OPPOSITION Nо B 3 101 412

 

Hardy Way, LLC, 1450 Broadway, 3rd Floor, 10018 New York, United States of America (opponent), represented by Sipara Limited, Unit 1 Rochester House Eynsham Road, OX2 9NH Farmoor, United Kingdom (professional representative) 

 

a g a i n s t

 

Hardy Hardy Limited, Unit A1 of Unit A 11/F Success Comm Bldg 245-251 Hennessy Rd, Hong Kong, Hong Kong, Special Administrative Region of the People's Republic of China (applicant), represented by Cabinet Lavoix, 2, Place d' Estienne d'Orves, 75009 Paris, France (professional representative).

On 17/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 101 412 is partially upheld, namely for the following contested goods and services:

Class 3: Facial cleanser; essential oils; cosmetics; dentifrices.

Class 9: All the goods applied for in this Class.

Class 14: Jewelry boxes; Jewelry; Necklaces [jewelry]; Rings [jewelry]; Paste jewelry [costume jewelry]; Jewelry charms; Wristwatches; Clocks; Chronometric instruments.

Class 18: Bags; Pocket wallets; Handbags; Trunks [luggage].

Class 25: All the goods applied for in this Class.

Class 35: Provision of an online marketplace for buyers and sellers of goods and services.

2.	European Union trade mark application No 18 092 717 is rejected for the goods and services as reflected under 1. of this dictum. It may proceed for the remaining goods and services.

 

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 18 092 717  (figurative mark), namely against all the goods and services in Classes 3, 9, 14, 18, 25 and 35. The opposition is based on international trade mark registration designating the European Union No 907 827 for ‘Ed Hardy’ (word mark), European Union trade mark registration No 13 605 282 for ‘ED HARDY’ (word mark), international trade mark registration designating the European Union No 945 206 for ‘ED HARDY’ (word mark) and international trade mark registration designating the European Union No 995 931 for ‘ED HARDY’ (word mark) in relation to which the opponent invoked Article 8(1)(b) EUTMR, on international trade mark registration designating the European Union No 964 096 (figurative mark) in relation to which the opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR, and on non-registered trade mark rights in the EU for the signs ‘ED HARDY’ (word mark) and (figurative mark) in relation to which the opponent invoked Article 8(4) 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 on which the opposition is, inter alia, based are the following:

International trade mark registration No 907 827 (hereafter earlier mark 1):

Class 18: Handbags, tote bags, clutch bags, luggage, travelling bags, wallets, purses, coin purses, key cases.

Class 25: Clothing, namely, shorts, dresses, jumpers, shirts, blouses, jackets, coats, t-shirts, sweatpants, sweatshorts, underwear, sleepwear, loungewear, swimwear, wet suits, overalls, coveralls, ski wear, vests, sweaters, leggings, neckwear, belts, suspenders, cloth bibs, wristbands, footwear, headwear.

Class 35: Retail store services and computerized online retail services in the fields of clothing, clothing accessories, personal care products, leather goods, bags, jewelry.

European Union trade mark registration No 13 605 282 (hereafter earlier mark 2):

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; headphones; earbuds; headphone and earbud cushions, pads, covers, cases, electric cord management systems and extension cords; docking stations; digital music players; MP3 players; cameras; camera cases; camera straps; camera tripods; digital picture frames, electronic fitness bands; turntables; DVD players; optical disc players; smartphones, mobile phones, cell phones, and hands-free kits and mounts therefor; cases for smartphones, mobile phones and cell phones; cell phone straps; bags adapted for carrying portable computers, laptop computers, tablet computers, smartphones, mobile phones and cell phones; portable media players; personal digital assistants; USB cables; cables, electric; USB flash drives; computer memory devices; external hard drives; covers, sleeves and protective skins for laptop computers, tablet computers, smartphones, mobile phones and cell phones; mouse pads, magnetic card readers, portable electric chargers; batteries; battery chargers; calculators.

International trade mark registration No 945 206 (hereafter earlier mark 3)

Class 9: Sunglasses, eyeglasses, eyeglass frames, eyeglass cases, ski goggles, goggles for sports.

International trade mark registration No 995 931 (hereafter earlier mark 4)

Class 9: Faceplates, covers and decals for cell phones, personal digital assistants and laptops.

International trade mark registration designating No 964 096(hereafter earlier mark 5):

Class 3: Eau de parfum; eau de toilette perfume; cologne; after-shave lotions; after-shave balms; skin moisturizer; body lotion; body cream; hand cream; bath gel; body washes; hair shampoo; soaps for personal use; deodorant for personal use; body sprays.

The contested goods and services are the following:

 

Class 3: Facial cleanser; cleaning preparations; polishing preparations; furbishing preparations; essential oils; cosmetics; dentifrices; incense; cosmetics for animals; air fragrancing preparations.

Class 9: Computer programs [downloadable software]; cases for smartphones; portable media players; cameras [photography]; precision measuring apparatus; mirrors [optics]; spectacles; sunglasses; batteries, electric; films, exposed.

Class 14: Precious metals, unwrought or semi-wrought; jewelry boxes; jewelry; necklaces [jewelry]; rings [jewelry]; paste jewelry [costume jewelry]; jewelry charms; wristwatches; clocks; chronometric instruments.

Class 18: Leather, unworked or semi-worked; bags; pocket wallets; handbags; trunks [luggage]; leather trimmings for furniture; leather laces; umbrellas; walking sticks; clothing for pets.

