OPPOSITION No B 2 629 973

Brothers & Sisters Sverige AB, Limited Liability Company, Drottninggatan 33 4th floor, 111 51 Stockholm, Sweden (opponent), represented by Von Lode Advokat AB, Årstaängsvägen 21 C, 100 74 Stockholm, Sweden (professional representative)

a g a i n s t

Alicia Armet Igual, Casp. 38 2º, 08010 Barcelona, Spain (applicant), represented by Durán – Corretjer, S.L.P., Còrsega 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative).

On 14/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 629 973 is partially upheld, namely for the following contested goods:

Class 18:         Hands bags.

Class 25:         Clothing, footwear, headgear; waist belts.

2.        European Union trade mark application No 14 456 214 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 14 456 214. The opposition is based on, inter alia, European Union trade mark registration No 2 159 515. The opponent invoked Article 8(1)(b) EUTMR.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 2 159 515.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of, inter alia, European Union trade mark registration No 2 159 515.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 24/09/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 24/09/2010 to 23/09/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 25:        Clothing, footwear, headgear.

Class 35:        Advertising; customer information with regard to the sale/marketing of clothing, headgear, shoes, accessories, belts and bags; online shopping information services; advertising via online electronic communications networks; mail order services; organisation of trade fairs for commercial or advertising purposes; import-export agencies.

Class 38:        Computer-aided transmission of messages and images; communication and communication services by computer terminals and mobile phones; message sending.

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

On 08/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent, due to an extension, until 02/09/2016 to submit evidence of use of the earlier trade mark.

On 02/09/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Pictures from the labels that are found inside clothing, as well as the hang tags that are hung for the clothing in the stores. On both the labels and the hangtags, the marks ,  are mentioned. Some pictures show labels and hangtags that have been used in Sweden and Finland. The pictures also show the item numbers from the products, as well as the price for the items. The concerned goods are sold in the opponent’s stores and on the websites www.brothers.se and www.brothers.fi.

• Pictures of the mark ‘BROTHERS’ (the same figurative ones as in the previous paragraph), printed inside the clothes, on the packaging of underwear, inside suits and on the hangtags. The opponent uses the mark inside all of its clothing. The goods presented in the pictures have been sold in stores and on the web shops in Sweden and Finland.

• Pictures of plastic bags, clothes bags, hangers, gift cards, mouse pads, tags, water bottles, fridges for water, stickers and a shoehorn, which are found in the opponent’s stores in Sweden and Finland and/or used as marketing material and showing the mark ‘BROTHERS’ (figurative), as above mentioned.

• Examples from the advertisements, showing the mark ‘BROTHERS’ (figurative), as above mentioned, that have been made in Sweden and Finland since the year 2012. They have been published in magazines, such as ‘King Magazine’ and ‘Café’, which are, according to the opponent, two of the most prominent magazines in men’s fashion in the Nordic countries. The advertisements have also been published in the free paper ‘Metro’ which is handed out daily in the public transportation.

• An undated advertisement that has been run on the Swedish news site www.stockholmdirekt.se, showing the mark ‘BROTHERS’ (figurative), as mentioned above.

• Some examples showing that the opponent is active on Facebook and Instagram with specific sites targeting Sweden and Finland. These social media platforms are used for, inter alia, communication with customers, display of goods and advertising campaigns. The opponent is also active on ‘YouTube’ with its own page where videos illustrate, for example, guides on how to find the right fit on clothing, as well as advertising campaigns and fashion tips. The trade mark ‘BROTHERS’ is prominent on all its social platforms.

• Some press releases and other news information regarding developments and news concerning the business, mentioning the mark ‘BROTHERS’ (figurative), as mentioned above.

• An excerpt from ‘MyNewsdesk’ which the opponent regularly uses as a channel in its PR campaigns.

• Some extracts from the opponent’s websites www.brothers.se and www.brothers.fi, from which customers are able to order products. The websites are also used for customer information and advertising.

• Examples of e-mails that are forwarded to the members of the opponent’s membership club, called ‘BROTHERS CLUB’. They receive newsletters from the opponent four times a month in Sweden and two to four times a month in Finland.

• Pictures from the opponent’s stores, as well as pictures from outside shopping malls, depicting the opponent’s mark ‘BROTHERS’.

• Some sales statistics regarding sales of ‘BROTHERS’ products in Sweden and in Finland during the years 2008-2016. The number of sales amounts to EUR 543.348.00 in Finland and SEK 56.414.748,00 in Sweden.

