OPPOSITION No B 1 955 510

Grupp Internacional, S.A., Elche Parque Ind., C/ Arquimedes, 1-3, 03203 Elche (Alicante), Spain (opponent), represented by Ibidem Abogados Estrategas, S.L.P., Juan de la Cierva, 43, Elche Parque Empresarial, Planta 2, local 1.1, 03203 Elche (Alicante), Spain (professional representative)

a g a i n s t

Panama Jack International Inc., 230 Ernestine Street, Orlando, Florida 32801, United States of America (applicant), represented by Elzaburu S.L.P., Miguel Angel 21, 28010 Madrid, Spain (professional representative).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 955 510 is partially upheld, namely for the following contested goods:

Class 20:         Leather jewelry and accessory boxes, plastic boxes, wood boxes; jewelry boxes not made of metal.

2.        European Union trade mark application No 10 224 021 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 10 224 021, ‘PANAMA JACK’. The opposition is based on the following earlier rights:

(1) European Union trade mark registration No 6 778 401, , for goods in Classes 3 and 18;

(2) Spanish trade mark registration No 1 317 366, , for goods in Class 25;

(3) Spanish trade mark registration No 1 678 825, , for goods in Class 25;

(4) Spanish trade mark registration No 1 552 318, , for goods in Class 25;

(5) Spanish trade mark registration No 1 678 824, , for goods in Class 18;

(6) Spanish trade mark registration No 2 913 484, , for goods and services in Classes 9, 10, 14, 16, 21, 26, 28 and 35;

(7) Spanish trade mark registration No 2 952 947, ‘PANAMA JACK: BIEN HECHOS EN ESPAÑA’ (word mark), for goods in Class 25;

(8) Spanish registered commercial name No 279 273, ‘PANAMA JACK’, for goods in Classes 18 and 25.

The opponent invoked Article 8(1)(b) and 8(5) EUTMR for earlier marks (2), (3), (4) and (5), Article 8(1)(b) EUTMR only for earlier marks (1), (6) and (7), and Article 8(4) EUTMR for earlier right (8).

On 26/12/2015, the Opposition Division rendered a decision that resulted in the rejection of the opposition on the grounds that some of the earlier marks, namely earlier marks (2), (3), (4), (5) and (6) were not substantiated, and there was no likelihood of confusion because the goods of the remaining earlier marks, (1) and (7), were dissimilar to the contested goods. The opposition was also rejected as unfounded based on earlier right (8), as the opponent did not submit any information on the possible content of the rights invoked under Article 8(4) EUTMR and the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the law in each of the Member States mentioned by the opponent.

The decision was appealed and the Board of Appeal decided in case R 0429/2016-2 on 27/01/2017. The Board’s decision partially annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the contested decision was upheld, insofar as it rejected the opposition under Article 8(1)(b) EUTMR, based on earlier marks (1) and (7). On appeal, the opponent rectified the deficiencies identified under Rule 19(2) EUTMIR, by submitting the necessary documentary evidence, which establishes the existence, validity and scope of protection of earlier Spanish marks (2), (3), (4), (5) and (6), and the Board sent the case to the Opposition Division to examine the opposition based on these earlier rights, pursuant to Article 8(1)(b) and/or 8(5) EUTMR. The Opposition Division’s conclusion regarding Article 8(4) EUTMR, in accordance with which it rejected the opposition under this article based on earlier Spanish registered commercial name No 279 273, was not appealed against and it is, therefore, final.

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 must 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 will be rejected.

The applicant requested that the opponent submit proof of use of four trade marks on which the opposition is based, namely Spanish trade marks No 1 317 366 , No 1 678 825 , No 1 552 318  and No 1 678 824 .

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

The contested application was published on 03/10/2011. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 03/10/2006 to 02/10/2011 inclusive.

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

Spanish trade mark No 1 317 366

Class 25: Footwear (except orthopaedic).

