OPPOSITION No B 2 718 990

Strellson AG, Sonnenwiesenstr. 21, 8280 Kreuzlingen, Switzerland (opponent), represented by Leo Schmidt-Hollburg Witte & Frank Rechtsanwälte Partnerschaftgesellschaft mbB, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Beijing Joobot Technologies Inc., Room 610, Floor 5, Building 3, Courtyard No. 99, West Section of North 3rd Ring Road, Haidian District, Beijing City, People’s Republic of China (applicant), represented by Studio Torta S.P.A., Via Viotti 9, 10121 Torino, Italy (professional representative).

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 718 990 is partially upheld, namely for the following contested goods:

Class 9: Bags adapted for carrying photographic apparatus.

2.        European Union trade mark application No 15 205 867 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 15 205 867 for the figurative mark . The opposition is based on European Union trade mark registration No 13 083 852 for the word mark ‘JOOP’, German trade mark registration No 1 106 926 for the word mark ‘JOOP!’ and European Union trade mark registration No 134 924 for the word mark ‘JOOP!’. The opponent invoked Article 8(1)(a) and (b) and 8(5) 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 13 083 852

Class 4: Candles and wicks for lighting.

Class 8: Decanting liquids (implements for -) [hand tools], stropping instruments, oyster openers, tableware (cutlery), flat irons, non-electric, can openers (non-electric), ice picks, table forks, non-electric hand implements for hair curling, vegetable shredders, vegetable shredders, razor blades, spoons, manicure sets, knives, cutlery, mortars for pounding, nail files, nail scissors, shaving cases, nutcrackers, nippers, shavers (electric or non-electric), razor knives, leather strops, scissors, silver plate (cutlery), sugar tongs.

Class 9: Glasses, sunglasses.

Class 11: Sinks, sinks, extractor hoods for kitchens, bath fittings, heaters for baths, baths, bath linings, lamps, bidets, arc lamps, toasters, ceiling lights, showers, baths, ice chests, electric deep fryers, gas lamps, deep freezing apparatus, refrigerating chests, hair driers [dryers], lanterns, water heaters, heating pillows, not for medical purposes, heating installations, fireplaces, coffee filters , electric, coffee machines, electric, kilns, chandeliers, refrigerating cabinets, lamp shades, lanterns for lighting, microwave ovens, mixer taps for water pipes, stoves [heating apparatus], apparatus for sanitary purposes, pocket torches, electric, plate warmers, water closets, bathroom sinks, toilet seats, flushing apparatus, urinals [sanitary fixtures], washbasins (parts of sanitary installations), water intake apparatus, igniters.

Class 14: Badges of precious metal, agates, amulets [jewellery], pins [jewellery], bracelets [jewelry], watchstraps, watches, ingots of precious metals, jewellery charms, jewellery of yellow amber, brooches [jewelry], busts of precious metal, chronographs (watches), chronometers, timepieces, diamonds, boxes of precious metal, threads of precious metal [jewellery, jewelry], jewellery stones, clocks and watches, electric, ivory jewelry, housings for clocks and watches, figurines (statuettes) of precious metal, clock cases, watch crystals, gold thread [jewellery, jewelry (am)], silver wire, semi-precious stones, necklaces [jewellery], hat ornaments of precious metal, jewellery, ornaments [jewellery, jewelry (am.)], boxes of precious metal, chains (jewellery), watch chains, cufflinks, tie pins, tie pins, works of art of precious metal, medals, medallions [jewelry], coins, ornamental pins, earrings, pearls [jewellery], platinum [metal], pearls made of ambroid [pressed amber], rings being jewelry, key rings [trinkets or fobs], jewellery cases [caskets], ornaments (shoe —) of precious metal, silver thread [jewellery, jewelry (am.)], silver ornaments, sundials, spinel [precious stones], statuettes of precious metals, stopwatches, paste jewelry (costume jewelry), watch chains, watches, timepieces, small clocks, cases for watches [presentation], alarm clocks, jewellery cases [caskets].

Class 16: Document files; scrapbooks; announcement cards; stationery (cabinets for -) [office requisites]; framed or unframed pictures (paintings); paper sheets (stationery); pencils; pencil sharpeners (electric or non electric); pencil sharpeners (electric or non electric); pads (stationery); paperweights; desk trays; writing paper; booklets; books; bookends; office requisites (except furniture); printed matter; penholders; fountain pens; greeting cards; envelopes(stationery); folders for papers; passport holders; hat boxes of cardboard; calendars; coasters of paper; cards; card; litographic works of art; bookmarkers; nibs; punches (office requisites); magazines (periodicals); paper knives (office requisites); scrapers [erasers] for offices; pencil leads; lead holders [propelling pencils]; notebooks; wrapping paper; stationery; face towels of paper; paper towels; table napkins of paper; tissues of paper; paper bags; photographs; photo-engravings; posters; portraits; postcards; prospectuses; rubber erasers; chaplets; boxes of cardboard or paper; signboards of paper or cardboard; patterns for making clothes; boxes for pens; inkwells; writing instruments; writing or drawing books; writing sets with writing paper; writing materials; place mats of paper; paper table covers; paper table covers; table linen of paper; tablemats of paper; fiberboard boxes; wrapping paper; drawing materials; notebooks; boards for drawing purposes; drawing sets; drawing instruments; drawings; periodicals; newspapers; cigar bands; canvas.