• A compilation of sales statistics of ‘BROTHERS’ underwear (including briefs, socks and T-shirts) in the different stores in Sweden and Finland during the years 2013-2016.

• An invoice from the Swedish company Nikks AB, from where the opponent purchases suit covers/cloth bags. Illustrations of the suit bag/cloth bag is attached to invoice 194, dated 18/12/2014. There is also another invoice no  267, dated 14/09/2015, covering 14000 pieces.

• An invoice from TB Screen AB, regarding campaign materials for father’s day, which was purchased by the opponent on 18/10/2013 and also one dated 13/12/2012. The purchase covers different kinds of advertisement material, for example paperboard cut outs, which could be mounted. As illustrated in the invoice, the material was ordered in both Swedish and in Finnish.

• Various advertisement materials that were ordered from TB Screen AB in 2012. The order shows ‘BROTHERS’ material in Swedish and in Finnish, as well as coffee cups with the ‘BROTHERS’ logo.

• Four invoices, dated 27/12/2011, from Contact Tryck & Reklam AB from which the opponent has ordered printings of ‘BROTHERS’ for advertising purposes in both Swedish version and Finnish.

• An invoice from the company Storkirk-Landstroms AB for 50000 copies of the opponent’s Christmas catalogue.

• Two invoices, dated 21/02/2012, regarding instore paperboard materials for the logo ‘BROTHERS’ which are used for advertisement materials in all of the opponent’s stores.

• Some material illustrating purchases by the opponent for printed matter of assorted kind, as well as labels, brochures, etiquettes and information sheets in Swedish and Finnish. All these products mention the ‘BROTHERS’ logo.

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

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

Almost all the evidence shows that the places of use are Sweden and Finland. This can be inferred from the language of the documents (Swedish and Finnish), the prices are in Euros and Swedish Krones and the advertisements target the Swedish and Finnish public. In this sense, according to Article 15(1) and Article 42(2) EUTMR, if the earlier mark is a European trade mark, it must be used in the European Union. However, genuine use with the meaning of Article 15 EUTMR may also be found when the criteria of that article have been complied with in only one part of the European Union, such as in a single Member State or in a part thereof. Therefore, it is considered that the evidence proves that the mark has been used in the relevant territory.

As previously mentioned, the opponent was required to prove that the trade mark on which the opposition is based was put to genuine use during the period from 24/09/2010 to 23/09/2015. Even though the pictures of the products, the labels, suit covers do not contain any date, for example the sales statistics show sales from even before and after the relevant dates from 2008 to 2016. Also the advertisements for different campaigns fall inside of the relevant period. Therefore, in the view of the Opposition Division, the evidence of use filed by the opponent contains sufficient indications concerning the time of use, also because the opponent has submitted material covering almost the whole period and the use is evenly distributed over this period of five years and even before and after this period.

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

In particular the sales statistics show that the total number of goods sold amounts to a very considerable number of sales, the number of which has been indicated above, to clients in Sweden and Finland, during almost the whole five-year period between 2010 and 2015 and even before and after this period, and provides the Opposition Division with sufficient information concerning the commercial volume, territorial scope, duration, and frequency of use and give sufficient indications concerning the extent of the use of the earlier mark.

Regarding the nature of use, the Opposition Division points out the following: In the present case, the earlier mark ‘BROTHERS’ is a word mark. However, in the evidence it almost always appears on the packages, hangtags, suitcovers, etc. as a figurative mark. Article 15(1)(a) EUTMR mentions that use of the mark in a form different from the one registered still constitutes use of the trade mark, as long as it does not alter the distinctive character of the trade mark. This means that differences between the form in which the mark is used on the market and the registered form are acceptable as long as the distinctive character of the mark is not altered. The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006), T-194/03, Brainbridge, EU:T:2006:65, § 50). Nevertheless, in this case the alterations confined to the stylisation of the script and ‘colours’ do not constitute an alteration of the distinctive character of the word mark ‘BROTHERS’. Therefore, there is sufficient use of the mark as registered or of a variation thereof according to Article 15(1)(a) EUTMR.

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

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

The earlier mark is registered for, and the opposition is based on, the following goods and services:

Class 25:        Clothing, footwear, headgear.

Class 35:        Advertising; customer information with regard to the sale/marketing of clothing, headgear, shoes, accessories, belts and bags; online shopping information services; advertising via online electronic communications networks; mail order services; organisation of trade fairs for commercial or advertising purposes; import-export agencies.

Class 38:        Computer-aided transmission of messages and images; communication and communication services by computer terminals and mobile phones; message sending.

