OPPOSITION No B 2 466 277

WE Brand S.à.r.l., 31-33 Avenue Pasteur, 2311 Luxembourg, Luxembourg (opponent), represented by Nauta Dutilh N.V., Beethovenstraat 400, 1082 PR Amsterdam, The Netherlands (professional representative)

a g a i n s t

Ricamificio Marini di Marini Franco e Ciprietti Bruna S.N.C., Zona Artigianale Frazione Colleranesco, 64021 Giulianova, Italy (applicant), represented by Ing. Claudio Baldi S.R.L., Viale Cavallotti, 13, 60035 Jesi (Ancona), Italy (professional representative).

On 14/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 466 277 is partially upheld, namely for the following contested goods:

Class 25:         Clothing; pullovers; cardigans; waistcoats; gowns; pants (Am.); trousers shorts; jumpers; mackintoshes; clothing of leather; stockings; suspender belts for women; sock suspenders; wind resistant jackets; ski trousers; pelisses; evening jackets; topcoats; skirts; gowns; jackets [clothing]; undershirts; tee-shirts; clothing for gymnastics; collars; shirts; scarves; neckerchiefs; swimming costumes; jogging suits; sweat suits; wedding dresses; bath robes; lingerie; brassieres; corsets; slips [undergarments]; pants (Am.); pants (Am.); nighties; house coats; pyjamas; gloves; shawls; sashes for wear; ties; bowties; belts [clothing]; garters.

2.        European Union trade mark application No 13 395 017 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 13 395 017. The opposition is based on European Union trade mark registrations No 7 209 571 for the word mark ‘WE’ and No 960 021 for the figurative mark . 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:

1. European Union trade mark registration No 7 209 571 for the word mark ‘WE’

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

Class 9: Spectacles including sunglasses; spectacle frames; cases and containers for spectacles.

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 including watches.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; umbrellas and parasols; trunks and travelling bags; bags not included in other classes.

Class 25: Clothing, footwear, headgear.

Class 35: Business mediation in the purchase and sale, including within the framework of retailing, of soaps, perfumery, essential oils, cosmetics, hair lotion, eyewear, including sunglasses, optical frames, cases and containers for spectacles, precious metals and their alloys and products made from the aforesaid materials or coated therewith, jewellery, costume jewellery, precious stones, clocks and chronometrical instruments, including watches, leather and imitation leather and products made from the aforesaid materials, umbrellas and parasols, trunks and suitcases, bags, clothing, footwear, headgear; the aforesaid services also offered via electronic channels, including the internet.

2. European Union trade mark registration No 960 021 for the figurative mark

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

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

Class 24: Textiles and textile goods, not included in other classes; blankets and travelling rugs.

Class 25: Clothing, footwear, headgear.

Class 26: Ribbons and braids; buttons, hooks and eyes, pins and needles.

The contested goods are the following:

Class 14: Costume jewellery; Jewellery; Ornaments [jewellery, jewelry (Am.)]; Imitation jewellery ornaments; Dress ornaments in the nature of jewellery; Bracelets [jewellery, jewelry (Am.)]; Earrings; Necklaces; Chains [jewellery]; Rings [jewellery, jewelry (Am.)]; Ornamental pins; Tie pins; Pendants; Cufflinks; Key rings [trinkets or fobs]; Jewellery cases [caskets]; Boxes of precious metal; Statuettes of precious metal; Horological and chronometric instruments; Watches.

Class 18: Hides; Imitation leather; Leather, unworked or semi-worked; Casual bags; Hand bags; Coin purses; Wallets; Credit card holders made of leather; Key bags; Rucksacks; All-purpose athletic bags; Haversacks; Beach bags; Carrying cases for documents; Wheeled shopping bags; Textile shopping bags; Satchels; Briefcases; Gym bags; Holdalls; Sling bags; Fanny packs; Cosmetic bags (empty); Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Leads for animals.

Class 25: Clothing; Pullovers; Cardigans; Waistcoats; Gowns; Pants (Am.); Trousers shorts; Jumpers; Mackintoshes; Clothing of leather; Stockings; Suspender belts for women; Sock suspenders; Wind resistant jackets; Ski trousers; Pelisses; Evening jackets; Topcoats; Skirts; Gowns; Jackets [clothing]; Undershirts; Tee-shirts; Clothing for gymnastics; Collars; Shirts; Scarves; Neckerchiefs; Swimming costumes; Jogging suits; Sweat suits; Wedding dresses; Bath robes; Lingerie; Brassieres; Corsets; Slips [undergarments]; Pants (Am.); Pants (Am.); Nighties; House coats; Pyjamas; Gloves; Shawls; Sashes for wear; Ties; Bowties; Belts [clothing]; Garters; Headgear; Berets; Footwear; Boots; Ankle boots; Leather shoes; Goloshes; Rain boots; Sports shoes; Sandals; Mules; Soles for footwear; Heelpieces for footwear; Footwear uppers.

