OPPOSITION No B 3 052 925

Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany (opponent), represented by Nicola Franzky, c/o Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany (employee representative)

a g a i n s t

Nittis Oü, Helgi tee 9, 75312 Peetri küla Rae vald, Estonia (applicant), represented by Patendibüroo Turvaja Oü, Liivalaia 22, 10118 Tallinn, Estonia (professional representative).

On 28/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 925 is partially upheld, namely for the following contested goods:

Class 25: Boots; half-boots; training shoes; valenki [felted boots]; galoshes; footwear; lace boots; wooden shoes; sandals; inner soles; bath slippers; shoes; gymnastic shoes; slippers.

2. European Union trade mark application No 17 866 008 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 866 008, the word mark ‘Otto Schwarz’. The opposition is based on European Union trade mark registration No 13 713 151  . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

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

a) The goods and services

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

Class 25: Footwear.

Class 35: Wholesaling and retailing services regarding footwear.

The contested goods are the following:

Class 25: Boots; half-boots; training shoes; valenki [felted boots]; galoshes; heelpieces for footwear; footwear; soles for footwear; lace boots; non-slipping devices for footwear; welts for footwear; wooden shoes; sandals; footwear uppers; inner soles; bath slippers; shoes; gymnastic shoes; slippers; tips for footwear.

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.

Footwear is identically included in both lists of goods.

The contested boots; half-boots; training shoes; valenki [felted boots]; galoshes; lace boots; wooden shoes; sandals; bath slippers; shoes; gymnastic shoes; slippers are included in the broad category of the opponent’s footwear. Therefore they are identical.

The contested inner soles are similar to the opponent’s footwear as they usually coincide in producer and relevant public. The contested goods are usually sold, as separate items, via the same distribution channels as the opponent’s goods. Furthermore they are complementary.

The contested heelpieces for footwear; soles for footwear; non-slipping devices for footwear; welts for footwear; footwear uppers; tips for footwear are, however, dissimilar to the opponent’s goods and services. The contested goods are parts of footwear, whereas the opponent’s goods are finished products and the opponent’s services concern the retail of such finished goods.

The mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61) but is rather an exception. Such an exception would be based on the fact that the parts and fittings are often produced and/or sold by the same undertaking that manufactures the end product and target the same purchasing public, as in the case of spare or replacement parts.

This is not the case here. The remaining contested goods are aimed at footwear manufacturers whereas the opponent’s goods and services target the public at large. The goods are not distributed through the same channels, not even through the opponent’s footwear retail services. Consumers would not expect the contested footwear parts to be produced by the footwear companies responsible for marketing the finished product. Therefore, these goods and services are dissimilar.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention is considered average.

c) The signs

	Otto Schwarz
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a figurative mark consisting of the term ‘OTTO’ written in slightly stylised red upper case letters; the typeface and colour are fairly standard, decorative elements.

The contested sign is the word mark ‘Otto Schwarz’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant that the first letters of each element in the contested sign are capitalised.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘OTTO’ and the differing element ‘Schwarz’ are not meaningful in certain territories, for example in those countries where German is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian and Lithuanian-speaking part of the public.

‘OTTO’ and ‘Schwarz’ are meaningless and therefore distinctive terms for the public subject to the present assessment.

Visually, the signs coincide in ‘OTTO’. Although the signs differ in the (fairly standard) stylisation and colour of this element in the earlier mark, these will not detract the consumers’ attention away from the term ‘OTTO’ as such, and will therefore have very little impact on consumers in the overall impression produced by the sign. The signs also differ in the additional element ‘Schwarz’ in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sounds of the letters forming ‘OTTO’, the only element of the earlier sign. The pronunciation differs in the element ‘Schwarz’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, none of the signs has a meaning for the public subject to the present assessment. The conceptual comparison therefore does not influence the assessment of similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed at this stage (see below in ‘Global assessment’).