In the present case, the evidence shows genuine use of the trade mark for all kinds of clothing, such as jeans, T-shirts, underwear, suits, trousers, blazers, costumes, shirts, sweaters, shorts, blouses, jackets, jerseys in Class 25. However, no reference at all, or only one picture is shown, of footwear, headgear in Class 25 and none of the services in Classes 35 and 38 are mentioned. Even though the filed documents show to some extent evidence regarding the existence of retail stores under the trade mark ‘BROTHERS’, this fact does not prove the provision of all the above mentioned services in Classes 35 and 38. Therefore, the evidence is not sufficient to prove that these goods and services were put in the relevant market under the trade mark ‘BROTHERS’.

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

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

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories (14/07/2005, T-126/03, Aladin, EU:T:2005:288).

Furthermore, in the present case, the evidence proves use only for jeans, T-shirts, underwear, suits, trousers, blazers, costumes, shirts, sweaters, shorts, blouses, jackets and jerseys, belonging to the following category in the specification: clothing in Class 25. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proven do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark only for clothing in Class 25.

Consequently, the Opposition Division will only consider these goods for which genuine use of the trade mark was shown, namely clothing in Class 25, in its further examination of the opposition.

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

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

1. The goods

The goods on which the opposition is based and for which use has been proven are the following:

Class 25:        Clothing.

The contested goods are the following:

Class 14:         Precious metals and their alloys; jewellery, precious stones; horological and chronometric instruments.

Class 18:         Leather and his/her imitations; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; hands bags.

Class 25:         Clothing, footwear, headgear; waist belts.

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

When comparing the contested goods in Class 14, which include mainly precious metals, goods metal in precious metals, in general jewellery, clocks and watches with the opponent’s clothing in Class 25, these goods are dissimilar. They have a different nature and purpose. They target another public, have different distribution channels and they are not complementary nor in competition with each other. They are usually manufactured by different kinds of companies.

Contested goods in Class 18

The contested handbags are similar to the opponent’s clothing in Class 25. These goods are complementary, have the same distribution channels, target the same public and are normally manufactured by the same kinds of undertakings.

When comparing the remaining contested goods, namely leather and his/her imitations; animal skins, hides; trunks and umbrellas and parasols; walking sticks; whips, harness and saddlery, travelling bags these are all considered dissimilar to the opponent’s clothing in Class 25. They have a different nature and purpose. They target another public, have different distribution channels and they are not complementary nor in competition with each other. These goods are normally manufactured by different kinds of undertakings.

Contested goods in Class 25

The contested clothing is identically contained in both lists of goods.

The contested waist belts are included in the broad category of the opponent’s clothing in Class 25. Therefore, they are identical.

The contested footwear serves the same purpose as clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar.

The contested headgear and the opponent’s clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, headgear and clothing are considered similar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention is average.

3. The signs

BROTHERS
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 earlier mark is a word mark consisting of the word ‘BROTHERS’. This means not only that it does not claim any particular figurative element or appearance, but also that differences in the use of lower or upper case letters are immaterial.

The contested sign is a figurative mark composed of the word ‘brothers’, written in a fairly standard typeface in lower case letters.

The earlier mark and the contested sign have no element which could be considered clearly more dominant (visually eye-catching).

Neither of the two signs has a meaning for a part of the public in the relevant territory that does not have a good command of the English language. However, another part of the public would perceive the words in both marks as being the plural form of: ‘a boy or a man who has the same parents as you’ (see Collins English Dictionary online). However, regarding the relevant goods, this word is distinctive. Consequently, the earlier mark and the contested sign have no element which is clearly more distinctive.

Visually, the signs coincide in the sequence of letters ‘B-R-O-T-H-E-R-S’, the only difference being the fairly standard typeface in which these letters are written in the contested sign. Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the word ‘BROTHERS’, present identically in both signs. Therefore, the signs are phonetically identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived by a part of the public as having the same meaning, the signs are conceptually identical for this part of the relevant public.  For another part of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

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 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

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue have been found to be partly identical or similar and partly dissimilar and the level of attention is average. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually similar to a high degree and aurally identical, without this impression being altered by any conceptual perception for a part of the public, and for another part, they are also conceptually identical.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 2 159 515.

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

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

The opponent has also based its opposition on the following earlier trade mark:

• Swedish trade mark registration No 250 877 for the figurative mark  for Class 25.

The other earlier right invoked by the opponent is less similar to the contested mark, because it includes a figurative element in the middle of the earlier mark which is not present in the contested trade mark. Moreover, it covers a narrower scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

 

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 shall 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

Saida CRABBE

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

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.