OPPOSITION No B 2 184 086

Needle Knitwear Limited, Caw House, Tutin Road, Leeming Bar Industrial Estate Leeming Bar, North Yorkshire DL7 9UJ, United Kingdom (opponent), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, Leeds LS2 8PA, United Kingdom (professional representative).

a g a i n s t

Needle & Thread IPR Limited, 23 Compton Road, London N1 2PB, United Kingdom (applicant), represented by CSY London, 10 Fetter Lane, London EC4A 1BR, United Kingdom (professional representative).

On 16/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 184 086 is partially upheld, namely for the following contested goods and services:

Class 18:         Bags, handbags, shoulder bags, satchels, travel bags, belts, purses, wallets, key cases and umbrellas; leather and imitations of leather, and goods made of these materials and not included in other classes.

Class 25:        Articles of clothing, footwear and headgear.

Class 35:        Retail and on-line retail services connected with the sale of clothing and clothing accessories; provision of information and consultancy services relating to the aforesaid services.

2.        European Union trade mark application No 11 483 088 is rejected for all the above goods and services. It may proceed for the remaining 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 11 483 088. The opposition is based on European Union trade mark registration No 11 420 601. The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods and services

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

Class 18:        Leather and imitations of leather; goods made from leather; goods made from imitations of leather; animal skins; goods made from animal skins and imitations of animal skins; hand bags, bags, wallets, purses, cases, briefcases, holdalls, suit bags, suitcases, sports bags, travel bags, and trunks; umbrellas, parasols, walking sticks and canes.

Class 25:        Clothing; footwear; headgear; belts; knitwear.

Class 35:        Retail services connected with the sale of goods made from leather, animal skins, hand bags, wallets, purses, cases, briefcases, holdalls, bags, suitcases, sports bags, travel bags, umbrellas, parasols, walking sticks, sunglasses, jewellery, cufflinks, scarves, gloves, clothing, footwear, headgear, belts, knitwear; online retail services connected with the sale of goods made from leather, animal skins, hand bags, wallets, purses, cases, briefcases, holdalls, bags, suitcases, sports bags, travel bags, umbrellas, parasols, walking sticks, sunglasses, jewellery, cufflinks, scarves, gloves, clothing, footwear, headgear, belts, knitwear.

The contested goods and services are the following:

Class 18:        Bags, handbags, shoulder bags, satchels, travel bags, belts, purses, wallets, key cases and umbrellas; leather and imitations of leather, and goods made of these materials and not included in other classes.

Class 25:        Articles of clothing, footwear and headgear.

Class 35:        Retail and on-line retail services connected with the sale of clothing and clothing accessories; provision of advertising space including in an on-line context; provision of information and consultancy services relating to the aforesaid services.

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

Bags, handbags, travel bags, purses, wallets, umbrellas, leather and imitations of leather, and goods made of these materials and not included in other classes are identically contained in both lists of goods (including synonyms).

The contested shoulder bags, satchels are included in the broad category of the opponent’s bags. Therefore, they are identical.

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

The contested belts include for example shoulder belts which are belts for holding and carrying the opponent’s bags. These types of goods have the same producer and distribution channels. They also share the same relevant public and depending on the type of bag they can also be complementary. Therefore they are similar.

Contested goods in Class 25

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

Contested services in Class 35

Retail and on-line retail services connected with the sale of clothing are identically contained in both lists of services.

The contested retail and on-line retail services connected with the sale of clothing accessories include, as broader categories the opponent’s retail and online retail services connected with the sale of cufflinks, since clothing accessories may include various goods, such as cufflinks. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested provision of information and consultancy services relating to the aforesaid services (relating to retail and on-line retail services connected with the sale of clothing and clothing accessories) is similar to the opponent’s retail services connected with the sale of cufflinks. These services have the same origin and providers as companies that offer retail services usually also provide the related information about them. They are addressed to the same consumers and are complementary. Therefore, they are considered similar.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, contrary to the opponent’s view, the contested provision of advertising space including in an on-line context is dissimilar to the goods or services of the earlier mark that is being advertised.

The above also applies to the contested provision of information and consultancy services relating to the aforesaid services (relating to provision of advertising space) as it is not common in the market for the manufacturer of articles in Class 18 or 25 to provide such information services. Therefore, these goods and services are dissimilar.