Class 25: Clothing; layettes [clothing]; waterproof clothing; shoes; hats; hosiery; gloves [clothing]; scarves; belts; wedding dress.

Class 35: Advertising; commercial administration of the licensing of the goods and services of others; organization of fashion parades for advertising or sales purposes; provision of an online marketplace for buyers and sellers of goods and services; sales promotion for others; personnel management consultancy; relocation services for businesses; systemization of information into computer databases; accounting; sponsorship search.

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

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Contested goods in Class 3

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

Therefore, the contested facial cleanser; cosmetics; dentifrices, which are all personal care products are similar to the opponent’s retail store services and computerized online retail services in the fields of personal care products in Class 35 of earlier mark 1).

The contested essential oils are similar to a high degree to personal care products, as they have the same purpose and usually coincide in producer, relevant public and distribution channels.

Consequently, the contested essential oils are also similar to a low degree to the opponent’s retail store services and computerized online retail services in the fields of personal care products in Class 35 of earlier mark 1).

However, contrary to the opponent´s arguments, the contested cleaning preparations; polishing preparations; furbishing preparations; incense; cosmetics for animals; air fragrancing preparations are dissimilar to the opponent´s retail store services and computerized online retail services in the fields of personal care products in Class 35 of earlier mark 1). The contested cleaning preparations; polishing preparations and furbishing preparations are substances used for household washing and cleaning, whereas the contested incense and air fragrancing preparations are used to make homes or other indoor spaces smell nice. In contrast, personal care products are for personal use on the body, and include fragranced body lotions and fragranced shampoos used for cleaning and enhancing the odour or aroma of the body, hair etc by giving them a pleasant smell. Therefore, these goods have no relevant points in common, as they serve different purposes and have different methods of use. They usually have different producers and are sold through different distribution channels. Therefore, they are dissimilar to the opponent´s retail store services and computerized online retail services in the fields of personal care products in Class 35 of earlier mark 1). Although the contested cosmetics for animals and personal care products, subject of the opponent’s retail services, may coincide in their nature, this is not a sufficient ground to find them similar. These goods differ in their manufacturers, points of sale and method of use. Moreover, they are neither complementary nor in competition, being therefore, dissimilar. These contested goods are even further removed from the opponent´s other goods and services of earlier marks 1) – 5).

Contested goods in Class 9

 

The contested computer programs [downloadable software]; cases for smartphones; portable media players; cameras [photography]; precision measuring apparatus; mirrors [optics]; spectacles; sunglasses; batteries, electric are identical to the opponent’s optical, measuring apparatus and instruments; computer software; cameras; cases for smartphones; portable media players; batteries in Class 9 of earlier mark 2) and sunglasses, eyeglasses in Class 9 of earlier mark 3), either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

The contested films, exposed are similar to a low degree to the opponent´s photographic apparatus and instruments in Class 9 of earlier mark 2), as they can coincide in their relevant public and distribution channels.

Contested goods in Class 14

As explained above, retail services concerning the sale of specific goods are similar to an average degree to these specific goods, and there is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones.

The opponent´s retail store services and computerized online retail services in Class 35 of earlier mark 1) relate amongst others to jewelry.

The contested jewelry; necklaces [jewelry]; rings [jewelry]; paste jewelry [costume jewelry]; jewelry charms are identical to the aforementioned jewelry, either because they are identically contained or because jewelry includes the contested goods. The contested wristwatches; chronometric instruments are similar to a high degree to the aforementioned jewelry, as these goods have the same nature, and usually coincide in producer, relevant public and distribution channels. The contested jewelry boxes are similar to the aforementioned jewelry, as these goods usually coincide in producer and relevant public. Furthermore they are complementary. The contested clocks are similar to the aforementioned jewelry, as these goods can share the same decorative purpose, and may coincide in producer, relevant public and distribution channels. Therefore, the contested jewelry boxes; jewelry; necklaces [jewelry]; rings [jewelry]; paste jewelry [costume jewelry]; jewelry charms; wristwatches; clocks; chronometric instruments are at least similar to a low degree to the opponent’s retail store services and computerized online retail services in the fields of jewelry in Class 35 of earlier mark 1).

However, contrary to the opponent´s arguments, the contested precious metals, unwrought or semi-wrought and jewelry are dissimilar. The fact that one product is used for manufacturing another or is incorporated in another is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. These contested goods are intended for use in industry rather than for direct purchase by the final consumer, and are sold through different channels of distribution, are of a different nature and serve a different purpose. Therefore, they are dissimilar to the opponent´s retail store services and computerized online retail services in the fields of jewelry in Class 35 of earlier mark 1). These contested goods are even further removed from the opponent´s other goods and services of earlier marks 1) – 5).

Contested goods in Class 18

The contested bags; pocket wallets; handbags are identical to the opponent’s handbags, wallets in Class 18 of earlier mark 1), either because they are identically contained in both lists or because the opponent’s goods include or are included in the contested goods.

The contested trunks [luggage] are similar to a high degree to the opponent´s travelling bags in Class 18 of earlier mark 1), as these goods have the same purpose and nature, and usually coincide in producer, relevant public, distribution channels and method of use.

