OPPOSITION No B 2 771 577

Water Sprite Limited, 5-6 Back Dragon Terrace, Harrogate, North Yorkshire HG1 5DN, United Kingdom (opponent), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, Leeds Leeds LS2 8PA, United Kingdom (professional representative)

a g a i n s t

Piazza Castello s.r.o, Sturova 2, 04001 Kosice, Slovakia (applicant).

On 28/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 771 577 is partially upheld, namely for the following contested goods:

Class 18:        Bags, wallets and other carriers.

Class 24:        Woolen blankets; shirt fabrics; fabrics.

Class 25:        Knitwear [clothing]; neck scarfs [mufflers]; clothing; childrens' clothing; gloves; hats; slippers; briefs [underwear]; shoes; shirts.

2.        European Union trade mark application No 15 547 491 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 547 491 for the word mark ‘N.PEAL’. The opposition is based on European Union trade mark registration No 4 364 493 for the word mark ‘N.PEAL’ with regard to which the opponent invoked Article 8(1)(a) and (b) and 8(5) EUTMR and on the United Kingdom non-registered trade mark ‘N.PEAL’ with regard to which the opponent invoked 8(4) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR − EUROPEAN UNION TRADE MARK No 4 364 493

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 25:        Clothing, including sweaters, pullovers, cardigans, shirts, jackets, skirts, dresses, kilts, trousers, ties, cravats, foulards, dressing gowns; footwear, including socks, leg warmers; stoles, scarves, pashminas, shawls, gloves, belts, braces; headgear.

Class 35:        The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods by means of telecommunications or in a retail clothes store.

The contested goods are the following:

Class 18:        Luggage, bags, wallets and other carriers.

Class 24:        Woolen blankets; shirt fabrics; fabrics.

Class 25:        Knitwear [clothing]; neck scarfs [mufflers]; clothing; childrens' clothing; gloves; hats; slippers; briefs [underwear]; shoes; shirts.

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 ‘including’, used in the opponent’s list of goods in Class 25, 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).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 18

The contested bags, wallets and other carriers may be related to articles of clothing in Class 25. This is because consumers are likely to consider some of the goods of Class 18 as accessories that complement clothing products as the former are closely co-ordinated with the latter. It must be noted that the contested other carriers cover goods such as coin purses, credit card holders or cases for holding keys that are considered as accessories that complement clothing items. Furthermore, the applicant’s bags, wallets and other carriers may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing to directly produce and market such related goods. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar to the opponent’s clothing in Class 25.

The contested luggage are for carrying things when travelling and do not satisfy the same needs as the opponent’s clothing in Class 25. They serve very different purposes. They do not usually have the same retail outlets and are not usually made by the same manufacturers. Moreover, the goods are neither in competition nor complementary. Moreover, these goods have no connection with the opponent’s services in Class 35, namely the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods by means of telecommunications or in a retail clothes store because these services are related to the sale of a variety of goods. Indeed, sale 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, these goods and services have different methods of use and are neither in competition nor necessarily complementary. Therefore, the contested luggage is dissimilar to the opponent’s goods and services in Classes 25 and 35.

Contested goods in Class 24

The contested woolen blankets are large pieces of woven cloth, intended to keep the user warm, traditionally while sleeping or lying down. The contested shirt fabrics; fabrics are cloth or other material produced by weaving together cotton, nylon, wool, silk, or other threads. Fabrics are used for making things such as clothes, curtains, and sheets. The main point of contact between the contested goods in Class 24 and the opponent’s clothing in Class 25 is that they are made of textile material. However, this is not enough to justify a finding of similarity. They serve completely different purposes: clothing is meant to be worn by people, for protection and/or fashion, whereas the contested textile goods in Class 24 are mainly for household purposes and interior decoration. 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. Moreover, these goods have no connection with the opponent’s services in Class 35 for the reasons explained in the previous comparison. Therefore, these goods and services are considered dissimilar.

Contested goods in Class 25

Clothing is identically contained in both lists of goods.

The contested knitwear [clothing]; neck scarfs [mufflers]; childrens' clothing; gloves; briefs [underwear]; shirts are included in the broad category of the opponent’s clothing. Therefore, they are identical.

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

The contested slippers; shoes are included in the broad category of the opponent’s footwear. Therefore, they are identical.

2. The signs

N.PEAL	N.PEAL
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods, namely the goods in Class 25 are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

Furthermore, the contested bags, wallets and other carriers in Class 18 were found to be similar to the goods covered by the earlier European Union trade mark No 4 364 493. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods.