Class 18: Briefcases, document wallets, beach bags, packaging bags (envelopes, pouches) of leather, trimmings of leather for furniture, wallets, camping bags, horse blankets, coverings of skins (furs), attaché cases, boxes of leather or leatherboard, boxes and cases of vulcanised fibre, net bags for shopping, shopping bags; key cases [leatherware]; casings of leather for springs, skins (furs), umbrellas cases, purses (pouches), chain mail purses (not of precious metal), travelling bags, handbags, hunting bags, card cases (wallets), cases of leather or leatherboard, garment bags for travel, suitcases, trunks, vanity cases, umbrellas, travelling bags, rucksacks, boxes of leather or leatherboard, school satchels, school bags, parasols, walking sticks, wheeled bags, haversacks, toolbags of leather (empty), kid leather.

Class 20: Beds; library shelves; office furniture; boxes of wood or plastic; coatstands; chests, not of metal; high chairs for babies; cushions; coat hangers; chests of drawers; wickerwork; settees; air mattresses, not for medical purposes; mattresses; furniture; racks; umbrella stands; sleeping bags for camping; cupboards; desks; food trolleys (furniture); easy chairs; settees; mirrors (silvered glass); chairs; tables; vitrines; curtain rings; support rails for curtains; poles for curtains; newspaper display stands, interior window blinds (furnishing articles), slatted indoor blinds, pulleys of plastics for blinds, plaited wooden screens (furniture); atches (door-), not of metal; knobs of porcelain.

Class 21: Toilet brushes; brush goods; busts of china, terra-cotta or glass; butter dishes; butter-dish covers; china ornaments; cocktail stirrers; hot pots, not electrically heated; covers for dishes; pot lids; cosmetic powder compacts; soap boxes; tea caddies; sugar bowls; egg cups; buckets; jars (glass -) [carboys]; vessels of metal for making ices and iced drinks; ice buckets; ice cube molds [moulds]; cruets; cruets; chopsticks; comb cases; drinking bottles for sports; figurines (statuettes), of porcelain, terracotta or glass; flasks; bottles; bottle openers, electric and non-electric; fruit presses (non-electric), for household purposes; thermally insulated containers for beverages; heat-insulated containers for foodstuffs; household or kitchen vessels; vegetable dishes; tableware, other than knives, forks and spoons; kitchen utensils; kitchen utensils; spice sets; watering cans; enamelled glass; boxes of glass; glasses (receptacles); glass bowls; glass mosaics, not for building; painted glassware; griddles (cooking utensils); gridiron supports; gloves for household purposes; napkin holders; household utensils; shirt stretchers; trouser presses; trouser stretchers; coffee filtering apparatus (non-electric); coffee pots (non-electric); coffee grinders, hand-operated; coffee sets; combs; teapots; pitchers; decanters; coasters not of paper and other than table linen; cheese-dish covers; saucepans; cookie jars; ceramics for household purposes; candle extinguishers; candlesticks; cauldrons; kettles (non electric); stretchers for clothing; buttonhooks; moulds (kitchen utensils); non-electric bakeware; cooking pots; fitted picnic baskets (including dishes); baskets for domestic use; demijohns; corkscrews, electric and non-electric; cosmetic utensils; tie presses; crystal [glassware]; cake moulds; kitchen containers; kitchen utensils; food cooling devices, containing heat exchange fluids for household purpose; refrigerating bottles; isothermic bags; works of art, of porcelain, terra-cotta or glass; candlesticks; liqueur sets; basting spoons, for kitchen use; knife rests for the table; shakers; blenders, non-electric, for household purposes; mills for domestic purposes, hand-operated; hand-operated noodle machines; fruit cups; cups of paper or plastic; paper plates; perfume vaporizers; pepper mills, hand-operated; pepper pots; holders for flowers and plants (flower arranging); shaving brushes; slabs; press-out moulds for cookies and biscuits; porcelain ware; lunch boxes; powder puffs; cleaning instruments (hand-operated); wiping cloths; smoke absorbers for household purposes; graters (household utensils); cleaning instruments [hand-operated]; beaters, non-electric; stirring spoons (for kitchen use); salad bowls; salt shakers; salt cellars; scrapers (kitchen implements); brushes for cleaning tanks and containers; basins [bowls]; scoops (tableware); signboards of porcelain or glass; whisks, other than electric, for household purposes; cutting boards for the kitchen; pressure cookers (autoclaves), non-electric; shoe horns; boot brushes; wax-polishing appliances, non-electric, for shoes; shoe-trees (stretchers); dishware; trivets (table utensils); sponges for household purposes; sponge holders; dinner sets; lazy susans; napkin rings; strainers; siphon bottles for carbonated water; nonmetal piggy banks; dishwashing brushes; statues of porcelain, terracotta or glass; earthenware; boot jacks; soup bowls; trays for domestic purposes; epergnes; cups; tea infusers; tea services [tableware]; pastry cutters; rolling pins, domestic; table plates; crumb trays; toilet utensils; toilet cases; toilet paper dispensers; toilet sponges; pots; pottery; tart scoops; tart scoops; drinking vessels; beverage glassware; flower-pot covers, not of paper; saucers; vases; waffle irons (non-electric); clothes-pins; drying racks for laundry; toothbrushes; toothbrushes, electric.