However, contrary to the opponent´s arguments, the contested leather, unworked or semi-worked; leather trimmings for furniture; leather laces; umbrellas; walking sticks; clothing for pets are dissimilar to all the opponent´s goods of earlier marks 1) – 5). These have a different nature, purpose and method of use. They are not complementary or in competition. Furthermore, they are not provided by the same undertakings and they are distributed through different distribution channels and target a different relevant public. As regards in particular the contested leather, unworked or semi-worked, the fact that one product is used for manufacturing another or is incorporated in another is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. These contested goods are intended for use in industry rather than for direct purchase by the final consumer, and are sold through different channels of distribution, are of a different nature and serve a different purpose.

Contested goods in Class 25

The contested clothing; layettes [clothing]; waterproof clothing; shoes; hats; hosiery; gloves [clothing]; scarves; belts; wedding dress are identical to the opponent’s clothing, namely underwear, sleepwear, loungewear, wet suits, ski wear, footwear, headwear in Class 25 of earlier mark 1), because the opponent’s goods include, are included in, or overlap with, the contested goods.

Contested services in Class 35

The contested provision of an online marketplace for buyers and sellers of goods and services are similar to a low degree to the opponent´s retail store services and computerized online retail services in the fields of clothing, clothing accessories, personal care products, leather goods, bags, jewelry in Class 35 of earlier mark 1). Operating an on-line marketplace entails the provision of a platform where the buyer can display and offer its goods for sale, without the intermediary being necessarily concerned about what is being sold, the price, etc. Retail and wholesale services are more active, as the service provider will be positively engaged in the promotion of the sale of the specific goods assembled for the customer. The services under comparison, namely, specified retail services and commercial intermediary services to facilitate the sale of the goods and services of others services show a certain degree of similarity as the relevant public may be the same, whether this is as a prospective buyer or seller, and the purpose of the services, broadly speaking, may be the same, facilitating the sale of goods.

However, contrary to the opponent´s arguments, the remaining services in this Class, namely advertising; commercial administration of the licensing of the goods and services of others; organization of fashion parades for advertising or sales purposes; sales promotion for others; personnel management consultancy; relocation services for businesses; systemization of information into computer databases; accounting; sponsorship search which are advertising, IT and business related services. These services have nothing in common with the opponent’s goods of earlier marks 1) – 5). Apart from being fundamentally different in nature with the opponent´s goods of earlier marks 1) – 5), since services are intangible whereas goods are tangible, these goods and services serve different needs. Moreover, these contested services would be typically provided by a specific type of professionals, such as advertising agencies, business consultants, IT-specialists, who are not expected to manufacture or provide any of the opponent´s goods. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary. As they have nothing in common that would lead to a level of similarity to be justified, these contested services and the opponent’s goods must be considered dissimilar. As far as in particular the contested advertising services are concerned, these consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised. In conclusion, all these contested services are dissimilar to the opponent’s goods of earlier marks 1) – 5).

 

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 found to be identical or similar to varying degrees are directed at the public at large or at business customers with specific professional knowledge or expertise.

 

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature or terms and conditions of the goods and services purchased.

c) The signs

 

Earlier mark 1 Ed Hardy Earlier marks 2 – 4 ED HARDY Earlier mark 5
Earlier trade marks	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 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

A very substantial part of the relevant public will perceive the verbal element ‘HARDY’, identically included in both signs, as a surname. It will perceive the earlier marks´ verbal element ‘ED’ as a common forename (probably being the abbreviation of the male forename ‘EDWARD’ or ‘EDMUND’ or their variations throughout Europe). Consequently, and in order to take into account the potential impact of the meaning of these elements on the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that perceives the elements ‘ED’ and ‘HARDY’ as a forename and a surname respectively.

Earlier marks 1) to 4) are word marks consisting of the verbal element ‘Ed Hardy’, with earlier mark 1) written in title-case letters and the remaining marks in upper-case letters. The protection of a word mark, without irregular capitalization, concerns the word as such. Therefore, it is irrelevant, for the purposes of the comparison, that one of these earlier rights is written in title-case letters and the others in upper-case letters. Earlier mark 5) is a figurative element consisting of the verbal element ‘Ed Hardy’, in a stylized, black italicized typeface, which is decorative in nature and therefore has a limited distinctiveness. This element is placed between bowed lines, the one in front being horizontally oriented ( ) and the one behind being vertically oriented ( ), which too are decorative in nature and therefore have a limited distinctiveness. Earlier mark 5) has no element that could be considered clearly more dominant than other elements. However, in principle, surnames have a higher intrinsic value as indicators of the origin of goods or services than forenames. This is because common experience demonstrates that the same forenames may belong to a great number of people who have nothing in common, whereas the presence of the same surname could imply the existence of some link between them (the identity of a person or a family link). Therefore, the surname ‘HARDY’ is the most important element of the earlier marks.

The contested sign is a figurative mark consisting of the verbal element ‘Hardy’, in a stylized, black italicized typeface, which is decorative in nature and therefore has a limited distinctiveness. Situated just above the letter ‘H’ is a number ‘2’, also written in a stylized typeface, which could possibly be viewed as a number of a range of goods or a size of the goods. The contested sign has no element that could be considered clearly more dominant than other elements.

The verbal elements ‘HARDY’ and ‘ED HARDY’ have no connection to the relevant goods and services. These elements are considered distinctive to a normal degree.