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 and services, indicates that the specific goods and services 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 (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 14

Jewellery; horological and chronometric instruments are identically contained in the lists of goods of earlier mark 1) and the contested sign.

The contested costume jewellery; ornaments [jewellery, jewelry (Am.)]; imitation jewellery ornaments; dress ornaments in the nature of jewellery; bracelets [jewellery, jewelry (Am.)]; earrings; necklaces; chains [jewellery]; rings [jewellery, jewelry (Am.)]; ornamental pins; tie pins; pendants; cufflinks are included in the broad category of the opponent’s jewellery of earlier mark 1). Therefore, they are identical.

The contested key rings [trinkets or fobs]; jewellery cases [caskets]; boxes of precious metal; statuettes of precious metal are included in the broad category of the opponent’s goods in precious metals or coated therewith, not included in other classes of earlier mark 1). Therefore, they are identical.

The contested watches are included in the broad category of the opponent’s horological and chronometric instruments including watches of earlier mark 1). Therefore, they are identical.

Contested goods in Class 18

Hides; imitation leather; leather, unworked or semi-worked; trunks and travelling bags; umbrellas and parasols are identically contained in the lists of goods of earlier mark 1) and the contested sign (including synonyms).

Walking sticks are identically contained in the lists of goods of earlier mark 2) and the contested sign.

The contested casual bags; hand bags; coin purses; key bags; rucksacks; all-purpose athletic bags; haversacks; beach bags; carrying cases for documents; wheeled shopping bags; textile shopping bags; satchels; briefcases; gym bags; holdalls; sling bags; fanny packs; cosmetic bags (empty) are included in the broad category of the opponent’s bags of earlier mark 1). Therefore, they are identical.

The contested leads for animals; wallets; credit card holders made of leather are included in the broad category of the opponent’s goods made of these materials (leather and imitations of leather) and not included in other classes of earlier mark 1). Therefore, they are identical.

Contested goods in Class 25

Clothing; headgear; footwear are identically contained in the lists of goods of earlier mark 1) and the contested sign.

The contested pullovers; cardigans; waistcoats; gowns; pants (Am.); trousers shorts; jumpers; mackintoshes; clothing of leather; stockings; suspender belts for women; sock suspenders; wind resistant jackets; ski trousers; pelisses; evening jackets; topcoats; skirts; gowns; jackets [clothing]; undershirts; tee-shirts; clothing for gymnastics; collars; shirts; scarves; neckerchiefs; swimming costumes; jogging suits; sweat suits; wedding dresses; bath robes; lingerie; brassieres; corsets; slips [undergarments]; pants (Am.); pants (Am.); nighties; house coats; pyjamas; gloves; shawls; sashes for wear; ties; bowties; belts [clothing]; garters are included in the broad category of the opponent’s clothing of earlier mark 1). Therefore, they are identical.

The contested berets are included in the broad category of the opponent’s headgear of earlier mark 1). Therefore, they are identical.

The contested boots; ankle boots; leather shoes; goloshes; rain boots; sports shoes; sandals; mules are included in the broad category of the opponent’s footwear of earlier mark 1). Therefore, they are identical.

The contested soles for footwear; heelpieces for footwear; footwear uppers are goods used in the production of footwear. The opponent’s leather and imitations of leather in Class 18 of earlier mark 1) can be used to produce a wide variety of goods, including footwear. As these goods can have the same producers, end users and distribution channels, they are considered similar to a low degree.

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 and similar to a low degree are directed at the public at large and at a professional public with specific knowledge and experience.

The public’s degree of attention will vary from average, for example for clothing, to high, for example for jewellery (in 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), depending on the price, sophistication or frequency of purchase of the goods.

3. The signs

WE
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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

Earlier mark 1) is the word mark ‘WE’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are depicted in upper or lower case letters, or in a combination thereof. Earlier mark 2) is a figurative mark composed of the stylised word ‘WE’.

The contested sign is a figurative mark composed of the stylised words ‘We Positive’, and underneath them the word ‘PEOPLE’ in standard upper case letters.