Class 24: Napkins, of cloth, for removing make-up, bath linen (except clothing), cotton fabrics, bed covers, bed clothes and blankets, bedding (linen), pillowcases [pillow slips], linings [textile], curtains, curtains of textile or plastic, curtain holders of textile material, face towels [made of textile materials], gummed cloth (other than for stationery), towels, hemp fabric, linens, fabric of imitation animal skins, plastic material [substitute for fabrics], buckram, mattress covers, coverings for furniture, upholstery fabrics, place mats, not of paper, door curtains, rugs (travelling -) [lap robes], velvet, sleeping bags [sheeting], silk [cloth], quilted blankets, coverlets (bedspreads), fabrics, curtains of textile or plastic, knitted fabric, taffeta [cloth], textile napkins, fabrics, fabric for boots and shoes, table cloths (not of paper), table runners, table cloths [not of paper], oilcloth (for use as tablecloth), sheets (textile), tulle, non-woven textile fabrics, curtains of textile or plastic, wall hangings of textile, table linen, not of paper; washing mitts, elastic woven material, adhesive fabric for heat application, traced cloths for embroidery, woollen fabric, handkerchiefs of textile.

Class 25: Suits, babywear, swimsuits, swimming trunks, bath robes, bathing caps, bath sandals, bath slippers, bandanas (kerchiefs for clothing purposes), clothing of imitations of leather, motorists’ clothing, clothing, paper clothing, fittings of metal for shoes and boots, teddies (bodies), bras, belts (clothing), clothing for gymnastics, gymnastic shoes, half-boots (booties), foulards, gloves (clothing), slippers, short-sleeved shirts, shirts, trousers, braces, hats, jackets (clothing), jerseys (clothing), garment bags (prefabricated), ready-made clothing, headgear, camisoles, corsets, neckties, bibs (not of paper), leather clothing, underwear, suit coats, corselets, dressing gowns, muffs (clothing), caps, outerclothing, ear muffs (clothing), overalls, mules, parkas, pelerines, furs (clothing), petticoats, pullovers, pyjamas, cyclists’ clothing, raincoats, skirts, sandals, scarves, sashes, sleepsuits, veils (clothing), wimples, panties, lace boots, shoes (low shoes), footwear, aprons for wear, ski boots, briefs, socks, sock suspenders, boots for sports, boots, lace boots, snoods (clothing), esparto shoes or sandals (espadrilles), shawls, beach clothes, beech shoes, garters, stockings, tights, sweaters, T-shirts, togas (clothing), knitwear (clothing), sports jerseys, suit overcoats (clothing), underwear, knickers, undergarments, body linen (clothing), wet suits for water skiing, vests, hosiery (clothing).

Class 27: Bath mats; floor coverings; floor coverings; vinyl floor coverings; mats; non-slip mats; gymnasium mats; artificial turf; lino; oilcloth; mats; wallpaper; reed mats; wall hangings (not of textile); mats; carpets; carpet underlay; gymnasium mats; carpets, rugs and mats; tapestry (non-textile); textile wallpaper.

Class 34: Lighters for smokers, mouthpieces for cigarette holders, matches, matchboxes, tobacco pouches, tobacco jars, pipes, cases for cigarettes, cigar cutters.

Class 35: Retailing, wholesaling, online or catalogue mail order in the fields of household goods, household or kitchen utensils and containers, glassware, porcelain and earthenware, construction articles, DIY articles and gardening articles, lighting apparatus, sanitary installations, clocks, watches and jewellery, printed matter, stationery, office requisites, leather and imitations of leather, and goods made of these materials, namely briefcases, beach bags, bags (envelopes, pouches) of leather, for packaging, leather trimmings for furniture, pocket wallets, bags for campers, horse blankets, coverings of skins (furs), attaché cases, boxes of leather or leather board, boxes of vulcanised fibre, net bags for shopping, shopping bags, key cases (leatherware), casings, of leather, for springs, fur, umbrella covers, purses, chain mesh purses, not of precious metal, valises, handbags, game bags (hunting accessories), card cases (notecases), cases, of leather or leather board, garment bags for travel, suitcases, travelling trunks, vanity cases, not fitted, umbrellas, travelling bags, backpacks, boxes of leather or leather board, satchels, school satchels, parasols, walking sticks, wheeled shopping bags, haversacks, empty tool bags of leather, goatskin leather, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, bag makers’ goods and saddlery, furnishings and decorative articles, furniture, mirrors, picture frames, clothing, footwear, headgear, textiles and textile goods, bed covers, table covers, hand tools and implements (hand-operated), cutlery, razors, spectacles, sunglasses, candles and wicks for lighting, carpets, rugs, mats and matting, floor coverings, wall hangings; advertising, business management; business administration; business management and organization consultancy; counselling on business matters; market research; public relations, office functions.

Class 42: Industrial design, fashion design and packaging design, design of interior decor.

(2) German trade mark registration No 1 106 926

Class 8: Cutlery products, namely scissors, manicure files, shavers, tools.

Class 9: Eyeglasses.

Class 11: Lighting appliances, sanitary installations, namely washbasins, bidets, bathtubs, toilets, bath and kitchen fittings.

Class 14: Jewellery, watches.

Class 16: Packaging materials made of paper and cardboard, printed products, in particular (without limitation) recipes.

Class 18: Travelling and hand suitcases, bags, umbrellas and parasols.

Class 20: Furniture.

Class 21: Brushes and puffs for body hygiene and beauty care, products made of glass, porcelain, ceramic and stoneware for household and kitchen, containers for household and kitchen (not made of precious metal or plated).

