OPPOSITION No B 2 516 808

Hope Stockholm Ab, Gävlegatan 12 A, 11330 Stockholm, Sweden (opponent), represented by Magnusson Advokatbyrå Ab, Stora Nygatan 29, 404 30 Gothenburg, Sweden (professional representative)

a g a i n s t

Nm Hope Limited, Stoney Croft, Whitchurch Hill, Whitchurch-on-Thames, Oxfordshire RG8 7NT, United Kingdom, (applicant), represented by Keltie Llp, No. 1 London Bridge, London  SE1 9BA, United Kingdom (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 516 808 is partially upheld, namely for the following contested goods and services:

Class 4:         Scented candles.

Class 14:         Jewellery, watches, clocks.

Class 18:         Attaché cases, business card holders, card wallets, key cases, jewellery rolls, leather pouches; bags, handbags, luggage, suitcases, purses, wallets.

Class 20:         Furniture, mirrors, picture frames, bottle racks, wine racks, cushions, boxes, storage boxes, figurines and statuettes of wood, wax, plaster or plastics, plaques, works of art made of plaster, wax, wood or plastic.

Class 24:         Bedlinen, table linen, bathroom linen, cushion covers, napkins, placemats of textile, towels, pillow cases, duvet covers, bedsheets, throws, blankets, curtains, blinds.

Class 25:         Clothing, headwear, footwear.

Class 27:         Wallpaper; textile wallpaper; wallpaper; wall and ceiling coverings; insulating wallpaper; plastic wall coverings; vinyl wall coverings; wall coverings of paper; non-textile wall coverings; non-textile wall hangings; handcrafted non-textile wall hangings; carpets, rugs, mats and matting.

Class 35:         Retail services in the field of jewellery; retail services in the field of small articles of leather or imitation leather, namely bags, handbags, luggage, purses, wallets; retail services in the field of furniture, mirrors, picture frames; retail services in the field of bed linen, table linen, bathroom linen, cushion covers, napkins, placemats of textile, towels, pillow cases, duvet covers, bedsheets, throws, blankets, curtains, blinds; retail services in the field of clothing, headwear, footwear  

2.        European Union trade mark application No 13 534 003 is rejected for all the above goods and services. 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 13 534 003 ‘HOUSE OF HOPE’. The opposition is based on, inter alia, European Union trade mark registration No 3 593 035 ‘HOPE by Ringstrand & Söderberg’ and European Union trade mark registration No 11 250 867 ‘HOPE’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY NOTE

According to Rule 15(2)(c) EUTMIR, the notice of opposition shall contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), and (5) EUTMR are fulfilled.

In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is checked or if they are indicated in any of its annexes or supporting documents.

According to Rule 17(2) EUTMIR, if the notice of opposition does not contain grounds for opposition in accordance with Rule 15(2)(c) EUTMIR, and if those deficiencies have not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

In the present case, the contested EUTMA No 13 534 003 was published on 02/02/2015 and the opposition period expired on 02/05/2015.

The opponent filed its notice of opposition on 30/04/2015 and clearly invoked three earlier registered marks, EUTM No 3 593 035, EUTM 11 250 867 and SE No 347 884 as basis of the opposition, indicating Articles 8(1)(a) and (b) EUTMR as the only grounds of the opposition.

However, in its subsequent observations, filed on 02/07/2015, the opponent added a reference to the Swedish registered company names ‘HOPE Production AB’ and ‘Hope Retail AB’ as a further basis of the opposition.

The opponent cannot extend the scope of the opposition after the expiry of the opposition period.  

The later submission, insofar it can be seen as a reference to Article 8(2)(c) in conjunction with Article 8(1)(a) and (b) EUTMR or Article 8(4) EUTMR in respect of the two registered company names, cannot be taken into account as a further grounds and basis since they were not invoked within the opposition period.

PROOF OF USE OF EUROPEAN UNION TRADE MARK NO 3 593 035

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark No 3 593 035.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 02/02/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 02/02/2010 to 01/02/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3:        Soaps, perfumery, essential oils, cosmetics, hair lotions; dentifrices.

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

Class 18:        Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25:        Clothing, footwear and headgear.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 30/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 03/06/2016 to submit evidence of use of the earlier trade mark. On 03/06/2016, within the time limit, the opponent submitted its observations. In these observations they make reference to the evidence of use already submitted on 17/06/2015 and 22/01/2016 in another opposition proceedings, namely in opposition B 2 425 521, which they requested to be considered also for this present opposition.