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

REPUTATION – ARTICLE 8(5) EUTMR− EUROPEAN UNION TRADE MARK No 4 364 493

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

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.

1. Reputation of the earlier trade mark

According to the opponent, earlier European Union trade mark No 4 364 493 has a reputation in the United Kingdom.

Reputation implies a knowledge threshold which 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 15/06/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the United Kingdom prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely;

Class 25:        Clothing, including sweaters, pullovers, cardigans, shirts, jackets, skirts, dresses, kilts, trousers, ties, cravats, foulards, dressing gowns; footwear, including socks, leg warmers; stoles, scarves, pashminas, shawls, gloves, belts, braces; headgear.

Class 35:        The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods by means of telecommunications or in a retail clothes store.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 07/04/2017 the opponent submitted the following evidence:

• Witness statement of Margaret Louise Kleppen, the opponent’s Finance Director. This document states the following: ‘my Company partnered with Chic Outlet Shopping on 22 September 2008. Chic Outlet Shopping operates 11 shopping villages in Europe that offer a unique collection of luxury boutiques. My Company operates stores in Bicester Village (London), Kildare Village (Ireland) and Ingolstadt Village (Germany)’.It includes a table with approximate figures of the total turnover under the N.Peal Brand from 2010 to 2015:

Another table refers to the units and retail value of products sold under the N.PEAL trade mark, separated into categories:

According to this document, the total amount spent on advertising, marketing and brand design in 2016 was more than £250,000.

• Copy of the Incorporation Certificate for the opponent dated 27/04/2016.

• Copy of the Assignment document by which the opponent acquired the brand ‘N.PEAL’ on 27/04/2016.

• Images of the opponent’s five stores located in Burlington Arcade, Harriet Street Knightsbridge, Brook Street Mayfair, Sloane Street and St. James’s Piccadilly in London.

• Images of other stores operated in partnership with Chic Outlet Shopping, namely: in Bicester Village (London), Kildare Village (Ireland) and Ingolstadt Village (Germany).

• Copies of eleven invoices addressed in 2015 or 2016: some to wholesalers across multiple European countries and others are invoices of goods ordered online. These invoices are addressed to clients in Switzerland, France, the Czech Republic, the United Kingdom, Sweden, Spain, Germany and one with an unknown destination. The products sold are mainly sweaters, cardigans, polo’s, capes, joggers, teddies, cushions, shawls, slippers, skirts and hats.

• Screenshots of ‘N.PEAL’ products sold from websites such as Harvey Nichols, Farfetch and Outnet. The websites of these companies show ‘N.PEAL’ products, namely different items of clothing.

• Screenshots from the ‘N.PEAL’ website showing the ‘N.PEAL’ home page showing a few pictures of cashmere knitwear items for men and women as well as how orders are placed.

• Examples of the packaging of the opponent’s products as well as photographs of products available under the ‘N.PEAL’ brand, such as a fur, knitted fur blanket, pyjama, slippers, cashmere sweaters and sweatshirts, teddy bear, fur hot water bottle cover.

• Screenshots from the opponent’s website showing use of the ‘N.PEAL’ mark. Also exhibited an extract from ICANN WHOIS showing that the domain name www.npeal.com was first registered in May 1997 and is now owned by N.Peal (Retail) Limited.

• Extracts from the Wayback Machine, the Internet archive database, showing snapshots of the ‘N.PEAL’ website from 2000, 2005, 2011 and 2016. The images show cashmere knitwear items for men and women and throws.

• Google Analytics for www.npeal.com showing the number of sessions, the geographical location of website visitors and the number of transactions on the opponent’s website between 2014 and 2016: a total of 9146 transactions in 2016 with 53.27% in the United Kingdom.

• Selection of advertisements and brochures promoting the ‘N.PEAL’ mark. These include a brochure from the Italian magazine ‘Class’ dated December 2016; an article from ‘Vestirse por los Pies’ dated March 2016; an article from ‘The Times newspaper’ in July 1966; articles from the Dove section of ‘Corriere della Sera’ in 2016; an article from ‘The Lady’ dated December 2016 and an interview in ‘The Times’ magazine in both paper and online format dated October 2015.

• Images of the celebrity Craig David in ‘N.PEAL’ products.

• Images and screenshots of famous people wearing ‘N.PEAL’ products such as Marilyn Monroe, Jackie Kennedy and Princess Diana, Kate Moss and Olivia Palermo.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

As far as the probative value of the witness statement of the opponent’s Finance Director is concerned, it must be noted that statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use and/or reputation, since such statements have to be considered as having less probative value than evidence originating from independent sources. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Despite showing serious use of the trade mark, the evidence does not provide sufficient indication of the degree of recognition of the trade mark by the relevant public. The figures related to the sales, marketing and advertising of the opponent’s products or to the number of visitors and transactions of the opponent’s website are not particularly high and are, in any case, insufficient on their own to prove the reputation of the earlier mark, all the more so because they are not supported by documents originating from independent sources.

