sticks; luggage, bags, wallets and other carriers; umbrellas and parasols; reins for guiding children; shoulder belts; shoulder belts [straps] of leather; chin straps, of leather; toiletry bags sold empty; kid; boxes made of leather; boxes of leather or leatherboard; imitation leather hat boxes; leatherboard; girths of leather; leather laces; straps for soldiers’ equipment; straps made of imitation leather; leather luggage straps; straps for skates; shoulder straps; leather sold in bulk; imitation leather; imitation leather sold in bulk; polyurethane leather; leather and imitations of leather; leather, unworked or semi-worked; leather for harnesses; leather for furniture; leather for shoes; butts [parts of hides]; cases of leather or leatherboard; labels of leather; casings, of leather, for springs; chamois leather, other than for cleaning purposes; harness fittings; trimmings of leather for furniture; leather twist; sheets of leather for use in manufacture; sheets of imitation leather for use in manufacture; moleskin [imitation of leather]; faux fur; semi-worked fur; furs sold in bulk; curried skins; animal skins; cattle skins; fur; worked or semi-worked hides and other leather; industrial packaging containers of leather; furniture coverings of leather; studs of leather; leather cloth; leather straps; goldbeaters’ skin; valves of leather.

Class 25: Headgear; footwear; clothing.

Class 35: Retail store services in the field of clothing; online retail services relating to clothing; retail services in relation to clothing accessories; retail services connected with the sale of clothing and clothing accessories; retail services relating to fake furs; retail services in relation to fashion accessories; retail services in relation to footwear; retail services in relation to clothing; retail services in relation to fabrics; retail services in relation to headgear; wholesale services in relation to footwear; wholesale services in relation to fabrics; retail services in relation to bags; retail services in relation to luggage; wholesale services in relation to bags; wholesale services in relation to luggage; wholesale services in relation to umbrellas; wholesale services in relation to headgear; retail services in relation to umbrellas; wholesale services in relation to clothing; wholesale services in relation to sporting articles; online retail services relating to handbags; retail services relating to furs; mail order retail services for clothing; online retail services relating to luggage.

The opposition is not successful insofar as the remaining services are concerned, namely:

Class 9: Navigation, guidance, tracking, targeting and map making devices; scientific research and laboratory apparatus, educational apparatus and simulators; apparatus, instruments and cables for electricity; scientific and laboratory devices for treatment using electricity; safety, security, protection and signalling devices; diving equipment; information technology and audio-visual, multimedia and photographic devices; recorded content.

Class 14: Meditation beads; copper tokens; metal tokens used for mass transit; monetary coin sets for collecting purposes; gold bullion; misbaha [prayer beads]; coins; collectible coins; commemorative coins; gold bullion coins; non-monetary coins; commemorative shields; identity plates of precious metal; grave markers of precious metal; rosaries; prayer beads; prize cups of precious metals; trophies coated with precious metal alloys; trophies coated with precious metals; trophies made of precious metals; trophies made of precious metal alloys.

Class 18: Saddlery, whips and apparel for animals; tefillin [phylacteries]; rawhide chews for dogs.

Class 35: Business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; retail services in relation to downloadable electronic publications; wholesale services in relation to saddlery; retail services in relation to saddlery; wholesale services in relation to sewing articles.

The opponent has also based its opposition on European Union trade mark registrations No 138 529 and No 1 212 679. Since registration No 138 529 is identical to the one that has been compared and covers a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no risk of injury exists with respect to those goods and services.

Registration No 1 212 679 also covers goods in Classes 16 and 28. Since the evidence for reputation submitted for all the earlier marks does not succeed in establishing that the trade mark has a reputation for goods in Classes 16 and 28, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no risk of injury exists with respect to those goods and services.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Benelux trade mark registration No 979 451 and European Union trade mark registration No 1 212 679.

a) The goods and services

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

Benelux trade mark registration No 979 451

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps for personal use; perfumery, eau de cologne, toilet water, perfumes, fragrances for personal use, essential oils; cosmetics; make-up products, namely, lip sticks, lip glosses, mascaras, eye shadows, eyeliners, blushes, pressed powders, loose powders, foundations; nail care products, namely, nail polish and nail polish remover; non- medicated toiletries; non-medicated skin care products, namely, cosmetic creams and lotions for skin care, moisturizing creams, facial masks and skin firming creams and lotions; cosmetic preparations for baths and showers, namely, bath oil, bath salts, bath beads and bath crystals, talcum powders for toilet use, hair lotions, shampoos; dentifrices; antiperspirants, deodorants for personal use; shaving articles, namely, shaving soaps, shaving gel and shaving cream, after-shave, after-shave lotions and gels; shoe polish and creams; hair dyes; cosmetics for animals.