The evidence to be taken into account consists of the following materials submitted on 22/01/2016, including also materials submitted earlier, on 17/06/2015 (as requested by the opponent):

• Revenue and order values declaration of Hope Production AB CFO J.Henriks. The figures are for the years 2007-2012. The revenue listings include Sweden (15359-45735 thousand SEK); Benelux (731 -4694 thousand SEK), Denmark (3065 – 3465 thousand SEK), Germany (381-2631 thousand SEK) and Italy (622-2075 thousand SEK) without specifying what the products sold were.
• Annual reports of Hope Production AB, Hope Retail AB and Ringstrand & Södeberg AB for 2013. The documents are in Swedish, with no translation provided. In its submissions the opponent remarks that the opponent is a famous clothing brand in Scandinavia selling fashion goods, clothing, jewellery, design furniture and fashion accessories which are sold by over 220 retailers on 22 markets and in their own shops. The 2013 turnover was 71.5 million SEK and in 2012 it was 63.6 million SEK.
• Example of invoices 2007-2012, and 2013-2014 for Sweden, the Benelux, Denmark, Germany and Italy. The invoices bear the opponent’s mark, and also the opponent’s subsidiary’s details. The invoices show the sale of clothing, footwear, headgear items, belts, wallets and bags.
• A document titled ‘Milestones of Hope’s History’. The document includes links and what seem to be press articles. Some materials are in Swedish, with only partial translation of the titles into English, the proceedings language. The applicant expressly requested the translations, while the opponent in its reply insisted that a translation is not necessary as the documents are self- explanatory. The Office will, in the interests of the economy of proceedings, take into account only the parts of the submitted materials which are in English and/or which are self- explanatory. The remaining articles and extracts are from various European press and magazines, also in English, referring to the opposing mark in connection with clothing, footwear and headgear items, belts, wallets and bags.
• An extract from the website www.prv.se, claimed to be the Swedish Patent Office, promoting the opponent’s brand.
• Photos, undated, of the HOPE shops in Sweden, Denmark, the Netherlands. The images show shop interiors with clothing, footwear and headgear items and bags, all on display with the HOPE mark.
• Extracts from web.archive.org for 2011-2014; for 2011 and 2012 it shows the opponent’s website in English, promoting a book and some clothing and footwear items. For 2013 it shows clothing items, belts, wallets, bags and items of jewellery, vases, notebooks, tableware placed next to the HOPE mark. The cosmetics products visible on the site do not bear the opponent’s mark, in fact they are of various other brands such as ‘Standard’ or ‘White’.
• Product catalogues from 2009-2014; the samples show the opponent’s HOPE marks next to or on various types of clothing, footwear and headgear items and accessories, belts, wallets and bags.
• Press reports prepared for the company for individual months of 2010, 2011, 2012, 2013 and 2014. The reports contain cut-out articles from the Swedish press, showing images of clothing items and containing the earlier mark. Included is a press release in English, from 2010 indicating that the opponent has been awarded a Swedish fashion design award “Guldknappen”. The opponent’s PR company’s media report for 2011 gives details about media coverage and circulation within the media where the opponent’s marks have appeared, giving also examples of photos and used articles.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely the invoices and press articles featuring the mark and the goods, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The Opposition Division has carefully examined the presented materials and arguments of both parties. The materials presented show that the mark was used sufficiently over the relevant years for clothing, footwear and headgear items, jewellery, wallets, belts and bags of different types, including travelling bags. This is evident from the invoices which bear the opponent’s mark and English entries referring to such items. It is also evident in the press articles which show fashion models wearing such goods and displaying the opponent’s mark. Despite the arguments of the applicant that the press articles are not translated, the Opposition Division finds the images and the marks displayed to be sufficient. Viewing all the materials presented as a whole, the evidence gives sufficient proof that the earlier mark has been used.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates to Sweden, Benelux, Denmark, Germany and Italy. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case the evidence shows genuine use of the trade mark only for the following goods:

Class 14:        Jewellery.

Class 18:        Wallets, belts, bags; travelling bags.

Class 25:        Clothing, footwear and headgear.

Therefore, regarding earlier European Union trade mark No 3 593 035, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM No 3 593 035 and EUTM No 11 250 867.

