OPPOSITION No B 2 704 388

Peek & Cloppenburg KG, Berliner Allee 2, 40212 Düsseldorf, Germany (opponent), represented by Bird & Bird LLP, Carl-Theodor-Str. 6, 40213 Düsseldorf, Germany (professional representative)

a g a i n s t

Jaxks LTD, 7 Woodfield Close, London  SE19 3EN, United Kingdom (applicant), represented by Revomark, 5 Cranwell Grove, Lightwater, Surrey GU18 5YD, United Kingdom (professional representative).

On 05/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 704 388 is partially upheld, namely for the following contested goods and services:

Class 25:  Clothing, footwear and headgear.

Class 35:  Retail and wholesale services connected with the sale of clothing, footwear, headgear, furniture, furnishings, mirrors, soft furnishings, household textile goods, textile piece goods; advice and information relating to the above.

2.        European Union trade mark application No 15 093 801 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 093 801. The opposition is based on European Union trade mark registration No 14 522 619. The opponent invoked Article 8(1)(b) 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 and services

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. 

Class 9 : Optical instruments, in particular spectacles, sunglasses, skiing goggles, correction spectacles, spectacle frames, spectacle lenses, spectacle cases.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, namely statues and figurines, and statues and figurines consisting of precious stones, semi-precious stones, imitations thereof or imitations of precious metals and semi-precious metals, all of the aforesaid being coated with precious metals or their alloys; decorations and ornaments, horological and chronometric instruments, jewellery of precious metals or semi-precious metals or stones or imitations thereof, or coated therewith; jewellery, precious stones; horological and chronometric instruments. 

Class 18: Luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather and imitations of leather, animal skins, hides and goods made of these materials, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather straps, leather laces, bandoliers, sheets of imitation leather for further processing.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; office functions; retailing, including via websites and teleshopping, in relation to clothing, footwear, headgear, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, sunglasses, precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather and imitations of leather, fur and pelts, and goods made therefrom, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather thongs, leather laces, bandoliers, sheets of imitation leather for further processing; arranging and conducting of advertising events and customer loyalty programmes.

The contested goods and services are the following:

Class 20: Furniture, mirrors, picture frames; furniture and furnishings; furniture parts; bedroom furniture; lounge furniture; seating furniture; indoor furniture; outdoor furniture; patio furniture; dining room furniture; desks, tables and chairs; sofas; cushions (furniture); office furniture; kitchen furniture; bathroom furniture; household furniture; soft furnishings; parts and fittings for the above goods.  

Class 25: Clothing, footwear and headgear. 

Class 35: Retail and wholesale services connected with the sale of clothing, footwear, headgear, furniture, furnishings, mirrors, soft furnishings, household textile goods, textile piece goods; advice and information relating to the above. 

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.

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 ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

Contested goods in Class 20

The main point of contact between sheets of imitation leather for further processing in Class 18 and furniture, mirrors, picture frames; furniture and furnishings; furniture parts; bedroom furniture; lounge furniture; seating furniture; indoor furniture; outdoor furniture; patio furniture; dining room furniture; desks, tables and chairs; sofas; cushions (furniture); office furniture; kitchen furniture; bathroom furniture; household furniture; soft furnishings; parts and fittings for the above goods in Class 20 is that they can be made of plastics. However, this is not enough to justify a finding of similarity. They serve completely different purposes: furniture and its parts and fittings are movable objects that are used to make basic human living conditions more enjoyable, such as eating, sleeping, sitting, working and storing belongings, whereas sheets of imitation leather for further processing can merely serve as a pre-fabricated functional part of furniture. 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 of imitation leather for further processing are considered dissimilar to furniture, mirrors, picture frames; furniture and furnishings; furniture parts; bedroom furniture; lounge furniture; seating furniture; indoor furniture; outdoor furniture; patio furniture; dining room furniture; desks, tables and chairs; sofas; cushions (furniture); office furniture; kitchen furniture; bathroom furniture; household furniture; soft furnishings; parts and fittings for the above goods.

The contested furniture, mirrors, picture frames; furniture and furnishings; furniture parts; bedroom furniture; lounge furniture; seating furniture; indoor furniture; outdoor furniture; patio furniture; dining room furniture; desks, tables and chairs; sofas; cushions (furniture); office furniture; kitchen furniture; bathroom furniture; household furniture; soft furnishings; parts and fittings for the above goods have nothing in common with the opponent’s goods in Class 3 (Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices), in Class 9 (Optical instruments, in particular spectacles, sunglasses, skiing goggles, correction spectacles, spectacle frames, spectacle lenses, spectacle cases), in Class 14 (Precious metals and their alloys and goods in precious metals or coated therewith, namely statues and figurines, and statues and figurines consisting of precious stones, semi-precious stones, imitations thereof or imitations of precious metals and semi-precious metals, all of the aforesaid being coated with precious metals or their alloys; decorations and ornaments, horological and chronometric instruments, jewellery of precious metals or semi-precious metals or stones or imitations thereof, or coated therewith; jewellery, precious stones; horological and chronometric instruments), in Class 18 (Luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather and imitations of leather, animal skins, hides and goods made of these materials, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather straps, leather laces, bandoliers), in Class 25 (Clothing, footwear, headgear). They have a different nature, intended purpose and method of use. Their producers and relevant publics are also different. Furthermore, these goods are neither complementary nor in competition. Consequently, they are dissimilar.