The word ‘WE’, present in all the signs, will be understood by the English- and Dutch-speaking parts of the relevant public as the first-person plural pronoun; for the Dutch-speaking part of the relevant public it is also a basic English word and a first-person plural pronoun used in Dutch. For the remaining part of the relevant public, this word is meaningless.

The applicant argues that the distinctiveness of the word ‘WE’ is very low, as it is commonly used in many expressions and sentences, as well as in numerous commercial and advertising communications. While it is of course true that the word ‘WE’ may sometimes be used in connection with the goods in question as indicating the first person plural, this factor on its own does not make it descriptive or otherwise devoid of distinctive character in relation to the goods that it covers (04/08/2014, R 2305/2013-2, W E (FIG. MARK) / WE, § 48).

The English word ‘POSITIVE’ in the contested sign will be understood as ‘constructive, optimistic, or confident’ not only by not only the English-speaking part of the relevant public but also other significant parts of the relevant public, as the equivalents in many languages are very close to the English word (e.g., ‘positief’ in Dutch, ‘positif/positive’ in French, ‘positiv’ in German, ‘positivo’ in Italian and Spanish). As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The word ‘PEOPLE’ in the contested sign will be understood by the English-speaking part of the relevant public as ‘human beings in general or considered collectively’. The remaining part of the relevant public will perceive it as meaningless. In any case, this word has a normal degree of distinctiveness in relation to the relevant goods.

The contested sign as a whole might be understood by part of the relevant public (mainly the English-speaking public) as ‘we are positive people’.

Taking the above into account, the contested sign has no elements that could be considered clearly more distinctive than other elements.

The elements ‘WE POSITIVE’ in the contested sign are the co-dominant elements as they are the most eye-catching and overshadow the smaller word ‘PEOPLE’ underneath.

Visually, the signs coincide in the word ‘WE’, which is the only element of the earlier marks and the first element of the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, the signs differ in the second word, ‘POSITIVE’, of the contested sign, which has a normal degree of distinctiveness, and in the word ‘PEOPLE’ of the contested sign, which is distinctive but less dominant. The signs further differ in the stylisation of the contested sign, although this is rather standard, and the stylisation of earlier mark 2).

The earlier marks, ‘WE’, are short signs while the contested sign consists of three words. The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllable ‘WE’, present identically in all the signs. The pronunciation differs in the sound of the remaining words, ‛POSITIVE’ and ‘PEOPLE’, in the contested sign, which are both distinctive, although the latter is less dominant.

Taking into account the different lengths of the signs, as a result of the additional distinctive words in the contested sign, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated by part of the relevant public with similar meanings on account of the word ‘WE’, so, despite the additional elements in the contested sign being distinctive and evoking a specific meaning, for this part of the public the signs are conceptually similar to a low degree. For another part of the relevant public, which will grasp only the meaning of ‘POSITIVE’ in the contested sign, the marks are not conceptually similar. For the remaining part of the relevant public, for which the signs are meaningless, the conceptual comparison remains neutral.

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

According to the opponent, the earlier trade marks enjoy a high degree of distinctiveness as result of their long-standing (since 1998) and intensive use in the European Union in connection with ‘fashion items, such as clothing, bags and accessories’. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• A screenshot of the ‘WE’ website www.wefashion.com demonstrating that the opponent is part of the ‘WE’ group, which concentrates its efforts in the fields of design, distribution and sales of clothing and fashion-related items. The ‘WE’ group employs approximately 3 000 employees in Europe. It operates approximately 250 retail outlets under the trade name and trade mark ‘WE’ in seven countries (Belgium, the Netherlands, Luxembourg, France, Germany, Switzerland and Austria).

• An overview of the opponent’s trade mark registrations worldwide containing registrations consisting solely of the mark ‘WE’ (word and figurative marks), or the element ‘WE’ in combination with other elements, such as ‘WE FASHION’, ‘WE WOMEN’, ‘WE MEN’ and ‘WE KIDS’, in and outside the European Union.

• An overview of EU marketing and media expenditure on, for example, campaigns, advertisements, and in-store and online promotions, all relating to the ‘WE’ trade mark, and information on the number of visitors to ‘WE’ retail stores during 2009-2013. For example, EUR 7.4 million was spent in 2009 and EUR 6.8 million in 2013. The ‘WE’ retail stores received 55 570 733 visitors in 2009 and 44 922 987 visitors in 2013.