Visually, the signs coincide in the verbal element ‘HARDY’ included in all of the signs in conflict and also in the typeface and stylization of the element ‘HARDY’ in the contested sign and earlier mark 5). Only the aforementioned two bowed lines in earlier mark 5),which are not present in the contested sign, cause there to be a subtle difference. They further differ in the verbal element ‘ED’ of the earlier marks and in the element ‘2’ of the contested sign.

Taking into account that the signs coincide in the verbal element ‘Hardy’, which is the most important element in the earlier signs for the reasons given above, the signs are considered visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛HAR‑DY’, present identically in both signs at their endings. They differ in their first syllable, ‛ED’ in the earlier marks, as opposed to ‛2’ in the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, namely as a reference to the same person or at least to a family link, the signs are conceptually similar to at least an average degree.

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

 

d) Distinctiveness of the earlier mark

 

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

According to the opponent, the earlier marks have been extensively used and enjoy 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 in the present case (see below in ‘Global assessment’).

Consequently, the present assessment will rest on the earlier marks´ inherent distinctiveness.

 

e) Global assessment, other arguments and conclusion

 

The contested goods have been found partly identical, partly similar to varying degrees and partly dissimilar. The goods found to be identical and similar to varying degrees target the general public and business customers, and the degree of attention varies from average to high. A normal degree of inherent distinctiveness in relation to the goods and services at issue is taken into account.

The signs have been found to be visually, aurally and conceptually similar to at least an average degree. Although the signs differ in that the earlier marks additionally include the verbal element ‘ED’, which is less significant in terms of distinctive character than the surname ‘HARDY’ and the contested sign additionally includes the verbal element ‘2’, which could possibly be viewed as a number of a range of goods or a size of the goods. The Opposition Division considers that these differing elements are insufficient to safely distinguish the marks in the context of the coincidence in the identical verbal element ‘HARDY’, which is the most important part of the signs at issue.

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 covered are from the same or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). It must also be pointed out that, although consumers generally pay greater attention to the beginning of a mark than to the end, this finding cannot apply in all cases and cannot call into question the principle that the examination as to whether the marks are similar must take account of the overall impression created by those marks, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (18/05/2018, T–67/17, tèespresso / TPRESSO et al., EU:T:2018:284, § 28).

Considering all the above, there is a likelihood of confusion on the part of the public that perceives the elements ‘ED’ and ‘HARDY’ as a forename and a surname respectively. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

 

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark. As regards the goods and services found to be similar to a low degree only, it is noted that 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 similarity between the signs is sufficient to outweigh the low degree of similarity between the opponent´s goods and services and the contested goods and services.  

The rest of the contested goods and services 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 and services 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 marks due to their extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

 

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods and services, 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 marks enjoyed an enhanced degree of distinctiveness.

Given that the opposition is only partially successful under Article 8(1)(b) EUTMR, the Opposition Division will continue with the examination of the opposition on the remaining grounds on which the opposition was based, namely Article 8(5) and Article 8(4) 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.

 

a) Reputation of earlier mark 5)

 

According to the opponent, earlier mark 5) has a reputation in the European Union.

 

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 09/07/2019. Therefore, the opponent was required to prove that earlier mark 5) had acquired a reputation in the European Union 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 3: Eau de parfum; eau de toilette perfume; cologne; after-shave lotions; after-shave balms; skin moisturizer; body lotion; body cream; hand cream; bath gel; body washes; hair shampoo; soaps for personal use; deodorant for personal use; body sprays.

The opposition is directed against the following remaining goods and services:

 

Class 3: Polishing preparations; Furbishing preparations.

Class 14: Precious metals, unwrought or semi-wrought.

Class 18: Leather, unworked or semi-worked; Leather trimmings for furniture; Umbrellas; Walking sticks; Clothing for pets.

Class 35: Advertising; Commercial administration of the licensing of the goods and services of others; Organization of fashion parades for advertising or sales purposes; Sales promotion for others; Personnel management consultancy; Relocation services for businesses; Systemization of information into computer databases; Accounting; Sponsorship search.

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.

The opponent submitted evidence to prove that earlier mark 5) has a reputation in the European Union. 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:

 

 An affidavit signed on 18/06/2020 by the Director of Operations of lconix Europe, LLC.

In the affidavit, the Director of Operations, referring to Exhibits DH1 to DH14 (which are explained in detail below), states that:

• lconix Europe, LLC is the European affiliate of lconix Brand Group, lnc, which is a premier brand management company and owner of a diversified portfolio of consumer brands across fashion, sports, entertainment and home. lconix Brand Group, lnc, has over 1.100 licences with leading retailers and manufacturers worldwide that sell across various distribution channels. They have carried out extensive marketing and design activities for the brands in its portfolio, including the ‘Ed Hardy’ brand;

• Don Ed Hardy, known as ‘the godfather of modern tattoo’ and his artwork date back to 1967 when Hardy transformed the tattoo business into an artistic medium;

• The ‘Ed Hardy’ brand has become a global consumer product brand sold in over 40 countries for a wide range of different product categories, including clothing, footwear, headgear, fragrances, cosmetics, sun care and tanning products, fashions accessories, bags, watches, phone covers and alcoholic beverages;

• The ‘Ed Hardy’ brand was first licensed in the early 2000's, is used by authorized licensees globally and the total sales by licensees in Europe where several hundreds of thousands EUR in 2016, 2017 and 2019, and in the millions of EUR in 2018 (Exhibit DH1);

