OPPOSITION No B 3 052 564

Tristate Trinovation IP S.à.r.l., 70 Route d'Esch, 1470 Luxembourg, Luxembourg (opponent), represented by Bugnion S.p.A., Via di Corticella, 87, 40128 Bologna, Italy (professional representative)

a g a i n s t

Lydia Gröbner, Grumbacher Str. 2a, 01723 Wilsdruff, Germany (applicant), represented by Leopold Joachim Gruner, George-Bähr-Straße 18, 01069 Dresden, Germany (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 564 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 612 714 for the figurative mark . The opposition is based on European Union trade mark registration No 3 785 731 for the word mark ‘C.P. COMPANY’ and Italian trade mark registration No 1 021 547 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

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

1. The goods

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

Class 25: Articles of clothing, footwear and headgear.

The contested goods are the following:

Class 18: Dog leashes; dog collars; coats for dogs; dog shoes; dog clothing; dog parkas; dog bellybands.

Class 20: Dog beds; dog baskets; dog kennels; portable kennels.

Class 24: Sheets [textile].

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 18

The contested dog leashes; dog collars; coats for dogs; dog shoes; dog clothing; dog parkas; dog bellybands are goods which are specifically designed for animals or that do not have a degree of aesthetic complementarity with the opponent’s goods in Class 25. The opponent claims that it is ‘quite common to find pet apparel stores selling clothing items which are identical to the ones addressed to human beings’ and submits some evidence in support of this argument. Even if certain items of dog clothing have a design that could recall the kind of items addressed to human beings, the fact remains that they are specially tailor-made for pets. These compared goods have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

Contested goods in Class 20

The contested goods in this class do not have anything in common with any of the opponent’s goods in Class 25. In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

Contested goods in Class 24

The main point of contact between sheets [textile] in Class 24 and articles of clothing, footwear and headgear in Class 25 is that they are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing, footwear and headgear are meant to be worn by people, for protection and/or fashion, whereas sheets [textile] are mainly for household purposes. Therefore, their method of use is different. Moreover, they have different distribution channels and sales outlets and are not usually manufactured by the same undertaking. Therefore, sheets [textile] are considered dissimilar to articles of clothing, footwear and headgear.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade marks were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

The Opposition Division will proceed in analysing the other ground invoked by the opponent, namely Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

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

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

• The signs must be either identical or similar.

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

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the 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.

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks on which the opposition is based, namely European Union trade mark registration No 3 785 731 and Italian trade mark registration No 1 021 547, have a reputation in the European Union and Italy, respectively.

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 18/12/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union and in Italy prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 25: Articles of clothing, footwear and headgear.

The opposition is directed against the following goods, which have been found dissimilar under Article 8(1)(b) EUTMR:

Class 18: Dog leashes; dog collars; coats for dogs; dog shoes; dog clothing; dog parkas; dog bellybands.

Class 20: Dog beds; dog baskets; dog kennels; portable kennels.

Class 24: Sheets [textile].

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 17/10/2018 the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• A list of advertisements published in Italian, United Kingdom, German, French and Spanish magazines and newspapers such as, for instance, Gioia®; GQ®, Balck Book® and Esquire®. The documents correspond to the period 1993 - 2015 and are showing the opponent’s trademarks in relation to the goods for which reputation is claimed.

• A catalogue displaying several clothing articles corresponding to the period 2012 -2013.

• A series of articles published on magazines and newspapers concerning the opponent’s trade mark. In specific:

• An article published in 1999 on the Italian Magazine ‘MF’ mentioning the trade mark ‘C.P. COMPANY’. Contrary to the opponent’s assertions, it is not possible to find reference of the fact that the opponent’s company is listed in the stock exchange index ‘Ftse Mib’, among other enterprises in the Fashion Field. Specifically, ‘C.P. Company’ is not mentioned within the chart named ‘I titoli del Mib tessile e abbigliamento’ but only in a list, among other several brands of the fashion industry.

• An interview to the president of ‘C.P. COMPANY’ published in 2007 on the UK magazine ‘Sportswear’. In particular, it is mentioned that the president of the company aims to make the brand ‘C.P. COMPANY’ as famous as Ferrari®.

• An article in French published in LePoint on the president of ‘C.P. COMPANY’. The opponent failed to provide a translation of the submitted document. However, the article advertises some of the opponent’s products and explains the history of the company.

• An article published in the Italian newspaper ‘Il Sole 24 Ore’ in 2011. The opponent’s translated the title as ‘C.P. Company is ready to take over Europe’ and refers to an interview to the president of the opponent’s company.

• A screenshot dated 2015, of the Italian website ‘Pambianco News’ displaying the title ‘CP Company diventa Cinese’ (translated by the opponent as ‘CP Company becomes Chinese’). The opponent provided the website link for accessing to the article and also a partial translation of it.