Spanish trade marks No 1 678 825 and No 1 552 318

Class 25: Clothing for women, men and children, footwear (except orthopaedic), and headgear.

Spanish trade mark No 1 678 824

Class 18: Leather and imitations of leather and articles of these materials not included in other classes, animal skins, bags, trunks and suitcases, umbrellas, parasols and walking sticks, whips, harness and saddlery.

According to Rule 22(3) EUTMIR, the evidence of use must 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 11/06/2012, according to Rule 22(2) EUTMIR, the Office gave the opponent until 16/08/2012 to submit evidence of use of the earlier trade marks. On 08/08/2012, within the time limit, the opponent informed the Office that the evidence submitted on 16/05/2012 to prove the reputation of the earlier marks should also be considered evidence of use.

The evidence to be taken into account is the following:

• Several extracts from publications such as Público Diario AS, ABC, Barcelona Prestige, Barcelona Cruises, Cruceros & Destinos, Chausser, Cosmopolitan, Destinos, El País and La Gaceta, dated between 30/01/2010 and 23/12/2010, containing advertisements for ‘PANAMA JACK’, using the signs,  or , some of these advertisements displaying the mark on articles of footwear or on boxes or accessories for these goods.

• Product catalogues for 2006, 2007, 2008, 2009, 2010 and 2011, displaying the ‘PANAMA JACK’ mark as , , ,  or  on footwear articles or on boxes or accessories for these goods.

• Presentation brochure for the company Panama Jack, in Spanish and English, mentioning, inter alia, that the company is linked by tradition with the footwear industry, as well as that the company will be present at some exhibitions and fairs organised during 2006-2007.

• More than 100 invoices covering 2006-2011, issued by Panama Jack S.A. to several clients in Spain, all of them in Spanish without an English translation; the mark is depicted as ,  or  at the top of the invoices.

• Several invoices covering 2006-2010, issued by different companies to Panama Jack S.A., all of them in Spanish without an English translation.

• Merchandising products such as heats, neck chains, bracelets, shopping bags, bags to keep shoes in and cardboard boxes, depicting the mark ‘PANAMA JACK’ as ,  or .

• A letter from the Leading Brands of Spain Forum, to Veronica Carpena of Panama Jack, and extracts from the Leading Brands of Spain Forum bulletin (in Spanish and translated into English), mentioning, inter alia, the inclusion of Panama Jack in the Leading Brands of Spain Forum, and also that 876 pairs of shoes, valued at EUR 37 185, were sold under the mark at the Shanghai 2010 World Expo.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely the product catalogues, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The invoices and extracts from publications show that the place of use is Spain. This can be inferred from the language of the documents (Spanish), the currency mentioned (euros) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant 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.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Use of the mark need not be quantitatively significant for it to be deemed genuine. The opponent is not requested and is not expected to file each and every invoice issued. The sample invoices submitted are dated throughout the relevant period and, therefore, show that the use was continuous, and the invoice numbers are not consecutive, which implies that other invoices were issued in between.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the opponent’s mark is displayed in the evidence submitted as ,  , ,  or . The fact that earlier marks No 1 678 825 , No 1 552 318  and No 1 678 824  are reproduced in the evidence submitted inside a circle with a double border, sometimes in black and white or in grey, or that the triangle in earlier mark No 1 552 318 is missing, does not alter the distinctive character of the marks. The figure of a man with a hat is present in all these depictions. The same does not apply to earlier mark No 1 317 366 , as none of the marks in the evidence reproduces the specific stylisation of the words ‘PANAMA JACK’.

In view of the above, the Opposition Division considers that the evidence shows use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR only for earlier marks No 1 678 825, No 1 552 318 and No 1 678 824.

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, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory.

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

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 will, 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.

In the present case, the evidence shows genuine use of the trade marks for the following goods:

Spanish trade marks No 1 678 825 and No 1 552 318

Class 25: Footwear (except orthopaedic).