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

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

In the present case, the signs coincide in the only element of the opponent’s trade mark. According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (02/11/2003, T‑286/02, Kiap Mou, EU:T:2003:311; 15/02/2005, T‑169/02, Negra modelo, EU:T:2005:46; 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102; 08/03/2005, T‑32/03, Jello Schuhpark, EU:T:2005:82; 06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292; 23/10/2002, T‑104/01, Fifties, EU:T:2002:262; 04/05/2005, T‑22/04, Westlife, EU:T:2005:160), and this element that the marks have in common retains an independent distinctive role in a composite mark (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 30).

Some of the goods are identical, some are similar, and some are dissimilar. The signs are visually and aurally similar to an average degree. The basic stylisation and colour of the earlier mark or the additional element ‘Schwarz’ are not sufficient to counteract the similarities.

Indeed, it is highly conceivable that the relevant consumer will perceive the identical or similar goods offered under the signs in dispute as originating from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian and Lithuanian-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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.

a) Reputation of the earlier trade marks

According to the opponent, the earlier European Union trade mark has a reputation in Germany.

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 27/02/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation prior to that date. The evidence must also show that the reputation was acquired for the services in Class 35 for which the opponent has claimed reputation, namely wholesale and retail services regarding goods in Class 25.

The remaining, dissimilar contested goods are the following:

Class 25: Heelpieces for footwear; soles for footwear; non-slipping devices for footwear; welts for footwear; footwear uppers; tips for footwear.

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 02/10/2018 the opponent submitted the following evidence:

 Screenshot from www.otto.de dated 01/10/2018 presenting figures about the company ‘Otto’, such as: founded in 1949; number of employees 4 500; revenue 2 956 billion Euros; visits to otto.de per day on average 1.9 million; no. of items on otto.de: more than 2.8 million; brands on otto.de: approx. 6 600; Facebook fans: more than 976 000; Twitter followers: more than 29 000; YouTube channels corporate: over 47,3 million video views in 2017.

 Translation of a judgment of the German Federal Court of Justice dated 31/10/2013 (previous Courts: Regional court of Munich, Higher Regional Court of Munich).

The judgment states in paragraph 23 that the court of first appeal ‘assumed that the litigious trademark (German trade mark registration ‘OTTO’) registered on 14 November 2005 benefitted from a high level of recognisability of the Plaintiff’s company symbol in the field of mail order business. According to the court of first appeal, the Plaintiff has a long company history of more than 60 years and has been successfully distributing a wide range of different goods in the mail order business.’ […] ‘when determining the increased distinctiveness of the litigious trademark, the court of first appeal also assumed that the known, extensive and long standing use of the company symbol is evident’.

Paragraph 41 states that ‘the court of first appeal’s assumption that the defendant took advantage of the distinctiveness of the litigious trademark by using the contested sign is not objectionable under the law of second appeal’.

 Registration certificate of the opponent’s German trade mark registration No 30 126 772, ‘OTTO’, referred to in the judgment.

As regards the screenshot from the opponent’s website, it is a piece of evidence coming from the opponent. In general, further evidence would be necessary to confirm the figures presented by the opponent, most importantly evidence originating from independent sources.

The opponent refers to a previous national decision to support its arguments. However, aside from the fact that a copy of the original decision in German was not submitted (but only an alleged English translation thereof), it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

However, the judgment referred to by the opponent as per the English translation provided merely upholds the findings of the previous instances. Neither the evidence nor the arguments leading to those decisions were submitted. Therefore, the Opposition Division cannot ascertain whether and to what extent that decision could be relevant to the present proceedings.

The opponent has shown some use of the opponent’s sign for retail services (though not specifically for retail of footwear), presented as a collection of figures from the opponent’s own website. The evidence, however, does not provide any indication of the degree of recognition of the trade mark by the relevant public. Given the global reach of Facebook, Twitter or Youtube, the numbers of fans, followers or views are not apt, as such, for showing recognition of the opponent’s mark in the European Union, including in Germany. The number of daily website visits to otto.de is not confirmed by evidence from independent sources.

Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

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

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence that could support the conclusion that the 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.

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

The Opposition Division

Sam GYLLING

Marianna KONDAS

Begoña URIARTE VALIENTE

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.