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 are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise (e.g. leather and imitations of leather in Class 18), such as manufacturers of leather goods.

The degree of attention is considered to be average.

3. The signs

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.

The common element ‘NEEDLE’ and the second element in the contested sign are meaningful and distinctive, in certain territories for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a figurative mark with the verbal element ‘NEEDLE’ which will be understood in its English lexical meaning as a small, slender, rod like instrument, usually of polished steel, with a sharp point at one end and an eye or hole for thread at the other, for passing thread through cloth to make stitches in sewing. Through the verbal element is a line with tapered ends that could be perceived as a needle, which constitutes the bars of the three E’s. Although the word ‘NEEDLE’ is associated with the industry that covers the relevant goods and services it is not descriptive for the same and is therefore distinctive. The same applies for the figurative element.

The contested sign is a figurative mark consisting of the two verbal elements ‘NEEDLE’ and ‘THREAD’ separated by a figurative ampersand. The first verbal element has the same meaning as the earlier mark. Unlike the view of the applicant, the Opposition Division finds that the second verbal element ‘THREAD’ will be perceived in its English lexical meaning as a filament, a group of filaments twisted together, or a filamentous length formed by spinning and twisting short textile fibres into a continuous strand. This word is closely connected with the first word of the mark in that it is normal to use a needle and a thread together. A combination of these two verbal elements does not change their individual meanings as argued by the applicant. As with the earlier mark these two words are associated with the industry that covers the relevant goods and services however they are not descriptive for the same and are therefore distinctive. The figurative ampersand consists of a needle and thread. As with the verbal elements these figurative elements are associated with the industry that covers the relevant goods and services however they are not descriptive for the same and are therefore distinctive.

Both signs have no elements that could be considered clearly more dominant than other elements.

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.

Visually, the signs coincide in the word ‘NEEDLE’, whereas they differ in the additional word ‘THREAD’ and the figurative ampersand of the contested sign. Therefore, the first verbal element of the contested sign and the sole verbal element of the earlier mark coincide. They differ further in the marks respective figurative elements however, considering the placement of the figurative element in the earlier mark it rather strengthens the similarities than push them further apart in that the letters of the earlier mark become more visible. Furthermore, although the ampersand is a figurative element of the contested mark it will nevertheless be perceived as an ampersand in standard character due to its simple depiction.

Considering that consumers generally tend to focus on the beginning of a sign and that the verbal element has a stronger impact in marks that contains both verbal and figurative elements, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛NEEDLE’, present identically in both signs. The pronunciation differs in the sound of the ampersand, pronounced ‛and’, and the word ‛THREAD’ of the contested sign, which have no counterparts in the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning in that they share one word plus the fact that the additional word in the contested sign is closely connected with the common word as explained above. The figurative ampersand only reinforces this connection. Therefore, the signs 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 mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital of art. 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 (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).

As has been concluded above, the contested goods and services are partly identical, partly similar and partly dissimilar. The goods and services are directed at the public at large and at business customers with an average level of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness. Additionally the marks in dispute have been found visually, aurally and conceptually similar to an average degree.

The signs coincide in the verbal element ‘NEEDLE’, which is the sole verbal element of the earlier mark and fully incorporated in the contested sign. Furthermore, it constitutes the first element of the contested sign and will have the strongest impact on the consumers, since consumers generally tend to focus on the beginning of a sign. Therefore, it must be held that it is reasonable to find that the relevant public is likely to confuse the marks in relation to the identical and similar goods and services, or believe that those goods and services come from the same undertaking, or as the case may be, economically-linked undertakings.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the word ‘NEEDLE’. In support of its argument the applicant refers to several trade mark registrations in the European Union and the United Kingdom.

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. Furthermore, the website printouts submitted by the applicant to prove use of these signs containing the element ‘NEEDLE’, for clothing and other textile goods, do not contain sufficient indications with regard to the territory, the time and the extent of use of these marks to rebut this finding. 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 the word ‘NEEDLE’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

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

Boyana NAYDENOVA

Benjamin Erik WINSNER

Frédérique SULPICE

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.