• Press cuttings from 2013, mainly in Dutch, relating to the ‘WE’ trade mark, for example shoots, editorials and online articles. In 2013, 157 online articles were published relating to the ‘WE’ trade mark, with a total editorial value of EUR 476 743, and 566 print articles, with a total editorial value of EUR 1 853 004. For example, an item in Esquire shows swimming shorts, one in Elle shows a jacket, one in Linda. shows trousers, one in L’Officiel shows a blouse, one in Talkies shows a men’s shirt, one in Flair shows a hat, one in Glamour shows a necklace, one in Libelle shows a jacket and one in Linda. shows bikinis for children; all of them mention the trade mark ‘WE’ next to the picture, mostly in standard characters.

• A decision of the Benelux Office for Intellectual Property Rights (WE v WE WERE SMALL), dated 12/04/2011, referring to a decision of the Brussels Court of Appeal, dated 2008, that the ‘WE’ marks have acquired distinctive character and enjoy a high repute in Benelux and confirming this position.

• A decision of the Brussels Court of Appeal, dated 2008, stating ‘Due to investments in advertising and promotion, as well as due to intensive use for years, the marks of “WE NETHERLANDS” have become even stronger, better known and more distinctive, which allowed “WE NETHERLANDS” to grow into a chain of 140 fashion stores in the Benelux. … “WE NETHERLANDS” shows that the trade marks “we”, “hij” and “zij” have acquired distinctive character and enjoy a high repute in the Benelux. They have a strong appeal for the purchasing public as was already recognised by law’.

• EUIPO decision 13/08/2010, B 1 457 656, in which the EUIPO concluded that the word mark ‘WE’ had acquired a high degree of distinctiveness in Benelux for goods in Class 25 and goods made of leather and imitations of leather in Class 18.

Having examined the material listed above, the Opposition Division concludes that earlier trade mark 1) has acquired a high degree of distinctiveness through its use on the market for clothing in Class 25 in Benelux.

Although the evidence is not particularly extensive, it appears from the press cuttings from 2013 that various articles about clothing referencing the mark ‘WE’ appeared in magazines, including renowned magazines such as Elle and Vogue. According to the information on the opponent’s website, the opponent has approximately 250 retail outlets under the trade name and trade mark ‘WE’ in seven countries (Belgium, the Netherlands, Luxembourg, France, Germany, Switzerland and Austria). The opponent also claims to have invested significant amounts in marketing and media; however, this is not supported by any objective evidence.

The opponent refers to two previous national decisions that considered that the trade mark ‘WE’ had acquired enhanced distinctiveness. 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 opponent complement the other evidence submitted, as they confirm the conclusion reached from the 2013 press cuttings and the information on retail outlets and advertising expenditure.

However, there is insufficient indication in the evidence that the marks have acquired enhanced distinctiveness for goods other than clothing. The press cuttings from 2013 occasionally refer to other items such as a hat or a necklace, but from a single reference in a magazine it cannot be concluded that the marks have acquired enhanced distinctiveness for those goods. Furthermore, although the previous decisions from the Brussels Court of Appeal, the Benelux Office for Intellectual Property Rights and the EUIPO confirm the enhanced distinctiveness of the earlier mark, these decisions are not very recent (2008, 2010 and 2011) and not corroborated by any other evidence that could confirm these findings.

Therefore, it is considered that the evidence submitted by the opponent demonstrates that earlier trade mark 1) has acquired a high degree of distinctiveness through its use for clothing in Class 25, but with respect to the remaining goods the evidence submitted is not sufficient to prove the enhanced distinctiveness of the earlier marks.

Consequently, the assessment of the distinctiveness of the earlier marks for the remaining relevant goods will rest on their distinctiveness per se.

The applicant argues that signs composed of two letters lack distinctiveness, unless they are reproduced with an especially original and clearly recognisable graphic stylisation. In this respect, according to the ‘α’ judgment (09/09/2010, C-265/09 P, α, EU:C:2010:508), as regards short signs, unless a letter combination, as such, is intrinsically non-distinctive for the goods and services (e.g. ‘S’ or ‘XL’ for goods in Class 25), these signs are not necessarily distinctive only to a low degree.

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 for the remaining relevant goods 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The earlier marks have an average degree of distinctiveness in relation to all the relevant goods except for clothing in the case of earlier mark 1), which has an enhanced degree of distinctiveness.

The signs are visually, aurally and, at least for part of the relevant public, conceptually similar to a low degree.