Nor can the Opposition Division assess the degree of recognition of the earlier mark from images of famous people wearing opponent’s clothing as no specific and objective information on its impact on the consumers has been provided. It must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the facts, 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. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (BoA, 06/11/2014, R 0437/2014-1, SALSA/SALSA (fig.) et al.).

The evidence does not indicate the market share of the trade mark. No information is given about competitors. The trade mark has been promoted but the figures of marketing and advertising are not particularly high as, according to the opponent’s Finance Director, they amounted to £250,000 in 2016. Furthermore, this figure has been provided only for one year and no independent evidence accredits it. As a result, no conclusion can be drawn with a fair degree of accuracy and the evidence does not show the degree of recognition of the trade mark or, at least, that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

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

The examination must proceed with respect to the claim of Article 8(4) EUTMR for the remaining contested goods considered dissimilar under the claim of Article 8(1)(b) EUTMR.

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

The opponent based its opposition on the earlier non-registered mark ‘N.PEAL’ used in the course of trade in the United Kingdom.

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.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 15/06/2016. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the United Kingdom prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for clothing; footwear; headgear; bags; home accessories, such as cushions, blankets, throws; plush toys; retail services connected with the sale of clothing, footwear, headgear, bags and home accessories.

On 07/04/2017 the opponent filed the evidence already listed and described under the section examining the reputation of the earlier mark under the ground of Article 8(5). Reference is made to the previous assertions. However, some aspects related to the evidence must be examined in more details at this stage.

The invoices show that the place of use is the United Kingdom. This can be inferred from the language of the documents (English), the currency mentioned (pounds) in some documents and addresses throughout the United Kingdom.

The evidence is mainly dated before the relevant date.

The evidence, such as the invoices and brochures shows that the opponent’s sign has been used over a sufficiently long period as a trade mark.

Furthermore, the invoices 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 sign at issue was of more than mere local significance as can be seen from the addresses indicated in the invoices and the amount of sales.

However, the evidence does not succeed in establishing that the sign has 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 knitwear clothing; slippers; hats; cushions, blankets, throws, teddy bears; all these goods in cashmere as well as retail services connected with the sale of knitwear clothing, slippers, hats, cushions, blankets, throws, teddy bears, all these goods in cashmere which are subcategories of the broad categories of goods and services on which the opposition is based. However, there is no or little reference to the remaining goods and services.

The Opposition Division concludes, therefore, that the opponent’s sign was used in the course of trade of more than local significance in the United Kingdom for knitwear clothing; slippers; hats; cushions, blankets, throws, teddy bears; all these goods in cashmere as well as for retail services connected with the sale of knitwear clothing, slippers, hats, cushions, blankets, throws, teddy bears, all these goods in cashmere.

The right under the applicable law – Passing off

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 originate from the opponent. In other words, the public would be likely to believe that goods 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.

The evidence submitted by the opponent to prove goodwill is the same as that already examined under the claim of Article 8(5) EUTMR.

Goodwill is what can accrue to a business or sign used in the course of trade as a result of the positive reputation that it has acquired. It has been referred to as ‘the attractive force which brings in custom’ (see IRC v Muller’s Margarine [1901] A. A. 217 at 233) and is ‘what adds value to a business by reason of situation, name and reputation, connection, introduction to old customers, and agreed absence from competition, or any other things’ (Lord Lindley cited by Byrne J. in Rickersby v Reay [1903] 20 R.P.C. 380). An assertion of this property right does not require establishing a reputation for a brand name or get-up, but goodwill attached to the goods and services which are supplied by association with the identifying name or get-up: ‘It is well settled that (unless registered as a trade mark) no one has a monopoly in his brand name or get up, however familiar these may be. Passing off is a wrongful invasion of a right of property vested in the plaintiff; but the property which is protected by an action for passing off is not the plaintiff’s proprietary right in the name or get up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant’s misrepresentation’ (Harrods Limited v. Harrodian School Limited [1996] RPC 679).

Goodwill is normally proved by evidence of trading activities, advertising, consumers’ accounts, etc. Genuine trading activities, which result in acquiring reputation and gaining customers, are usually sufficient to establish goodwill.