1. The goods and services

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

EUTM No 3 593 035

Class 14:        Jewellery.

Class 18:        Wallets, belts, bags;  travelling bags.

Class 25:        Clothing, footwear and headgear.

EUTM No 11 250 867

Class 4:         Industrial oils and greases; Lubricants; Dust absorbing, wetting and binding compositions; Fuels (including motor spirit) and illuminants; Candles and wicks for lighting.

Class 20:         Furniture, mirrors, picture frames; Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21:         Household or kitchen utensils and containers; Combs and sponges; Brushes (except paint brushes); Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); Glassware, porcelain and earthenware not included in other classes.

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

The contested goods and services are the following:

Class 3:         Cosmetics, toiletries, perfumery.

Class 4:         Scented candles.

Class 9:         Sunglasses; glasses, spectacles, sound and video recordings; electronic publications.

Class 14:         Jewellery, watches, clocks.

Class 16:         Printed matter, printed publications, stationery, instructional and teaching materials, pictures, paintings; passport holders.

Class 18:         Attaché cases, business card holders, card wallets, key cases, jewellery rolls, leather pouches; bags, handbags, luggage, suitcases, purses, wallets, umbrellas.

Class 20:         Furniture, mirrors, picture frames, bottle racks, wine racks, cushions, boxes, storage boxes, figurines and statuettes of wood, wax, plaster or plastics, plaques, works of art made of plaster, wax, wood or plastic.

Class 24:         Bedlinen, table linen, bathroom linen, cushion covers, napkins, placemats of textile, towels, pillow cases, duvet covers, bedsheets, throws, blankets, curtains, blinds.

Class 25:         Clothing, headwear, footwear.

Class 27:         Wallpaper; textile wallpaper; wallpaper; wall and ceiling coverings; insulating wallpaper; plastic wall coverings; vinyl wall coverings; wall coverings of paper; non-textile wall coverings; non-textile wall hangings; handcrafted non-textile wall hangings; carpets, rugs, mats and matting.

Class 35:         Retail services and on-line retail services in the field of cosmetics, toiletries, preparations for the care of the skin and hair, perfumery; retail services in the field of sunglasses, glasses, spectacles, sound and video recordings, electronic publications; retail services in the field of apparatus and instruments for heating, cooling, chilling, warming; retail services in the field of jewellery, watches, clocks; retail services in the field of printed matter, printed publications, stationery, instructional and teaching materials, pictures, paintings; retail services in the field of small articles of leather or imitation leather, namely, bags, handbags, luggage, suitcases, purses, wallets, umbrellas; retail services in the field of furniture, mirrors, picture frames, bottle racks, wine racks, cushions, boxes, storage boxes, figurines and statuettes of wood, wax, plaster or plastics, plaques, works of art made of plaster, wax, wood or plastic; wastepaper baskets, storage boxes, statuettes and figurines of glass, ceramic, earthenware, china or porcelain; retail services in the field of bed linen, table linen, bathroom linen, cushion covers, napkins, placemats of textile, towels, pillow cases, duvet covers, bedsheets, throws, blankets, curtains, blinds; retail services in the field of clothing, headwear, footwear; retail services in the field of wallpaper, wall and ceiling coverings, wall hangings, carpets, rugs, mats and matting.

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 ‘namely’, used in the applicant’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 3

Cosmetics, toiletries, perfumery have different nature, purpose and methods of use compared to all the goods of the opponent. The contested goods are beauty products applied on a human body, which is not, however a case with any of the opponent’s goods. The goods have different manufacturers. They are not complementary nor in competition. The goods are dissimilar.

Contested goods in Class 4

The contested Scented candles are included in the broad category of the opponent’s candles. Therefore, they are identical.

Contested goods in Class 9

Sunglasses; glasses, spectacles, sound and video recordings; electronic publications have different nature, purpose and methods of use compared to all the goods of the opponent. The goods have different manufacturers. They are not complementary nor in competition. The goods are dissimilar.

Contested goods in Class 14

Jewellery is identically contained in both lists of goods.

The contested watches, clocks are similar to a high degree to the opponent’s jewellery, as they have the same nature. They can coincide in producer, end user and distribution channels.

Contested goods in Class 16

Printed matter, printed publications, stationery, instructional and teaching materials, pictures, paintings; passport holders have different nature, purpose and methods of use compared to all the goods of the opponent. The goods have different manufacturers, are not complementary nor in competition. The goods are dissimilar.