Spanish trade mark No 1 678 824 is registered for goods in Class 18. Although the footwear articles displayed in the evidence are made of leather, it cannot be concluded that the opponent has also demonstrated use of the earlier mark for goods in Class 18. Footwear is a specific product, classified in Class 25 of the Nice Classification; goods of leather classified in Class 18 cover other types of goods, such as bags, belts and saddlery. Therefore, the evidence does not show use of Spanish trade mark No 1 678 824.

Consequently, the Opposition Division will consider only earlier Spanish trade marks No 1 678 825 and No 1 552 318, for the abovementioned goods, in its further examination of the opposition.

The examination of the opposition will also continue in relation to earlier Spanish trade mark No 2 913 484, which is not subject to the requirement for proof of use.

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:

Spanish trade marks No 1 678 825 and No 1 552 318

Class 25: Footwear (except orthopaedic).

Spanish trade mark No 2 913 484

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic dada carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus, shoes for protection against accidents, irradiation and fire.

Class 10: Devices and surgical, medial, dental and veterinary instruments, as well as members, eyes and artificial teeth; orthopaedic articles; material of suture, orthopedic footwear.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, articles of jewelry, precious stones, timepieces and chronometric instruments.

Class 16: Paper, cardboard and goods made from these materials not included in other classes, printed matter, bookbinding material, photographs, paper stationery, adhesives (glues) for stationery or household purposes, artists’ materials, paint brushes, typewriters and articles office requisites (except furniture) instructional and teaching material (except apparatus), plastic materials for packaging (not included in other classes), printed characters, printing blocks, publications.

Class 21: Utensils and containers for household and kitchen, combs and sponges, brushes, brush-making materials, cleaning materials, steel wool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware not included in other classes. Non-electrical shoe polish, brushes and shoe trees.

Class 26: Lace and embroidery, ribbons and laces, buttons, hooks and eyes, pins and needles, artificial flowers, ornament not of precious materials for shoes, hooks, buckles and eyelets for footwear.

Class 28: Games and toys, gymnastic and sporting articles not included in other classes, decorations for Christmas trees.

Class 35: Advertising, business management, business administration, office work, services in retail trade as well as through global computer networks, consumer electronics, stationery, clothing accessories, footwear and articles related to footwear, jewelry, watches, perfumes, cosmetics, gymnastic and sport services wholesale consumer electronics, stationery, clothing accessories, footwear and articles related to footwear, jewelry, watches, perfumes, cosmetics, articles for gymnastics and sports, broadcast services and advice on franchising (for assistance in running or managing a commercial enterprise).

After a limitation, the contested goods are the following:

Class 20: Soft sculpture wall decorations; wall plaques made of plastic or wood; interior window blinds; stools; and wall decorations made of wood, wax, plaster or plastic; beach chairs; armchairs; furniture, outdoor furniture, mirrors, picture frames, hand fans, pillows, leather jewelry and accessory boxes, plastic boxes, wood boxes; bamboo blinds; bathroom vanities; bed, benches, busts of plastic, chairs, cold cast resin figurines, cushions; busts, sculptures and figurines of bone, ivory, plaster, plastic, wax and wood; jewelry boxes not made of metal; magazine racks; screens; interior window blinds; wood carvings; wind chimes; wine racks; baby changing tables; baby changing mats; bookcases; bottle racks; bunk beds; coat racks; cots; non-metal key rings; sleeping bags; portable outdoor privacy screens for sunbathing; bath pillows; bean bag chairs; bed frames; bed headboards; bed pillows; bed rails; bed rests; beds for household pets; foot rests, ottomans, stools, foot stools, mattresses, pillows and bolsters; futons and futon mattresses.