• In 2016, the opponent collaborated with a streetwear brand, for the ‘Ed Hardy’ brand (Exhibit DH2). The Collaboration was called 'ED HARDY X ILLUSTRATED PEOPLE' and the range created was sold in Topshop, a British owned multinational fashion retailer, as well as Selfridges, a chain of luxury department stores in the UK;

• In 2016/2017 it also collaborated for the ‘Ed Hardy’ brand with Missguided, a UK based multi-channel retailer, and with MC2 Saint Barth Caribbean swimwear brand in 2016, a collaboration that is still ongoing (Exhibit DH3);

• The ‘Ed Hardy’ brand has been sold in a large number of third party retail stores throughout Europe, such as OVS and Alcott (ltaly) (Exhibit DH4);

• in addition to apparel, fashion accessories and phone covers, the ‘Ed Hardy’ mark has been licensed and used for a range of health and beauty products, including to the well-known cosmetics brand Elizabeth Arden, lnc. (Exhibit DH5) and on a wide range of sun care and tanning products in conjunction with Tanovation 2 LLC (Exhibit DH6).

The Director of Operations further explains that, although Elizabeth Arden and Tanovation 2 LLC are headquartered in the United States, the licenses cover a number of regions including Europe, and examples of royalty reports relating to these goods can be found in Exhibit DH1;

• The ‘Ed Hardy’ brand has been promoted and marketed by various means, including:

o The websites www.edhardvoriginals.com, www.edhardv.eu and www.edhardvoffical.co.uk (Exhibit DH7);

o The opponent´s own social media-accounts, including Facebook and Twitter (Exhibit DH8);

o Online platforms including Zalando, Limited Manchester and Amazon (Exhibit DH9);

o Third-party social media-accounts (Exhibit DH10);

o the #EDSBACK campaign in 2016, which included a social media campaign, a brand launch with Foot Asylum stores, an editoríal shot with Pause magazine and a launch celebration evening held in London (Exhibit DH11);

o Brochures and other marketing materials (Exhibit DH12);

o Exhibitions during Brand Licensing Europe 2017, 2018 and 2019, Europe's leading brand licensing event held at the Excel conference centre in London, bringing together over 8000 licensees, retailers and manufacturers from over 90 territories around the world (Exhibit DH13);

o A number of licensíng trade press articles, as well as fashion specific websites and other general press articles (Exhibit DH14).

 Exhibit DH1: a selection of invoices and reports showing breakdowns of sales, as well as royalty payments received from licensees for ‘Ed Hardy’ products sold between 2016-2019.

In the affidavit, it is explained that these reports include sales made by a selection of lconix's licensees.

It is also explained that these ‘invoices and reports show that the mark has been used for a large range of clothing goods, including T-shirts, tops, sweatshirts, activewear, jogging bottoms, shorts, trousers, hoodies, caps, jackets, underwear, shorts, footwear, as well as fashion accessories and phone covers’.

The sales cover various European countries, including Austria, Benelux, Bulgaria, Czech Republic, France, ltaly, Germany, Poland, Portugal, Spain, Sweden and the UK.

All the reports showing breakdowns of sales exclusively relate to the quarters of 2017, 2018 and 2019, with the exception of one report on the first quarter of 2016, and one report on the second quarter of 2016.

In the reports reference is made to the category of goods. All categories of goods are either ‘apparel’ (e.g. Apparel > Men activewear > Men Underwear) or ‘accessories’, with the exception of:

o the report on the first quarter of 2016 which refers to ‘soft cases’ for phones;

o the reports on the sales made by ‘Elizabeth Arden Fragrance’ which also include the category ‘Health & Beauty’.

The reports on the sales made by ‘Elizabeth Arden Fragrance’ are for the second and third quarter of 2018, and the third quarter of 2019. They include references to the territories where the sales have been made. A large variety of territories outside the EU is indicated, such as Australia, Canada, Mexico, South-Korea, Switzerland, United States of America, … Some EU territories, namely Spain & Portugal, and the United Kingdom, are also included. As regards these EU territories, out of the hundreds of thousands of units sold, the sales in Europe were in the hundreds only.

 Exhibit DH2: a ‘collaboration booklet 2016’ of ‘Ed Hardy X Illustrated People’, images of branded products in stores, as well as social media posts relating to the collaboration.

In the booklet, it is explained that Illustrated People was approached by Selfridges to create an exclusive collection of ‘Ed Hardy X Illustrated People’, and that the range consisted of a range of T-shirts and an extremely popular pink jumper.

The booklet includes pictures of drawings and of clothing, as well as pictures of an event and of the collection (of clothes) in stores.

 Exhibit DH3: pictures of the collections ´Ed Hardy X MISSGUIDED´ and ´Ed Hardy X MC2 SAINT BARTHS´ (Collaboration 2016)

The pictures of the former show ED HARDY clothing (T-shirts, sweatshirts, jogging pants, …) and caps, as well as a model wearing these clothing and accessories.

The pictures of the latter are from – what seems to be – a leaflet or a catalogue where swim shirts and T-shirts are shown; there is one close-up from clothing on display in a store, with one piece of clothing with an Ed Hardy-tag.

 Exhibit DH4: pictures from sections of Italian stores, which according to the opponent were taken in 2017, showing Ed Hardy-branded clothing.

 Exhibit DH5: undated screenshots from theperfumeshop.com and allbeauty.com.