Contested goods in Class 18

The contested attaché cases, leather pouches, handbags, purses are included in the broad term bags of the opponent. These goods are identical.

The contested bags; wallets are included in both lists of goods and are identical therefore.

The contested card wallets are included in the broad category of opponent’s wallets. The goods are identical.

The contested business card holders, key cases; jewellery rolls are similar to the opponent’s bags. They have the same function, of holding something, can coincide in manufacturers, distribution channels and users.

The contested luggage overlap with the opponent’s travelling bags since the goods are essentially the same or synonyms to each other. Therefore, they are identical.

The contested Suitcases are similar to a high degree to the opponent’s travelling bags  because they are different in form, one is a case while the other is a bag. However the goods share the same purpose, method of use, producers, users  and distribution channels.

The contested umbrellas are goods to protect oneself from rain. They have different nature, purpose and methods of use compared to all the goods of the opponent. The goods have different manufacturers, are not complementary nor in competition. The goods are dissimilar.

Contested goods in Class 20

Furniture, mirrors, picture frames are identically contained in both lists of goods.

The contested bottle racks, wine racks, cushions, boxes, storage boxes are household furniture and furnishing goods. They are similar to the opponent’s Furniture, as they may coincide in nature, methods of use and manufacturers. They may have the same distribution channels and users.

 

The opponent’s goods  Goods (not included in other classes) of wood and substitutes for all these materials, or of plastics and the contested goods figurines and statuettes of wood, wax, plaster or plastics, plaques, works of art made of plaster, wax, wood or plastic coincide in their nature. Their purpose, in the broadest sense, may also be the same as to decorate living/working space. To that extent these goods are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its goods, it cannot be assumed that they coincide in other criteria.

Contested goods in Class 24

Table linen is identically contained in both lists of goods (including synonyms).

The contested bedlinen, bathroom linen, cushion covers, napkins, placemats of textile, towels, pillow cases, duvet covers, bedsheets, throws, blankets, curtains, blinds are included in the broad category of, or overlap with, the opponent’s textile goods, not included in other classes since they cover all goods made of textile. Therefore, they are identical.

Contested goods in Class 25

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

Contested goods in Class 27

The contested Wallpaper; textile wallpaper; wallpaper; wall and ceiling coverings; insulating wallpaper; plastic wall coverings; vinyl wall coverings; wall coverings of paper; non-textile wall coverings; non-textile wall hangings; handcrafted non-textile wall hangings; carpets, rugs, mats and matting are similar to Furniture in class 20 as they have the same purpose (namely that of furnishing and decorating home as carpets, rugs, mats, various materials for covering floors, non-textile wall hangings and furniture are often matched to harmonise the overall appearance of the house). Furthermore, they can coincide in end user and distribution channels.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as 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.

Therefore, the contested retail services in the field of jewellery; retail services in the field of small articles of leather or imitation leather, namely bags, handbags, luggage,  purses, wallets; retail services in the field of furniture, mirrors, picture frames; retail services in the field of bed linen, table linen, bathroom linen, cushion covers, napkins, placemats of textile, towels, pillow cases, duvet covers, bedsheets, throws, blankets, curtains, blinds; retail services in the field of clothing, headwear, footwear  are similar to a low degree to the opponent’s respective goods in classes 14, 18, 20, 24, 25.

The remaining retail services in the field of watches, clocks; retail services in the field of bottle racks, wine racks, cushions, boxes, storage boxes, figurines and statuettes of wood, wax, plaster or plastics, plaques, works of art made of plaster, wax, wood or plastic; wastepaper baskets, storage boxes, statuettes and figurines of glass, ceramic, earthenware, china or porcelain; retail services in the field of small articles of leather or imitation leather, namely suitcases; retail services and on-line retail services in the field of cosmetics, toiletries, preparations for the care of the skin and hair, perfumery; retail services in the field of sunglasses, glasses, spectacles, sound and video recordings, electronic publications; retail services in the field of apparatus and instruments for heating, cooling, chilling, warming; retail services in the field of printed matter, printed publications, stationery, instructional and teaching materials, pictures, paintings; retail services in the field of umbrellas; retail services in the field of wallpaper, wall and ceiling coverings, wall hangings; retail services in the field of carpets, rugs, mats and matting and the opponent’s goods are not similar. 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 products, 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 complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.