Class 24: Woven and knitted fabrics, bed and table linen, textile goods, namely curtains, blinds, household linen, table and bed linen, wallpaper made of textile materials.

Class 25: Clothing items, including belts and headwear, shoes.

Class 27: Carpets, wallpapers (except those made of textile materials).

Class 30: Confectionery goods, namely candies, chocolates, chocolate and marzipan products, bakery goods.

Class 42: Designs for clothes, leather goods, jewellery and watches and of preparations for body hygiene and beauty care.

(3) European Union trade mark registration No 134 924

Class 9: Glasses, sunglasses.

Class 14: Jewellery, watches, imitation jewellery, cuff-links, tie pins and clips, necklaces, ear rings, finger rings, bangles, bracelets, brooches, money clips, watch cases, cigar and cigarette cases, tobacco boxes, cigar and cigarette holders, lighters, key rings, all of the aforementioned goods made of precious metals and their alloys and plated therewith.

Class 18: Goods made of leather and leather imitation, namely bags, trunks and suitcases, bags, small leather goods, purses, wallets, key bags and hand bags, briefcases.

Class 25: Articles of clothing; casual clothes, and leisure wear, sportswear, jeans garments, shirts, men’s shirts, sports shirts, casual shirts, polo shirts, tie shirts, cellular shirts, tuxedo shirts, dress shirts, sweatshirts, overshirts, sweater shirts, jacket shirts, tee shirts, ladies shirts, polo shirts, blouses, pullovers, tank tops, suits, jackets, turn jackets, shirt jackets, blousons, shirt blousons, duffle coats, parkas, vests, vestovers coats, dresses, skirts, head scarves, neck scarves, square scarves, trousers, shorts, sports trousers, jeans, jeans trousers, jeans overalls, jeans skirts, jeans dresses, jeans shirts, jeans blouses, jeans jackets, jeans blousons, scarves, dress handkerchiefs, underwear, sports underwear, nightwear, dressing gowns, socks, stockings, ties, gloves, headgear, sports trousers, sports jerseys, gym suits, track suits, track-suit trousers, jogging suits, jogging trouser, jogging jackets, jogging pullovers, jogging blousons, tenniswear, beach and swimwear, swim trunks, swim suits, bikinis, swim shorts, beach shorts, bermuda shorts, bathing gowns, beach suits and beach gown, surfwear, waterski and sailing suits, knitwear, pullovers, tank tops, jackets, blousons, shirt blousons, vests, vestovers, sweaters, coats, dresses, skirts, trousers, shirts, blouses, caps, head scarves, square scarves, shawls, stockings, socks, ties, gloves and bed jackets, belts, footwear, all of the aforementioned goods for women, men and/or children.

Class 34: Cigar and cigarette cases, tobacco boxes, cigar and cigarettes holders, lighters, all of the aforementioned goods made of plastics and their alloys and plated therewith.

The contested goods are the following:

Class 9: Shutter releases [photography]; shutters [photography]; cameras [photography]; screens [photography]; cases especially made for photographic apparatus and instruments; stands for photographic apparatus; viewfinders, photographic; flashlights [photography]; tripods for cameras; bags adapted for carrying photographic apparatus.

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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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.

The contested bags adapted for carrying photographic apparatus are similar to the opponent’s bags in Class 18 covered by earlier marks (2) and (3). These goods have the same purpose of carrying things and are produced by the same companies. Their distribution channels are the same.

The opponent maintains that glasses and cameras are similar and refers to case-law from Germany, namely BPatG 68, 26 W (pat) 944/65, and makes reference to a case-law book, namely Die Ähnlichkeit von Waren und Dienstleistungen (2011) by Richter and Stoppel, 15th edition, page 49. However, 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.

The opponent also refers to previous decisions of the Office to support its arguments, namely that glasses are similar to the contested goods, which are mainly photography apparatus and instruments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

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

The previous decisions referred to by the opponent are not comparable to the present case, since, in some of the cited cases, namely 25/02/2003, R 0554/2008-2, NC NICKOL (fig.) / NIKE (fig.), 18/05/2004 R 0682/2003-1, MASH (Fig.) / MASH; 10/05/2011, T-187/10, G, EU:T:2011:202, glasses were found to be similar to optical instruments, whereas, in the present case, the contested goods are photography apparatus and instruments. The fact that these contested goods may include an optical part is not sufficient to find them similar to glasses. In the other case cited by the opponent (23/02/2013, R 0740/2012-5, IMAX / Himax (FIG. MARK)) et al., the conclusion was the same as that in the present case, namely that there is no degree of similarity between the contested eyeglasses and sunglasses, and television monitors, video monitors or television sets.

The rest of the contested goods, namely shutter releases [photography]; shutters [photography]; cameras [photography]; screens [photography]; cases especially made for photographic apparatus and instruments; stands for photographic apparatus; viewfinders, photographic; flashlights [photography]; tripods for cameras, are mainly photography apparatus and instruments. These goods all have different natures, purposes and methods of use from the opponent’s goods and services in Classes 4, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 27, 30, 34, 35 and 42. These goods and services are not in competition or complementary and they, have different manufacturers and distribution channels. Therefore, these goods 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 found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

JOOP (1) EUTM No 13 083 852 JOOP! (2) German trade mark No 1 106 926 and (3) EUTM No 134 924
Earlier trade marks	Contested sign

The relevant territories are the European Union and Germany.