The ‘reputation’ often referred to in relation to passing off does not necessarily have the same content as ‘reputation’ within the meaning of Article 8(5) EUTMR. The English Courts are very unwilling to assume that a business can have no customers and, thus, no goodwill. Even small businesses can have goodwill. The level of goodwill is low only where the nature of the business is transient as for example in the case of a mobile fish and chip shop (Stannard v Reay [1967] R.P.C. 589; The Law of Passing Of, Wadlow, Sweet & Maxwell 2004). The standard of proof under English law is not the same as in the case of, e.g. acquired distinctiveness (Phones 4U Ltd v Phones4u.co.United Kingdom Internet Ltd [2007] R.P.C. 5).

In the case at hand, the opponent has demonstrated use of the non-registered mark ‘N.PEAL’ in relation to knitwear clothing; slippers; hats; cushions, blankets, throws, teddy bears; all these goods in cashmere as well as retail services connected with the sale of knitwear clothing, slippers, hats, cushions, blankets, throws, teddy bears, all these goods in cashmere. The ‘N.PEAL’ brand is clearly the sign under which the goods and services are provided and to which goodwill attaches.

2. The opponent’s right vis-à-vis the contested trade mark

The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent

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.

Therefore, a comparison of the signs is required.

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 to the goods and services for which the opponent has shown that it has acquired goodwill through use.

1.        The goods and services

The opponent’s non-registered trade mark has acquired goodwill through use for:

Knitwear clothing; slippers; hats; cushions, blankets, throws, teddy bears; all these goods in cashmere as well as retail services connected with the sale of knitwear clothing, slippers, hats, cushions, blankets, throws, teddy bears, all these goods in cashmere.

The opposition is directed against the remaining goods of the contested trade mark:

Class 18:        Luggage.

Class 24:        Woolen blankets; shirt fabrics; fabrics.

Contested goods in Class 18:

The contested luggage and the opponent’s goods and services have different natures and methods of use. They do not satisfy the same needs and serve very different purposes. They do not usually have the same commercial origin and are not directed at the same end users. Moreover, the goods are neither in competition nor complementary. These goods and services are dissimilar.

Contested goods in Class 24:

The contested woolen blankets include, as a broader category, the opponent’s blankets […] in cashmere. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested shirt fabrics; fabrics are similar to a low degree to the opponent’s throws […] in cashmere as they have the same nature. They can also coincide in end users and distribution channels.

2.        The signs

N.PEAL	N.PEAL
Earlier sign	Contested sign

The signs are identical.

3.        Global assessment of the conditions under the applicable law

It follows from the above that some of the goods applied for, namely luggage in Class 18, 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 applicant’s goods for those of the opponent even if the signs are identical. There is a high degree of dissimilarity and this large gap makes it unlikely that consumers in the United Kingdom perceive the applicant’s luggage as originating from the opponent who is specialised in cashmere articles. Therefore, the opposition is not well founded under Article 8(4) EUTMR as far as these goods are concerned.

As regards the goods found to be identical or similar to a low degree, given that the signs are identical, the Opposition Division finds that there is a risk that these goods will be taken to be the opponent’s.

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

The opponent’s customers are likely to perceive the applicant’s goods considered identical or similar to a low degree as originating from the opponent.

While this does not necessarily lead to damage being caused in all possible cases, damage is the most likely result whenever, as in the present case, the opponent has demonstrated that it enjoys goodwill in the earlier sign and the contested sign is identical to the opponent’s mark, thus leading consumers to attribute the contested sign to the applicant. The opponent is not obliged to prove that it has suffered actual damage. It is sufficient that damage is likely. A misrepresentation which leads the relevant public to believe that the applicant’s goods are the opponent’s is intrinsically likely to damage the opponent if the fields of business of the parties are reasonably close. In the present case, it has been concluded that some of the goods in question are identical or similar to a low degree and that the opponent’s customers may consider the goods offered by the applicant under the contested trade mark as originating from the opponent.

Under those circumstances, it is likely that the opponent would lose sales because its customers – who intend to buy its goods – would erroneously buy the applicant’s goods.

The Opposition Division considers that, in the absence of any indications to the contrary, the opponent is likely to suffer damage.

3. Conclusion

Considering all the above, the Opposition Division finds that the opposition is well founded under Article 8(4) EUTMR on the basis of the opponent’s earlier sign insofar as it is directed against the following goods:

Class 24:        Woolen blankets; shirt fabrics; fabrics.

The opposition is not successful insofar as the remaining goods are concerned, namely luggage in Class 18.

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

The Opposition Division

Boyana NAYDENOVA

Benoit VLEMINCQ

Martina GALLE

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.