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 and services found to be identical or similar to various degrees are directed at the public at large. The degree of attention ranges from average to high, depending on the nature of the goods (high for expensive jewellery items). In its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

3. The signs

EUTM No 3 593 035 ‘HOPE by Ringstrand & Söderberg’ EUTM No 11 250 867 ‘HOPE’	HOUSE OF HOPE
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Swedish, Danish and German-speaking part of the relevant public.

The earlier marks are word marks. They both contain a distinctive English word HOPE, which is understood in all the relevant territories (26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23) as ‘a feeling of desire for something and confidence in the possibility of its fulfilment’ (Collins dictionary, 12/09/2017 www.collinsdictionary.com). It can also be a female first name. The earlier mark a) contains additional elements ‘by Ringstrand & Söderberg’, which are two relatively common Swedish surnames. These surnames are perceived and understood as referring to the designer or manufacturer of the products (as can be understood when reading the word ‘by’). There are no elements which are more distinctive than others in the earlier marks.

The contested sign is a word mark. It contains a word HOPE which is understood, as explained above. It also includes words ‘HOUSE of’ which means ‘a commercial company; firm’; building used for some specific purpose; (Collins dictionary, 12/09/2017 www.collinsdictionary.com). The whole mark can be understood therefore as ‘suppliers or a company called Hope’. There are no elements which are more distinctive than others in the contested sign.

Visually and aurally, the signs coincide in the element HOPE. This is the only element in earlier mark b).  The marks differ in the remaining word elements in marks a) and in the contested mark, as seen above.

Therefore, the signs are similar to an average degree.

Conceptually, the public in the relevant territory will perceive the signs as explained above in respect of the element HOPE. The additional elements in the earlier sign a) and in the contested sign are perceived with the meaning given above. The marks are conceptually similar to 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.

4. Distinctiveness of the earlier marks

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

5. Global assessment, other arguments and conclusion

The goods and services have been found to be partially identical, partially similar and partially dissimilar. The similarities and dissimilarities of the marks have been established.

The signs have been found to be similar to the extent that they have in common the element HOPE.

The visual and aural similarities are reinforced by the conceptual similarities and vice versa. The word HOPE is the only element in the earlier mark b) and the first element in the earlier mark a). In the earlier mark a) the remaining elements, namely the words ‘by Ringstrand & Söderberg’ both of which are two relatively common Swedish surnames, are perceived and understood as referring to the designer or manufacturer / supplier of the products under the mark HOPE (as can be understood when reading the word ‘by’). The same applies to the first words ‘HOUSE of’ in the contested mark, referring to a manufacturer or supplier of products labelled with a HOPE mark. It is common in the (fashion, design) industry to have a brand name, which is then followed by the names of the designers or the company or preceded by a term ‘HOUSE of’. The consumer is likely to focus more on the element HOPE, that would be seen as identifying the specific product line, rather than on the elements [Ringstrand & Söderberg] that would be perceived (because it is preceded by ‘by’) or ‘House of’ as identifying the company or persons that has control of the manufacturing of products concerned.

Moreover, the signs, in view of the coinciding element HOPE, could be perceived as different product lines coming from the same undertaking or economically-linked undertakings. This is equally true in relation to the services found to be similar to a low degree, for which the lesser degree of similarity will be offset by the clear associations generated by virtue of the coinciding distinctive elements ‘HOPE’.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

In its observations, the applicant argues that the earlier trade marks have a low distinctive character given that there are many trade marks that include element HOPE. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include HOPE. Under these circumstances, the applicant’s claims must be set aside.

The applicant also refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings as the signs are not comparable or there are other factors which are different from the present case. 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Swedish, Danish and German-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s two European Union trade mark registrations. 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, including similar to a low degree, to those of the earlier trade marks.

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 marks, 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 sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on Swedish trade mark registration No 347 884 for the mark . This mark covers the same scope of goods in Class 25 Clothing, footwear, headwear, gloves, and bags in class 18, than the marks with which the opposition has already been examined, and which are obviously dissimilar to the goods and services for which the opposition has already been rejected. Therefore, the outcome cannot be different on the basis of the earlier Swedish trade mark registration with respect to goods and services for which the opposition has already been rejected. Consequently, no likelihood of confusion exists with respect to those goods and services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services are obviously not identical.

 

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

Irina SOTIROVA

Erkki MÜNTER

Loreto URRACA LUQUE

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.