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 marks are word marks composed of the verbal element ‘JOOP’ followed, in earlier marks (2) and (3), by an exclamation mark, ‘!’.

The contested mark is a figurative mark composed of the verbal element ‘JOOPIC’ in title case letters, with the second letter ‘O’ being stylised and in light grey. To the right of the verbal element are some Chinese characters in the same light-grey colour as the second letter ‘O’.

Neither the verbal element ‘JOOP’ of the earlier marks nor the verbal element ‘JOOPIC’ of the contested mark has a meaning for the relevant public and they are both therefore distinctive to an average degree.

The exclamation mark, ‘!’, in earlier marks (2) and (3) has no specific meaning, as it is used in writing to show that a word, phrase, or sentence is an exclamation (information extracted from Collins English Dictionary on 31/08/2017 at https://www.collinsdictionary.com/dictionary/english/exclamation-mark) and therefore it is laudatory and devoid of any distinctive character (30/09/2009, T-75/08, JOOP!, EU:T:2009:374, § 27).

Visually, the signs are similar to the extent that they coincide in the letters ‘JOOP’. However, they differ in the exclamation mark, ‘!’, of earlier marks (2) and (3) and in the rest of the letters, ‘IC’, the stylisation of the second letter ‘O’ and the Chinese characters of the contested mark.

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.

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

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 letters ‘JOOP’, present identically in all of the signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛IC’ of the contested mark, which have no counterparts in the earlier signs. It is very unlikely that the Chinese characters of the contested mark will be pronounced.

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

Conceptually, although none of the signs as a whole has any meaning for the public in the relevant territory, the Chinese characters of the contested sign may not be understood but will be perceived as such and will be associated with the Chinese language or at least with an Asian language. Considering that the earlier marks have no meaning in the relevant territory, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

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

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a weak element in earlier marks (2) and (3), as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods are partly similar and partly dissimilar to the opponent’s goods and services and target the public at large and business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high.

From the point of view of the relevant public, the signs are visually and aurally similar inasmuch as they have in common the verbal element ‘JOOP’, which is the only verbal element of the earlier marks. The signs differ in the additional letters ‘IC’ at the end of the contested mark, as well as in the exclamation mark (devoid of any distinctive character) in earlier marks (2) and (3) and the stylisation and Chinese characters of the contested mark.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

The fact that the verbal element ‘JOOP’ of the earlier marks is entirely included in the contested mark may lead the public to believe that the goods at issue derive, at the very least, from companies that are linked economically, in which case the likelihood of confusion must be held to be established (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 31, 32). Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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 German trade mark No 1 106 926 and EUTM No 134 924.

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

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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent and in relation to similar goods. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

With regard to the dissimilar goods, the examination of the opposition will proceed with the other ground raised by the opponent, Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade marks

According to the opponent, earlier European Union trade mark registrations No 13 083 852 and No 134 924 have a reputation in the European Union, whereas earlier German trade mark registration No 1 106 926 has a reputation in Germany.

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 11/03/2016. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union and Germany prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

(1) European Union trade mark registration No 13 083 852

Class 4: Candles and wicks for lighting.

Class 8: Decanting liquids (implements for -) [hand tools], stropping instruments, oyster openers, tableware (cutlery), flat irons, non-electric, can openers (non-electric), ice picks, table forks, non-electric hand implements for hair curling, vegetable shredders, vegetable shredders, razor blades, spoons, manicure sets, knives, cutlery, mortars for pounding, nail files, nail scissors, shaving cases, nutcrackers, nippers, shavers (electric or non-electric), razor knives, leather strops, scissors, silver plate (cutlery), sugar tongs.

Class 9: Glasses, sunglasses.

Class 11: Sinks, sinks, extractor hoods for kitchens, bath fittings, heaters for baths, baths, bath linings, lamps, bidets, arc lamps, toasters, ceiling lights, showers, baths, ice chests, electric deep fryers, gas lamps, deep freezing apparatus, refrigerating chests, hair driers [dryers], lanterns, water heaters, heating pillows, not for medical purposes, heating installations, fireplaces, coffee filters , electric, coffee machines, electric, kilns, chandeliers, refrigerating cabinets, lamp shades, lanterns for lighting, microwave ovens, mixer taps for water pipes, stoves [heating apparatus], apparatus for sanitary purposes, pocket torches, electric, plate warmers, water closets, bathroom sinks, toilet seats, flushing apparatus, urinals [sanitary fixtures], washbasins (parts of sanitary installations), water intake apparatus, igniters.

Class 14: Badges of precious metal, agates, amulets [jewellery], pins [jewellery], bracelets [jewelry], watchstraps, watches, ingots of precious metals, jewellery charms, jewellery of yellow amber, brooches [jewelry], busts of precious metal, chronographs (watches), chronometers, timepieces, diamonds, boxes of precious metal, threads of precious metal [jewellery, jewelry], jewellery stones, clocks and watches, electric, ivory jewelry, housings for clocks and watches, figurines (statuettes) of precious metal, clock cases, watch crystals, gold thread [jewellery, jewelry (am)], silver wire, semi-precious stones, necklaces [jewellery], hat ornaments of precious metal, jewellery, ornaments [jewellery, jewelry (am.)], boxes of precious metal, chains (jewellery), watch chains, cufflinks, tie pins, tie pins, works of art of precious metal, medals, medallions [jewelry], coins, ornamental pins, earrings, pearls [jewellery], platinum [metal], pearls made of ambroid [pressed amber], rings being jewelry, key rings [trinkets or fobs], jewellery cases [caskets], ornaments (shoe —) of precious metal, silver thread [jewellery, jewelry (am.)], silver ornaments, sundials, spinel [precious stones], statuettes of precious metals, stopwatches, paste jewelry (costume jewelry), watch chains, watches, timepieces, small clocks, cases for watches [presentation], alarm clocks, jewellery cases [caskets].