On the screenshot of the former website pictures of ‘Ed Hardy Hearts & Daggers For Men Eau de Toilette Spray 100ml´, ‘Ed Hardy Love & Luck Eau de Parfum Spray 100ml´ and ‘Ed Hardy For Women Eau de Parfum Spray 100 ml´ are shown.

On the screenshot from the latter website a picture of an ‘Ed Hardy Love & Luck Eau de Toilette Spray 100ml´ is shown.

Prices of the abovementioned goods are in GBP.

 Exhibit DH6: screenshots of the website edhardytanning.com, which are either undated or bearing the printing date 11/05/2020, showing a range of tanning products branded with the earlier mark.

 Exhibit DH7: Screenshots and printouts from the websites edhardyoriginals.com, edhardy.eu and edhardyoffical.co.uk, which are either undated or bearing the printing date 11/05/2020, showing various items of clothing and footwear.

 Exhibit DH8: Screenshots from the social media pages Facebook (https://www.facebook.com/edhardy), Instagram (https://www.instagram.com/edhardyeurope) and Twitter (https://twitter.com/edhardy?lang=en).

 Exhibit DH9: screenshots and prints, either undated or bearing the printing date 19/06/2020, from the following third party websites showing use of the earlier marks: zalando.co.uk, footasylum.com, lostrockstar.co.uk, dollskill.com, standout.co.uk, bronxclothing.co.uk, sportsdirect.com, farfetch.com, usc.co.uk, www.limitedmanchester.com, House of Fraser and amazon.co.uk.

All goods depicted on these screenshots and prints are clothing, headgear (in particular caps), footwear or (weekend)bags, with the exception of two screenshots on amazon.co.uk., bearing the printing date of 19/06/2020, of an Ed Hardy-branded Eau de Parfum for women and an Ed Hardy-branded Eau de Toilette for men.

 Exhibit DH10: a selection of social media and press related articles, namely:

o over 60 instagram posts by people, with various numbers of followers, wearing Ed Hardy-clothing, headgear or footwear;

o visuals on the Radiator AW16 Press Day that took place in April 2016, also including comments of participants on recent achievements/collaborations of the Ed Hardy-brand;

o visuals on the AW17 Press Day that took place in April 2017;

o visuals on the Press Days SS19 that took place in November 2019 in London;

o a collage of covers of several magazines;

o a collage of pictures on – what the opponent refers to as – ‘stylists´, ‘some people of press´ and ‘press key pieces and responses´, the latter apparently focusing on Ed Hardy-footwear;

o a screenshot from (the beginning of) an article of 26/01/2017 on the return of the Ed Hardy-brand in the Austrian magazine ‘Woman´;

o a screenshot from (the beginning of) an article of 17/03/2017 in Notion Magazine.

 Exhibit DH11: Print outs, photographs and marketing materials related to the #EDSBACK campaign.

Launch Event 2016 is indicated on the documents. Several times reference is made to ‘Menswear Collection´ and to the celebration of the ‘Ed Hardy Men´s Collection´.

 Exhibit DH12: (excerpts from) the Autumn-Winter 2018 ‘Lookbook Preview’ and the ED HARDY 2018 collection offered by Textiss SA, as well as images from ED HARDY campaign shoots from 2016-2018.

All goods depicted in these documents are clothing an headgear (caps) only.

 Exhibit DH13: Details of the exhibition Brand Licensing Europe 2019 in London and confirmation of attendance for October 2019.

 Exhibit DH14: Articles from trade press and other online sources, namely:

o an article on Iconix Europe and its achievements;

o an article on www.licenseglobal.com, dated 17/12/2019, entitled ‘Retro Apparel Brands that Made a Comeback with Licensing’, explaining:

ln 2019, the parent company, lconix, inked a deal with Revlon to turn the Ed Hardy brand into a personal care line. The four-year agreement includes the creation of deodorant, hair care products, body lotion, body wash and aftershave inspired by the tattoo-stylings of the brand. It joined Revlon's previous deal with nine Ed Hardy fragrances. The unique partnership helped bring the Ed Hardy brand into a non-endemic category.

o an article in Fashion Network, published on 01/06/2012, entitled ‘Elizabeth Arden buys fragrance licenses’, explaining that Elizabeth Arden Inc has bought the licenses for the Ed Hardy, True Religion and BCBGMAXAZRIA fragrance brands from New Wave Fragrances;

o an article in an unspecified magazine, published on 05/06/2019, entitled ‘Ed Hardy Introduces Elevated Offering at Lower East Side Rager’, explaining that the label relaunches for spring 2019 with an elevated offering that includes one-of-a-kind pieces;

o an article published in Highsnobiety on 24/01/2020 mentioning Ed Hardy T-shirts;

o an article published on fashionista.com on 10/07/2015 reporting oin the dead of French entrepreneur Christian Audigier, best known for helming the Ed Hardy clothing line.

Assessment of the evidence

Having examined the material listed above, the Opposition Division concludes that an overall assessment of the evidence does not clearly indicate that earlier mark 5) has acquired a reputation in the relevant territories, for the goods on which the opposition is based in Class 3 and for which the opponent claimed reputation.

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

Furthermore, it must be recalled that, as follows from Article 95 (1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, 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 should base its findings exclusively on the information and evidence submitted by the opponent.

In the present case, an overall assessment of the documents submitted shows that the earlier mark is mainly used as an apparel brand. It also shows that the earlier mark is being used worldwide in many territories and has a considerable turnover.