Taking into account the low degree of visual, aural and, at least for part of the relevant public, conceptual similarity between the marks and the interdependence principle mentioned above, it is considered that there will be a likelihood of confusion only with respect to the contested goods that are identical to the opponent’s clothing, for which the earlier mark was proved to have acquired an enhanced distinctiveness, namely clothing; pullovers; cardigans; waistcoats; gowns; pants (Am.); trousers shorts; jumpers; mackintoshes; clothing of leather; stockings; suspender belts for women; sock suspenders; wind resistant jackets; ski trousers; pelisses; evening jackets; topcoats; skirts; gowns; jackets [clothing]; undershirts; tee-shirts; clothing for gymnastics; collars; shirts; scarves; neckerchiefs; swimming costumes; jogging suits; sweat suits; wedding dresses; bath robes; lingerie; brassieres; corsets; slips [undergarments]; pants (Am.); pants (Am.); nighties; house coats; pyjamas; gloves; shawls; sashes for wear; ties; bowties; belts [clothing]; garters. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

Consequently, although average consumers may be capable of detecting certain visual, aural and conceptual differences between the conflicting signs, the likelihood that they might associate the signs with each other is very real. From the wording in Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope.

It is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates, and second, it is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various lines from one another (16/09/2009, T-400/06, zerorh+, EU:T:2009:331, § 81 and the case-law cited therein).

In the present case, it has been established that the conflicting marks have the verbal element ‘WE’ in common, which is the only component of the earlier marks and the first element of the contested sign, in which it plays an independent distinctive role. A significant part of the relevant public, namely Benelux consumers, may perceive the marks as different configurations of the same mark.

However, as far as the remaining contested goods, other than clothing, in Classes 14, 18 and 25 are concerned, it is considered that the identity of almost all these contested goods with the opponent’s goods is insufficient to counterbalance the low degree of visual, aural and conceptual similarity between the signs, as the earlier marks have not been proven to have acquired an enhanced degree of distinctiveness for these goods. The same applies even more to the goods found to be similar to a low degree. These goods are the following:

Class 14: Costume jewellery; Jewellery; Ornaments [jewellery, jewelry (Am.)]; Imitation jewellery ornaments; Dress ornaments in the nature of jewellery; Bracelets [jewellery, jewelry (Am.)]; Earrings; Necklaces; Chains [jewellery]; Rings [jewellery, jewelry (Am.)]; Ornamental pins; Tie pins; Pendants; Cufflinks; Key rings [trinkets or fobs]; Jewellery cases [caskets]; Boxes of precious metal; Statuettes of precious metal; Horological and chronometric instruments; Watches.

Class 18: Hides; Imitation leather; Leather, unworked or semi-worked; Casual bags; Hand bags; Coin purses; Wallets; Credit card holders made of leather; Key bags; Rucksacks; All-purpose athletic bags; Haversacks; Beach bags; Carrying cases for documents; Wheeled shopping bags; Textile shopping bags; Satchels; Briefcases; Gym bags; Holdalls; Sling bags; Fanny packs; Cosmetic bags (empty); Trunks and travelling bags; Umbrellas and parasols; Walking sticks; Leads for animals.

Class 25: Headgear; Berets; Footwear; Boots; Ankle boots; Leather shoes; Goloshes; Rain boots; Sports shoes; Sandals; Mules; Soles for footwear; Heelpieces for footwear; Footwear uppers.

For these goods, it is considered that there are sufficient factors that will enable the relevant public to distinguish between the signs.

It follows from the above that the contested trade mark must be rejected for the following goods:

Class 25: Clothing; pullovers; cardigans; waistcoats; gowns; pants (am.); trousers shorts; jumpers; mackintoshes; clothing of leather; stockings; suspender belts for women; sock suspenders; wind resistant jackets; ski trousers; pelisses; evening jackets; topcoats; skirts; gowns; jackets [clothing]; undershirts; tee-shirts; clothing for gymnastics; collars; shirts; scarves; neckerchiefs; swimming costumes; jogging suits; sweat suits; wedding dresses; bath robes; lingerie; brassieres; corsets; slips [undergarments]; pants (am.); pants (am.); nighties; house coats; pyjamas; gloves; shawls; sashes for wear; ties; bowties; belts [clothing]; garters.

The opposition is not successful insofar as the remaining goods are concerned, for the reasons explained above.

As the opposition has been rejected for all the goods found to be identical or similar to a low degree to the goods of European Union trade mark registration No 960 021 for the figurative mark , for the reasons set out above, there is no need to assess the proof of use request filed with respect to this earlier mark, as the result would be the same even if use of the earlier mark were proven: there is no likelihood of confusion.

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

Marta GARCÍA COLLADO

Saida CRABBE

Ric WASLEY

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.