Class 16: Document files; scrapbooks; announcement cards; stationery (cabinets for -) [office requisites]; framed or unframed pictures (paintings); paper sheets (stationery); pencils; pencil sharpeners (electric or non electric); pencil sharpeners (electric or non electric); pads (stationery); paperweights; desk trays; writing paper; booklets; books; bookends; office requisites (except furniture); printed matter; penholders; fountain pens; greeting cards; envelopes(stationery); folders for papers; passport holders; hat boxes of cardboard; calendars; coasters of paper; cards; card; litographic works of art; bookmarkers; nibs; punches (office requisites); magazines (periodicals); paper knives (office requisites); scrapers [erasers] for offices; pencil leads; lead holders [propelling pencils]; notebooks; wrapping paper; stationery; face towels of paper; paper towels; table napkins of paper; tissues of paper; paper bags; photographs; photo-engravings; posters; portraits; postcards; prospectuses; rubber erasers; chaplets; boxes of cardboard or paper; signboards of paper or cardboard; patterns for making clothes; boxes for pens; inkwells; writing instruments; writing or drawing books; writing sets with writing paper; writing materials; place mats of paper; paper table covers; paper table covers; table linen of paper; tablemats of paper; fiberboard boxes; wrapping paper; drawing materials; notebooks; boards for drawing purposes; drawing sets; drawing instruments; drawings; periodicals; newspapers; cigar bands; canvas.

Class 18: Briefcases, document wallets, beach bags, packaging bags (envelopes, pouches) of leather, trimmings of leather for furniture, wallets, camping bags, horse blankets, coverings of skins (furs), attaché cases, boxes of leather or leatherboard, boxes and cases of vulcanised fibre, net bags for shopping, shopping bags; key cases [leatherware]; casings of leather for springs, skins (furs), umbrellas cases, purses (pouches), chain mail purses (not of precious metal), travelling bags, handbags, hunting bags, card cases (wallets), cases of leather or leatherboard, garment bags for travel, suitcases, trunks, vanity cases, umbrellas, travelling bags, rucksacks, boxes of leather or leatherboard, school satchels, school bags, parasols, walking sticks, wheeled bags, haversacks, toolbags of leather (empty), kid leather.

Class 20: Beds; library shelves; office furniture; boxes of wood or plastic; coatstands; chests, not of metal; high chairs for babies; cushions; coat hangers; chests of drawers; wickerwork; settees; air mattresses, not for medical purposes; mattresses; furniture; racks; umbrella stands; sleeping bags for camping; cupboards; desks; food trolleys (furniture); easy chairs; settees; mirrors (silvered glass); chairs; tables; vitrines; curtain rings; support rails for curtains; poles for curtains; newspaper display stands, interior window blinds (furnishing articles), slatted indoor blinds, pulleys of plastics for blinds, plaited wooden screens (furniture); atches (door-), not of metal; knobs of porcelain.

Class 21: Toilet brushes; brush goods; busts of china, terra-cotta or glass; butter dishes; butter-dish covers; china ornaments; cocktail stirrers; hot pots, not electrically heated; covers for dishes; pot lids; cosmetic powder compacts; soap boxes; tea caddies; sugar bowls; egg cups; buckets; jars (glass -) [carboys]; vessels of metal for making ices and iced drinks; ice buckets; ice cube molds [moulds]; cruets; cruets; chopsticks; comb cases; drinking bottles for sports; figurines (statuettes), of porcelain, terracotta or glass; flasks; bottles; bottle openers, electric and non-electric; fruit presses (non-electric), for household purposes; thermally insulated containers for beverages; heat-insulated containers for foodstuffs; household or kitchen vessels; vegetable dishes; tableware, other than knives, forks and spoons; kitchen utensils; kitchen utensils; spice sets; watering cans; enamelled glass; boxes of glass; glasses (receptacles); glass bowls; glass mosaics, not for building; painted glassware; griddles (cooking utensils); gridiron supports; gloves for household purposes; napkin holders; household utensils; shirt stretchers; trouser presses; trouser stretchers; coffee filtering apparatus (non-electric); coffee pots (non-electric); coffee grinders, hand-operated; coffee sets; combs; teapots; pitchers; decanters; coasters not of paper and other than table linen; cheese-dish covers; saucepans; cookie jars; ceramics for household purposes; candle extinguishers; candlesticks; cauldrons; kettles (non electric); stretchers for clothing; buttonhooks; moulds (kitchen utensils); non-electric bakeware; cooking pots; fitted picnic baskets (including dishes); baskets for domestic use; demijohns; corkscrews, electric and non-electric; cosmetic utensils; tie presses; crystal [glassware]; cake moulds; kitchen containers; kitchen utensils; food cooling devices, containing heat exchange fluids for household purpose; refrigerating bottles; isothermic bags; works of art, of porcelain, terra-cotta or glass; candlesticks; liqueur sets; basting spoons, for kitchen use; knife rests for the table; shakers; blenders, non-electric, for household purposes; mills for domestic purposes, hand-operated; hand-operated noodle machines; fruit cups; cups of paper or plastic; paper plates; perfume vaporizers; pepper mills, hand-operated; pepper pots; holders for flowers and plants (flower arranging); shaving brushes; slabs; press-out moulds for cookies and biscuits; porcelain ware; lunch boxes; powder puffs; cleaning instruments (hand-operated); wiping cloths; smoke absorbers for household purposes; graters (household utensils); cleaning instruments [hand-operated]; beaters, non-electric; stirring spoons (for kitchen use); salad bowls; salt shakers; salt cellars; scrapers (kitchen implements); brushes for cleaning tanks and containers; basins [bowls]; scoops (tableware); signboards of porcelain or glass; whisks, other than electric, for household purposes; cutting boards for the kitchen; pressure cookers (autoclaves), non-electric; shoe horns; boot brushes; wax-polishing appliances, non-electric, for shoes; shoe-trees (stretchers); dishware; trivets (table utensils); sponges for household purposes; sponge holders; dinner sets; lazy susans; napkin rings; strainers; siphon bottles for carbonated water; nonmetal piggy banks; dishwashing brushes; statues of porcelain, terracotta or glass; earthenware; boot jacks; soup bowls; trays for domestic purposes; epergnes; cups; tea infusers; tea services [tableware]; pastry cutters; rolling pins, domestic; table plates; crumb trays; toilet utensils; toilet cases; toilet paper dispensers; toilet sponges; pots; pottery; tart scoops; tart scoops; drinking vessels; beverage glassware; flower-pot covers, not of paper; saucers; vases; waffle irons (non-electric); clothes-pins; drying racks for laundry; toothbrushes; toothbrushes, electric.