Nevertheless, the reputation must be proven for the goods for which the earlier mark is registered (28/04/2011, R 1473/2010-1, SUEDTIROL, § 58) and on which the opposition is based. In the case at hand the goods for which the earlier mark is registered are goods in Class 3, and not goods to which the opponent´s evidence almost exclusively refers, namely goods in Class 25 (in particular clothing, footwear and headgear).

All Exhibits, except Exhibits DH1, DH5, DH6 and part of Exhibit DH14, refer to goods in Class 25. Admittedly, some evidence includes information on sales of goods in Class 3, namely the royalty reports submitted as Exhibit DH1, the screenshots from theperfumeshop.com, allbeauty.com and edhardytanning.com, submitted as Exhibits DH5 and DH6 and one press article submitted as Exhibit DH14.

As explained by the opponent, the sales of such goods in Class 3 were made in the context of collaborations with two companies that are headquartered in and have their main markets in the United States of America. The opponent also explains that the licenses with these companies cover a number of regions including Europe, and refers to examples of royalty reports relating to these goods to illustrate sales of goods in Class 3 in the European Union. The submitted royalty reports include three reports with numbers on sales of such goods in the European Union. Only two of them predate the relevant date, namely the reports on the second and third quarter of 2018. It is first of all noted that these reports do not substantially predate the relevant date, as they relate to periods that are approximately one year removed from the relevant date only. They moreover prove sales of approximately 800 units of Class 3 goods only, which for the goods at issue is not particularly impressive. Therefore, even regardless the fact that the opponent did not provide information on the market share enjoyed by the goods offered or sold under earlier mark 5) nor on the position it occupies in the market of such goods, this low number of sales so close to the filing date is undeniably insufficient to show a sufficient degree of awareness of earlier mark 5). This finding also seems to be in line with one of the articles the opponent submitted as Exhibit DH14, namely the abovementioned article ‘Retro Apparel Brands that Made a Comeback with Licensing’. In this article a deal with Revlon to turn the Ed Hardy-brand into a personal care line is admittedly mentioned; however, this deal was signed in 2019 only, i.e. shortly before or maybe even after the relevant date.

The evidence does not contain any other document that might be relevant for determining a market share, intensity and long duration of the sales or marketing of the goods, or otherwise significant use or knowledge for goods in Class 3.

Therefore, in view of the items of evidence submitted, the opponent did not provide specific evidence which makes it possible to establish that the earlier mark has obtained a level of recognition amongst the relevant public for the goods for which it has been registered and for which a reputation is claimed.

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.

Given that the opposition is only partially successful under Article 8(1)(b) EUTMR, the Opposition Division will continue with the examination of the opposition on the remaining ground on which the opposition was based, namely Article 8(4) EUTMR.

 

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

 

In relation to Article 8(4) EUTMR, the opponent invoked two earlier rights:

1) European Union non-registered trade mark ‘Ed Hardy’ (word mark) covering the following goods and services: Handbags, tote bags, clutch bags, luggage, travelling bags, wallets, purses, coin purses, key cases; clothing, namely, shorts, dresses, jumpers, shirts, blouses, jackets, coats, t-shirts, sweatpants, sweatshorts, underwear, sleepwear, loungewear, swimwear, wet suits, overalls, coveralls, ski wear, vests, sweaters, leggings, neckwear, belts, suspenders, cloth bibs, wristbands, footwear, headwear; retail store services and computerized online retail services in the fields of clothing, clothing accessories, personal care products, leather goods, bags, jewelry.

2) European Union non-registered trade mark covering the following goods: Eau de parfum; eau de toilette; skin moisturizer; body cream; hand cream; bath gel; body washes; hair shampoo; deodorant for personal use; body sprays.

The Opposition Division takes note that the opponent indicated the ‘EUIPO’ as a territory in its Notice of Opposition, while in its observations it made its argumentation on the basis of the tort of passing-off under English law. Therefore, as the Office is not a territory, nor is there any EU wide protection for unregistered rights, it cannot refer to a valid territory that could be indicated under Article 8(4) EUTMR, the Opposition Division will proceed with the examination on this ground on the basis of the tort of passing-off under English law.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

 

(a)   rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

 

(b)   that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

 

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

 

 

a) Prior use in the course of trade of more than mere local significance

 

The evidence submitted by the opponent to substantiate the opposition has already been listed and examined in relation to the opponent´s claims under Article 8(5) EUTMR.

It is recalled that much of the evidence is dated before the relevant date, and shows that the place of use is the United Kingdom.

This can amongst others be inferred from the evidence on the opponent´s 'ED HARDY X ILLUSTRATED PEOPLE' collection of 2016 (witness statement and Exhibit DH2) which was sold in a British owned multinational fashion retailer (Topshop), and in a chain of luxury department stores in the UK (Selfridges), and its collaboration in 2016/2017 with the UK based multi-channel retailer Missguided (witness statement and Exhibit DH3). Other significant indications are the #EDSBACK campaign in 2016, which included a social media campaign and a launch celebration evening held in London (witness statement and Exhibit DH11) and the exhibitions during Brand Licensing Europe 2017, 2018 and 2019, held in London (witness statement and Exhibit DH13).

The evidence shows that the opponent’s non-registered trade marks have been used in the course of trade, mainly for goods in Class 25. The sales for goods in Class 25 in the United Kingdom have been for at least several tens of thousands EUR in 2016, 2017, 2018 and 2019 (Exhibit DH1). All Exhibits, except Exhibits DH1, DH5, DH6 and part of Exhibit DH14, refer to such goods.