• An article in Italian. There is no evidence as to where this article was published, however the opponent provided a web link to access the article. According to the translation submitted, the article refers to 2015 and to celebrations made in occasion of the 40^th year of the opponent’s company.

• Press review of June – July 2016 containing several articles (partially translated) published in magazines and newspaper in Italy, France, UK and Germany. The provided set of documents mainly shows the opponent’s trademark promoted throughout articles, which describes different kind of clothing or the new collections (e.g. the articles in Pambianco of 14/06/2016 or Highsnobiety of 23/06/2016). Other articles included in the press review refer to the recent market strategies of the opponent (e.g. ‘C.P. Company: research make us win’ on the Italian News Affari e Finanza and Repubblica of 27/06/2016 and ‘C.P. Company relaunches from New York’ in MF Fashion of 14/07/2016).

• A series of charts displaying the turnover generated in, inter alia, different countries of the European Union during the period 2016 – 2018 and referring to limited amounts.

• A document reporting the presence of the brand ‘C.P. Company’ in the social media. The evidence displays a limited amount of followers and users reached in the period 2017 – 2018. In addition, some influencers and spontaneous images generated by fans are shown. Finally, the document reports the “digital press coverage” by showing three printouts of articles promoting clothing or mentioning the trademark ‘C.P. Company’ in relation to the presentation of a project.

• A list of ‘C.P. Company’ trade marks owned by the opponent.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks have reputation in the relevant territories.

Specifically, several relevant facts must be considered in the assessment of reputation, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 25, 27).

In the instant case, the advertisements campaign during the period 1993 to 2016 shows use in the market of the trade mark ‘C.P. COMPANY’ in relation to articles of clothing, footwear and headgear.

In this regard, however, it must be stressed that promotional activities will usually not be sufficient on their own for establishing that the earlier mark has indeed acquired a reputation. Specifically, reference to promotion or advertising do not provide per se data concerning the actual public’s knowledge of the trade mark.

However, and in order to assess the degree of awareness of the opponent’s marks, the documentation needs to be assessed in conjunction with the other evidence. In particular, with (i) the documents reporting the social media presence of its mark and (ii) the charts displaying the turnover generated by the sales of goods sold under the trade mark ‘C.P. Company’.

As far as the data concerning the social media presence are concerned, it must be stressed that there is no clear reference to the territory of audience. At any rate, even assuming that the data refer only to Italy and the European Union, still, the number of followers and likes on Instagram® and Facebook® appears too limited. Finally, the submissions only refer to the years 2017 – 2018.

In relation to the turnover data, some charts reporting economic figures were submitted. However, the opponent failed to provide some explanation concerning the origin of such documentation (e.g. an extract of the annual report). In this regard, it must be stressed that information deriving directly from the opponent is unlikely to be enough on its own, especially if it is of an unofficial character and lacks objective confirmation, as for example when the opponent submits data and figures of unknown origin.

In addition, it is not possible to retrieve from the data provided the kind of items sold and under which trade mark. Moreover, the sales figures provided are limited, especially taking into account the kind of product commercialized by the opponent (i.e. mass consumption goods which are not particularly expensive). Finally, the subject data only refers to the period 2016 – 2018.

As far as the articles from newspapers and magazines are concerned, it cannot be neglected that the press dedicated some space to the opponent’s brand ‘C.P. COMPANY’. However, the subject articles have mostly an informative value in relation to the change of ownership of the company or to their future market strategies, but lacks of any more concrete information concerning the degree of recognition of the opponent’s trade marks among the relevant public in the relevant territories and in relation to other similar brands from competitors in the relevant market sector.

In addition, some of the articles were verifiable only by following the link provided. In these circumstances it must be recalled that the Office may neither take into account facts known to it as a result of its own private knowledge of the market nor conduct an ex officio investigation, but must base its findings exclusively on the information and evidence submitted by the opponent. Article 7(2)(f) EUTMDR provides that the burden of putting forward and proving the relevant facts lies with the opponent, by expressly requiring it to submit evidence attesting that the earlier mark has a reputation for the relevant goods. It follows that it was up to the opponent to substantiate the data by submitting a printout from the website linked to. Therefore, the above item of evidence clearly has limited probative value.

Finally, the remaining document concerning the protection of the opponent’s trade mark rights do not shed light on the matter. Therefore, the subject pieces of evidence, although showing the opponent’s efforts in protecting its trade mark rights, do not contribute in providing sufficient data concerning the market share held by the trade mark and its degree of awareness with respect to the relevant consumers.

It follows from all the above that a joined assessment of all the documents provided leads the Opposition Division to assert that the opponent has failed to submit solid and objective evidence that would allow to conclude, without resorting to probabilities and suppositions, that the earlier trade marks at issue are widely recognised by a significant part of the relevant public.

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

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, 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

Marta GARCÍA COLLADO

Carlos MATEO PEREZ

Chantal VAN RIEL

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.