Class 24: Napkins, of cloth, for removing make-up, bath linen (except clothing), cotton fabrics, bed covers, bed clothes and blankets, bedding (linen), pillowcases [pillow slips], linings [textile], curtains, curtains of textile or plastic, curtain holders of textile material, face towels [made of textile materials], gummed cloth (other than for stationery), towels, hemp fabric, linens, fabric of imitation animal skins, plastic material [substitute for fabrics], buckram, mattress covers, coverings for furniture, upholstery fabrics, place mats, not of paper, door curtains, rugs (travelling -) [lap robes], velvet, sleeping bags [sheeting], silk [cloth], quilted blankets, coverlets (bedspreads), fabrics, curtains of textile or plastic, knitted fabric, taffeta [cloth], textile napkins, fabrics, fabric for boots and shoes, table cloths (not of paper), table runners, table cloths [not of paper], oilcloth (for use as tablecloth), sheets (textile), tulle, non-woven textile fabrics, curtains of textile or plastic, wall hangings of textile, table linen, not of paper; washing mitts, elastic woven material, adhesive fabric for heat application, traced cloths for embroidery, woollen fabric, handkerchiefs of textile.

Class 25: Suits, babywear, swimsuits, swimming trunks, bath robes, bathing caps, bath sandals, bath slippers, bandanas (kerchiefs for clothing purposes), clothing of imitations of leather, motorists’ clothing, clothing, paper clothing, fittings of metal for shoes and boots, teddies (bodies), bras, belts (clothing), clothing for gymnastics, gymnastic shoes, half-boots (booties), foulards, gloves (clothing), slippers, short-sleeved shirts, shirts, trousers, braces, hats, jackets (clothing), jerseys (clothing), garment bags (prefabricated), ready-made clothing, headgear, camisoles, corsets, neckties, bibs (not of paper), leather clothing, underwear, suit coats, corselets, dressing gowns, muffs (clothing), caps, outerclothing, ear muffs (clothing), overalls, mules, parkas, pelerines, furs (clothing), petticoats, pullowers, pyjamas, cyclists’ clothing, raincoats, skirts, sandals, scarves, sashes, sleepsuits, veils (clothing), wimples, panties, lace boots, shoes (low shoes), footwear, aprons for wear, ski boots, briefs, socks, sock suspenders, boots for sports, boots, lace boots, snoods (clothing), esparto shoes or sandals (espadrilles), shawls, beach clothes, beech shoes, garters, stockings, tights, sweaters, T-shirts, togas (clothing), knitwear (clothing), sports jerseys, suit overcoats (clothing), underwear, knickers, undergarments, body linen (clothing), wet suits for water skiing, vests, hosiery (clothing).

Class 27: Bath mats; floor coverings; floor coverings; vinyl floor coverings; mats; non-slip mats; gymnasium mats; artificial turf; lino; oilcloth; mats; wallpaper; reed mats; wall hangings (not of textile); mats; carpets; carpet underlay; gymnasium mats; carpets, rugs and mats; tapestry (non-textile); textile wallpaper.

Class 34: Lighters for smokers, mouthpieces for cigarette holders, matches, matchboxes, tobacco pouches, tobacco jars, pipes, cases for cigarettes, cigar cutters.