Class 9: Photographic, cinematographic and optical apparatus and instruments; optical goods such as spectacles, protective spectacles, spectacle glasses, contact lenses, sunglasses; sunglass products, namely, headstraps, sunglass retainers, eyeglass cases and sunglasses cases, spectacles presentation boxes, spectacles chains and spectacles cords, parts for all aforesaid goods; cameras cases; cases and holders for portable computers and mobile phones; blank audio tapes, blank audio cassettes, blank video tapes, video cameras; blank video cassettes, blank compact discs; compact discs featuring music, blank laser discs, video disks and magnetic optical discs featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; blank magnetic data carriers, blank recording discs; pre-recording discs featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; computers; computer peripheral equipment; recorded computer programs featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; mouse pads; magnetic coded cards featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; compact discs (audio-video) featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; optical compact discs featuring topics in the fields of fashion, modelling, cosmetics and lifestyles; compact disc players, downloadable electronic publications in the nature of books, magazines, newsletters, brochures and catalogues in the fields of fashion, modelling, cosmetics and lifestyles; pocket calculators; video game cartridges; headphones; loudspeakers; communication, telecommunication, telephone and mobile telephone apparatus and instruments; telephones, mobile telephones, communication devices and cases therefore; ringtones [downloadable]; screen savers and screen wallpaper (software); reading tablets and other devices for reading and viewing text; images and audio-visual content, downloadable; software applications (apps), including apps for installation on telephones, mobile telephones and communications and wireless communication devices; telephone handsets, communication and wireless communication devices; bags and cases adapted for holding or carrying telephones, mobile telephones, communications and wireless communications equipment, and other similar accessories for telephones; electronic and computerized personal organizers; computer software for downloading, publishing, displaying, posting, labelling, blogging, sharing or other ways of providing electronic media or information via the Internet or other communication networks; electronic publications provided on-line via databases or via the internet (including web sites).

Class 14: Jewellery, namely, bracelets, necklaces, brooches, rings, earrings, charms, tie tacks, hat ornaments of precious metals, badges of precious metals, buckles for watchstraps; pins being jewellery, cufflinks, key rings (trinkets or fobs); jewellery and precious stones; horological and chronometric instruments, namely, watches, wrist-watches, straps for wrist-watches and watch cases, clocks, chronographs, chronometers, alarm clocks; watches cases; jewellery cases; shoe ornaments of precious metal; precious metals and their alloys.

Class 18: Leather unworked or semi worked and imitations of leather; animal skins; full line of bags, namely, all-purpose sports and athletic bags; overnight bags; book bags; tote bags; travelling bags; backpacks; handbags; luggage, namely suitcases; purses; brief cases; travel bags; duffel bags and cloth shopping bags; beach bags, wheeled shopping bags, school bags; garment bags for travel; straps for luggage; overnight cases; clutch bags; travel kit bags sold empty; suitcases with wheels attached; billfolds; wallets, pocket wallets, change purses, coin purses, key cases, leather credit card cases; combined money and credit card holders; card cases, cosmetic cases sold empty, cases and holders for cosmetic articles; beauty-cases for storing cosmetics; umbrellas, parasols and walking sticks; whips, collars for animals; harness for animals; animal skins, hides; leather trimmings for furniture; gut for making sausages.

Class 24: Fabrics and textile goods not included in other classes, namely, household linen, bed linen, bath linen, bed sheets, pillow shams, pillow cases, blankets, comforters, quilts, bedspreads, bed covers, coasters, duvet covers, duvets, dust ruffles, mattress covers, towels of textile, bath towels, beach towels, travelling rugs, face cloths, shower curtains, table linen, table covers, table cloths, fabric table runners, table napkins of textile, place mats of textile material, curtains of textile, draperies, unfitted fabric furniture covers, fabric flags, handkerchiefs of textile; cloth labels; curtain tie-backs in the nature of textile curtains holders; net curtains; upholstery fabrics, wall hangings of textiles; labels of textile for identifying clothing; labels of textile.

Class 25: Clothing for men, women and children and infants namely, shirts, golf shirts, t-shirts, polo shirts, knit tops, woven tops, sweatshirts, tank tops, sweaters, blouses, jerseys, turtle-necks, shorts, sweatpants, warm-up suits, blazers, sport coats, trousers, jeans, skirts, dresses, wedding dresses, suits, overalls, jumpers, vests, jackets, coats, raincoats, parkas, ponchos, swimwear, bikinis, swim trunks, overcoats, rainwear, wind resistant jackets, clothing for dancing namely leotards and ballet suits, sleepwear, pyjamas, bathrobes, shower caps, chasubles, underwear, lingerie, boxer shorts, belts made of leather (for clothing), ties; headgear namely, hats, wool hats, caps, visors, headbands (clothing), ear muffs (clothing); scarves, shawls, wristbands, cloth bibs; footwear, gym shoes, sneakers, socks, stockings, hosiery, shoes, boots, beach shoes, sandals, slippers; gloves (clothing); suspenders; layettes (clothing); sashes; wet suits for water-skiing; maniples; sleep masks; wedding clothing.