The contested furniture, mirrors, picture frames; furniture and furnishings; furniture parts; bedroom furniture; lounge furniture; seating furniture; indoor furniture; outdoor furniture; patio furniture; dining room furniture; desks, tables and chairs; sofas; cushions (furniture); office furniture; kitchen furniture; bathroom furniture; household furniture; soft furnishings; parts and fittings for the above goods have nothing in common with the opponent’s services in Class 35 (Advertising; business management; business administration; office functions; retailing, including via websites and teleshopping, in relation to clothing, footwear, headgear, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, sunglasses, precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather and imitations of leather, fur and pelts, and goods made therefrom, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather thongs, leather laces, bandoliers, sheets of imitation leather for further processing; arranging and conducting of advertising events and customer loyalty programmes).

Advertising services 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, web sites, videos, the internet, etc. This line of argument also applies to arranging and conducting of advertising events and customer loyalty programmes.

Advertising services; arranging and conducting of advertising events and customer loyalty programmes 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.

The same principles apply when comparing the aforesaid goods of Class 20 with other B2B services, namely business management; business administration; office functions of the opponent. Therefore, these are dissimilar.

Retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary.

Therefore, the contested furniture, mirrors, picture frames; furniture and furnishings; furniture parts; bedroom furniture; lounge furniture; seating furniture; indoor furniture; outdoor furniture; patio furniture; dining room furniture; desks, tables and chairs; sofas; cushions (furniture); office furniture; kitchen furniture; bathroom furniture; household furniture; soft furnishings; parts and fittings for the above goods are dissimilar to the opponent’s retail services in Class 35.

Contested goods in Class 25

Clothing, footwear, headgear are identically contained in both lists of goods.

Contested services in Class 35

Retail connected with the sale of clothing, footwear, headgear are identically contained in both lists of services (including synonyms).

The contested wholesale connected with the sale of clothing, footwear, headgear is similar to the opponent’s retailing, including via websites and teleshopping, in relation to clothing, footwear, headgear, since they can share the same nature, purpose, provider and can be complementary.

The contested retail and wholesale services connected with the sale of furniture, furnishings, mirrors, soft furnishings, household textile goods, textile piece goods; advice and information relating to the above are similar to the opponent’s retailing, including via websites and teleshopping, in relation to clothing, footwear, headgear, since they can share the same nature, purpose and provider, and can be complementary.

The contested advice and information relating to retail and wholesale services connected with the sale of furniture, furnishings, mirrors, soft furnishings, household textile goods, textile piece goods; are considered similar to the opponent’s retailing, including via websites and teleshopping, in relation to clothing, footwear, headgear, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, sunglasses, precious metals and their alloys, jewellery, precious stones, horological and chronometric instruments, luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather and imitations of leather, fur and pelts, and goods made therefrom, namely luggage, trunks and travelling bags, bags, handbags, pocket wallets, purses, key cases, backpacks, pouches, shoulder belts and bandoliers, leather thongs, leather laces, bandoliers, sheets of imitation leather for further processing. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they can coincide in the relevant public and distribution channels.

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

3. The signs

Jake*s	JAXKS
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 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.

The signs can be understood as referring to common names in English speaking countries or by the English-speaking parts of the public, namely as Jake in the earlier trade mark and as Jack in the contested sign. However, those terms are neither common nor meaningful in certain territories, for example, in those countries where English is not a common language or not understood by a significant part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public of France.

The signs are both word marks. The earlier mark consists of the term ’JAKE*S’ and the contested sign consists of the term ‘JAXKS’.

From the perspective of the non-English-speaking part of the public of France, on which the Opposition Division focuses the present comparison, both signs are devoid of any meaning and are therefore distinctive for the goods at issue.

Visually, the signs coincide in four out of five letters, namely in the string of letters ‘JA’-‘K’-‘S’. However, they differ in so far as the earlier trade mark contains the additional elements ‘E*’ and the contested sign the additional letter ‘X’. Both the asterisk and the ‘X’ are rather unusual elements in the overall composition of each sign. The ‘X’ may even imperfectly recall the asterisk.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters /JA/-/K/-/S/, present identically in both signs. The earlier trade mark will be pronounced with a break as between two words where the asterisk is positioned. The latter will not be pronounced by the French public, since it will be understood as a merely fancy non-verbal element of the sign. Although it could be argued that the combination ‘XKS’ could be pronounced as repeating the sound of /KS/ twice, this would be too unusual for a French speaker. Thus, the first /KS/-sound of the X will be omitted. In this sense, the earlier trade mark will be pronounced as /JAK/-/ES/, while the contested sign will be pronounced as /JAKS/. The predominating sound of both signs will be the string of consonants /J/-/K/-/S/.  

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

Conceptually, neither of the signs has a meaning for the non-English-speaking part of the public of France. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

4. 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 in the present case (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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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 higher degree of similarity between signs may be offset by a lower degree of similarity between goods and services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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).

The present assessment of likelihood of confusion focuses on the perception of the non-English-speaking part of the French public in the relevant territory. The relevant public consists of the public at large. As concluded above, the contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services. The degree of attention is average.

Generally in clothes shops customers can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the different verbal elements are particularly relevant when assessing the likelihood of confusion between them.

The signs in conflict are visually and aurally similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs, as explained in detail above in section c) of this decision. The differences between the signs are not sufficient to counteract their similarities. This is, in particular, justified by the fact that the signs coincide in four out of five letters, namely in the string of letters ‘JA’-‘K’-‘S’. The distinctive role lies in the string of consonants /J/-/K/-/S/ at the beginning, in the middle and the ending of both signs. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product line or to endow a trade mark with a new, fashionable image. Therefore, in spite of the differences in the word elements, there is a likelihood of confusion because the visual coincidences are overwhelming.

The applicant refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the 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. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, since they do not consider the perspective of the non-English-speaking public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the French public in the relevant territory 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 and services 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 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 mark due to its 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 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 sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Sigrid DICKMANNS

Frank MANTEY

Martin EBERL

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.