Class 35: Retailing, wholesaling, online or catalogue mail order in the fields of household goods, household or kitchen utensils and containers, glassware, porcelain and earthenware, construction articles, DIY articles and gardening articles, lighting apparatus, sanitary installations, clocks, watches and jewellery, printed matter, stationery, office requisites, leather and imitations of leather, and goods made of these materials, namely briefcases, beach bags, bags (envelopes, pouches) of leather, for packaging, leather trimmings for furniture, pocket wallets, bags for campers, horse blankets, coverings of skins (furs), attaché cases, boxes of leather or leather board, boxes of vulcanised fibre, net bags for shopping, shopping bags, key cases (leatherware), casings, of leather, for springs, fur, umbrella covers, purses, chain mesh purses, not of precious metal, valises, handbags, game bags (hunting accessories), card cases (notecases), cases, of leather or leather board, garment bags for travel, suitcases, travelling trunks, vanity cases, not fitted, umbrellas, travelling bags, backpacks, boxes of leather or leather board, satchels, school satchels, parasols, walking sticks, wheeled shopping bags, haversacks, empty tool bags of leather, goatskin leather, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, bag makers’ goods and saddlery, furnishings and decorative articles, furniture, mirrors, picture frames, clothing, footwear, headgear, textiles and textile goods, bed covers, table covers, hand tools and implements (hand-operated), cutlery, razors, spectacles, sunglasses, candles and wicks for lighting, carpets, rugs, mats and matting, floor coverings, wall hangings; advertising, business management; business administration; business management and organization consultancy; counselling on business matters; market research; public relations, office functions.

Class 42: Industrial design, fashion design and packaging design, design of interior decor.

(2) German trade mark registration No 1 106 926

Class 8: Cutlery products, namely scissors, manicure files, shavers, tools.

Class 9: Eyeglasses.

Class 11: Lighting appliances, sanitary installations, namely washbasins, bidets, bathtubs, toilets, bath and kitchen fittings.

Class 14: Jewellery, watches.

Class 16: Packaging materials made of paper and cardboard, printed products, in particular (without limitation) recipes.

Class 18: Travelling and hand suitcases, bags, umbrellas and parasols.

Class 20: Furniture.

Class 21: Brushes and puffs for body hygiene and beauty care, products made of glass, porcelain, ceramic and stoneware for household and kitchen, containers for household and kitchen (not made of precious metal or plated).

Class 24: Woven and knitted fabrics, bed and table linen, textile goods, namely curtains, blinds, household linen, tabie and bed linen, wallpaper made of textile materials.

Class 25: Clothing items, including belts and headwear, shoes.

Class 27: Carpets, wallpapers (except those made of textile materials).

Class 30: Confectionery goods, namely candies, chocolates, chocolate and marzipan products, bakery goods.

Class 42: Designs for clothes, leather goods, jewellery and watches and of preparations for body hygiene and beauty care.

(3) European Union trade mark registration No 134 924

Class 9: Glasses, sunglasses.

Class 14: Jewellery, watches, imitation jewellery, cuff-links, tie pins and clips, necklaces, ear rings, finger rings, bangles, bracelets, brooches, money clips, watch cases, cigar and cigarette cases, tobacco boxes, cigar and cigarette holders, lighters, key rings, all of the aforementioned goods made of precious metals and their alloys and plated therewith.

Class 18: Goods made of leather and leather imitation, namely bags, trunks and suitcases, bags, small leather goods, purses, wallets, key bags and hand bags, briefcases.

Class 25: Articles of clothing; casual clothes, and leisure wear, sportswear, jeans garments, shirts, men’s shirts, sports shirts, casual shirts, polo shirts, tie shirts, cellular shirts, tuxedo shirts, dress shirts, sweatshirts, overshirts, sweater shirts, jacket shirts, tee shirts, ladies shirts, polo shirts, blouses, pullovers, tank tops, suits, jackets, turn jackets, shirt jackets, blousons, shirt blousons, duffle coats, parkas, vests, vestovers coats, dresses, skirts, head scarves, neck scarves, square scarves, trousers, shorts, sports trousers, jeans, jeans trousers, jeans overalls, jeans skirts, jeans dresses, jeans shirts, jeans blouses, jeans jackets, jeans blousons, scarves, dress handkerchiefs, underwear, sports underwear, nightwear, dressing gowns, socks, stockings, ties, gloves, headgear, sports trousers, sports jerseys, gym suits, track suits, track-suit trousers, jogging suits, jogging trouser, jogging jackets, jogging pullovers, jogging blousons, tenniswear, beach and swimwear, swim trunks, swim suits, bikinis, swim shorts, beach shorts, bermuda shorts, bathing gowns, beach suits and beach gown, surfwear, waterski and sailing suits, knitwear, pullovers, tank tops, jackets, blousons, shirt blousons, vests, vestovers, sweaters, coats, dresses, skirts, trousers, shirts, blouses, caps, head scarves, square scarves, shawls, stockings, socks, ties, gloves and bed jackets, belts, footwear, all of the aforementioned goods for women, men and/or children.

Class 34: Cigar and cigarette cases, tobacco boxes, cigar and cigarettes holders, lighters, all of the aforementioned goods made of plastics and their alloys and plated therewith.

However, for reasons of procedural economy, the evidence filed by the opponent to prove its claim will not be assessed and the Opposition Division will continue on the assumption that the earlier marks do have a reputation for all the goods and services on which the opposition is based.

3. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the signs are similar, the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use 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.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 30).

As mentioned above, the opponent should have filed evidence or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that the earlier marks enjoy a high degree of reputation in the European Union and Germany and are wellknown to consumers and, as indicated in the notice of opposition, that 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 marks. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is, as seen above, not enough.

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office restricts its examination to the facts, evidence and arguments submitted by the parties and the relief sought.

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Erkki MÜNTER

Francesca DRAGOSTIN

Marianna KONDAS

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.