The abovementioned documents provide sufficient information concerning the commercial volume of use, the length of time of use and the frequency of use. It is clear from the evidence that the opponent’s trade under the signs at issue was of more than mere local significance in the United Kingdom.

Consequently, the Opposition Division concludes that the opponent’s signs were used in the course of trade of more than local significance in the United Kingdom before the filing date of the contested trade mark.

However, the evidence does not succeed in establishing that the signs have been used in the course of trade of more than local significance for all the goods and services on which the opposition is based. The evidence mainly relates to goods in Class 25, to a lesser extent to eau de parfum; eau de toilette in Class 3, and also to goods for which the opponent did not claim non-registered trade mark rights (e.g. mobile phone cases), whereas there is no reference to the remaining goods for which the opponent claimed non-registered trade mark rights for ‘Ed Hardy’ (word mark), namely handbags, tote bags, clutch bags, luggage, travelling bags, wallets, purses, coin purses, key cases, and no reference to the services for which the opponent claimed non-registered trade mark rights, namely retail store services and computerized online retail services in the fields of clothing, clothing accessories, personal care products, leather goods, bags, jewelry, nor to the remaining goods for which the opponent claimed non-registered trade mark rights for , namely skin moisturizer; body cream; hand cream; bath gel; body washes; hair shampoo; deodorant for personal use; body sprays.

 

b)   The right under the applicable law

 

Non-registered marks are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

 

The opposition is based on a non-registered trade mark used in the United Kingdom. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

 

A successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

 

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods and services under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods and services. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

 

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods and services originate from the opponent. In other words, the public would be likely to believe that goods and services put on the market under the contested trade mark are actually those of the opponent.

 

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

 

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods and services claimed under its mark.

The evidence examined above indicates that, by the filing date of the contested trade mark, some of the opponent’s goods as previously indicated had been effectively present in the market for several years, generating transactions and sales. The Opposition Division finds that the evidence is sufficient to prove that the opponent enjoys goodwill for clothing, namely, shorts, dresses, jumpers, shirts, blouses, jackets, coats, t-shirts, sweatpants, sweatshorts, underwear, sleepwear, loungewear, swimwear, wet suits, overalls, coveralls, ski wear, vests, sweaters, leggings, neckwear, belts, suspenders, cloth bibs, wristbands, footwear, headwear and for eau de parfum; eau de toilette in the mind of the purchasing public for the sign on which the opposition is based. 

 

c) The earlier right vis-à-vis the contested trade mark

 

Misrepresentation (passing off)

 

The contested trade mark must be likely to lead the public to believe that goods or services to be offered by the applicant are the opponent’s goods or services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods or services in the belief that they are the opponent’s.

 

Furthermore, the public is unlikely to be misled where the contested goods and services are dissimilar to those upon which the opponent’s goodwill has been built. Therefore, the contested goods and services must be compared with the goods and services for which the opponent has shown that it has acquired goodwill through use.

  

The remaining contested goods and services are the following:

Class 3: Polishing preparations; Furbishing preparations.

Class 14: Precious metals, unwrought or semi-wrought.

Class 18: Leather, unworked or semi-worked; Leather trimmings for furniture; Leather laces; Umbrellas; Walking sticks; Clothing for pets.

Class 35: Advertising; Commercial administration of the licensing of the goods and services of others; Organization of fashion parades for advertising or sales purposes; Sales promotion for others; Personnel management consultancy; Relocation services for businesses; Systemization of information into computer databases; Accounting; Sponsorship search.

The opponent has shown that it has acquired goodwill through use in the United Kingdom:

- for ‘Ed Hardy´ for the following goods (whereby it is assumed that goodwill has indeed been acquired for all the goods following the term ´namely`):

Clothing, namely, shorts, dresses, jumpers, shirts, blouses, jackets, coats, t-shirts, sweatpants, sweatshorts, underwear, sleepwear, loungewear, swimwear, wet suits, overalls, coveralls, ski wear, vests, sweaters, leggings, neckwear, belts, suspenders, cloth bibs, wristbands, footwear, headwear;

- for :

Eau de parfum; eau de toilette.

In essence, the same goods and services have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are applicable mutatis mutandis here.

It follows from the above that the remaining contested goods and services are dissimilar to the goods and services for which the opponent has shown that it has acquired goodwill through use.

Under these circumstances, the Opposition Division finds it unlikely that the opponent’s customers would mistake the remaining contested goods and services for those of the opponent even if the signs have some similarities. Therefore, the opposition is not well founded under Article 8(4) EUTMR.

Indeed, even if the goodwill acquired through use for the abovementioned goods is so high as to prove that ‘Ed Hardy´ had gained a reputation, these contested goods and services are far enough apart that even such reputation would not mislead the public to believe that these goods and services are provided by the opponent due, as there is a significant distance between them.

 

For reasons of completeness, it is noted that this finding would still be valid even if it had been established that the sign has been used in the course of trade of more than local significance for the other goods and the services for which the opponent claimed non-registered trade mark rights, as these goods and services and the remaining contested goods and services are also dissimilar.

 

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

 

 

 

 

The Opposition Division

 

 

Nicole CLARKE

Christophe DU JARDIN

Cynthia Den DEKKER

 

 

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.