Class 35: Retail store services, and assistance on commercial business in connection with perfumery, cosmetics, clothing, footwear, headgear, textile goods, goods made of leather or imitations of leather, bags, eyewear, jewellery, watches, horological and chronometric instruments, household accessories and articles; the aforesaid services also in connection with franchising; online retail store services by mail order companies in the field of clothing, perfumery, household accessories, cosmetics, watches, jewellery, eyewear, records, compact discs, cassettes, videos, books, art pictures, cards, calendars, posters, prints, stickers and cartoon printed books; administrative services in respect of the closing of franchise agreements for perfumery, cosmetics, clothing, footwear, headgear, textile goods, goods made of leather or imitations of leather, bags, eyewear, jewellery, watches, horological and chronometric instruments, household accessories and articles; assistance in franchised commercial business management; organisation of trade fairs for commercial or advertising purposes; advertising; office functions; aforementioned services also provided via Internet; presentation of goods on communication media, for retail purposes; commercial administration of the licensing of the goods and services of others; promotional services; sales promotion for others; personnel management consultancy; relocation services for businesses; secretarial services; accounting; rental of vending machines; sponsorship search.

European Union trade mark registration No 1 212 679

Class 9: Eyeglasses, sunglasses & eyeglass frames.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks.

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

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 35: Business management services with respect to the commercialisation of retail stores ao in the field of fashion, fashion accessories and optical products.

The remaining contested goods and services are the following:

Class 9: Navigation, guidance, tracking, targeting and map making devices; scientific research and laboratory apparatus, educational apparatus and simulators; apparatus, instruments and cables for electricity; scientific and laboratory devices for treatment using electricity; safety, security, protection and signalling devices; diving equipment; information technology and audio-visual, multimedia and photographic devices; recorded content.

Class 14: Meditation beads; copper tokens; metal tokens used for mass transit; monetary coin sets for collecting purposes; gold bullion; misbaha [prayer beads]; coins; collectible coins; commemorative coins; gold bullion coins; non-monetary coins; commemorative shields; identity plates of precious metal; grave markers of precious metal; rosaries; prayer beads; prize cups of precious metals; trophies coated with precious metal alloys; trophies coated with precious metals; trophies made of precious metals; trophies made of precious metal alloys.

Class 18: Saddlery, whips and apparel for animals; tefillin [phylacteries]; rawhide chews for dogs.

Class 35: Business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; retail services in relation to downloadable electronic publications; wholesale services in relation to saddlery; retail services in relation to saddlery; wholesale services in relation to sewing articles.

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.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services 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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will vary from average to high.

c) The signs

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

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 has a reputation in Benelux 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 evidence submitted to support this claim has already been examined above under the grounds of Article 8(5) EUTMR and it was concluded that the trade mark has a reputation for clothing, headgear, footwear, belts, bags, luggage, watches, jewellery accessories and glasses.

Therefore, the evidence does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use for any other goods or services.

Consequently, the earlier mark has acquired a high degree of distinctiveness through its reputation for clothing, headgear, footwear, belts, bags, luggage, watches, jewellery accessories and glasses.

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

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 goods and services are assumed to be identical and target both the public at large and professionals whose degree of attention will vary from average to high.

The signs under comparison are visually similar to a low degree and conceptually similar to an average degree, as the contested sign contains additional verbal elements. The presence in the contested sign of the verbal elements ‘DOLCE’ and ‘GUSTO’ will create a different overall impression between the signs. The coincidence in only the colour disposition is not sufficient to counteract the differences in the marks. Therefore, the Opposition Division finds that the similarities are not sufficient to find a likelihood of confusion between the earlier trade mark and the contested sign.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as founded under Article 8(1)(b) EUTMR.

Likewise, even considering that the earlier mark enjoys an enhanced distinctiveness due to reputation for some of its goods, the outcome of no likelihood of confusion remains the same.

The opponent has also based its opposition on European Union trade mark registration No 138 529. Since this mark is identical to the ones that have been compared and covers a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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

The Opposition Division

Claudia ATTINA

Loreto URRACA LUQUE

Biruté SATAITE-GONZALEZ

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.