Class 24: Towels; textile wall hangings; pillowcases; bed and table linens; bed blankets; blanket throws; blankets for outdoor use; dining linens; textile tablecloths; place mats made of textiles; shower curtains; window treatments, namely, curtains, draperies, sheers, puffs, window panels, swags and valances; baby bedding, namely, bundle bags, swaddling blankets, crib bumpers, fitted crib sheets, crib skirts, crib blankets, and diaper changing pad covers not of paper; bed sheets; bed pads; bed trhows; bedspreads; comforters; face cloths, hand towels and face towels made of textile fabrics; futon quilts; handkerchiefs of textiles; mattress pads; and quilts of textiles.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods 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.

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 20

The contested leather jewelry and accessory boxes and jewelry boxes not made of metal are similar to the opponent’s articles of jewelry of earlier Spanish trade mark No 2 913 484 in Class 14, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.

The contested plastic boxes, wood boxes are similar to the opponent’s containers for household of earlier Spanish trade mark No 2 913 484 in Class 21, as they can have the same producers, end users and distribution channels.

The rest of the contested goods in Class 20 consist mainly of furniture, mirrors, picture frames and goods made of bone, ivory, plaster, plastic, wax and wood, and have, therefore, different natures and purposes from the opponent’s goods in Classes 9, 10, 14, 16, 21, 25, 26 and 28. Moreover, they are distributed through different channels and manufactured by different producers. Their end users are different and they are not complementary or in competition. The contested goods in Class 20 are considered dissimilar to all the opponent’s goods.

The same applies when the rest of the contested goods in Class 20 are compared with the opponent’s services in Class 35. The opponent’s services in retail trade as well as through global computer networks, consumer electronics, stationery, clothing accessories, footwear and articles related to footwear, jewelry, watches, perfumes, cosmetics, gymnastic and sport services wholesale consumer electronics, stationery, clothing accessories, footwear and articles related to footwear, jewelry, watches, perfumes, cosmetics, articles for gymnastics and sports and the rest of the contested goods in Class 20 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

Finally, the rest of the contested goods are dissimilar to the opponent’s advertising, business management, business administration, office work, broadcast services and advice on franchising (for assistance in running or managing a commercial enterprise) in Class 35. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Contested goods in Class 24

The contested goods in Class 24 consist mainly of textile goods or goods made of textile substitutes and have, therefore, different natures and purposes from the opponent’s goods in Classes 9, 10, 14, 16, 21, 25, 26 and 28, including the opponent’s footwear in Class 25. Moreover, they are distributed through different channels and manufactured by different producers. Their end users are different and they are not complementary or in competition. The contested goods in Class 24 are considered dissimilar to all the opponent’s goods.

The same applies when the contested goods in Class 24 are compared with the opponent’s services in Class 35. The opponent’s services in retail trade as well as through global computer networks, consumer electronics, stationery, clothing accessories, footwear and articles related to footwear, jewelry, watches, perfumes, cosmetics, gymnastic and sport services wholesale consumer electronics, stationery, clothing accessories, footwear and articles related to footwear, jewelry, watches, perfumes, cosmetics, articles for gymnastics and sports and the contested goods in Class 24 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are dissimilar.

Finally, the contested goods are dissimilar to the opponent’s advertising, business management, business administration, office work, broadcast services and advice on franchising (for assistance in running or managing a commercial enterprise) in Class 35. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

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.

The degree of attention is average.

3. The signs

ES No 1 678 825   ES No 1 552 318 ES No 2 913 484	PANAMA JACK
Earlier trade marks	Contested sign

The relevant territory is Spain.

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 figurative marks, consisting of the figure of a man with a hat and a small collar depicted to the left of the word combination ‘Panama Jack’. Earlier Spanish mark No 1 678 825 is a coloured mark, the hat and the small collar of the man being green, while his face is yellow. Earlier Spanish mark No 1 552 318 is black and white and the whole combination is depicted inside a triangle with a black border. Earlier Spanish mark No 2 913 484 is black and white.  

The contested mark is a word mark, ‘PANAMA JACK’.

The word ‘PANAMA’, which the marks have in common, will be perceived as the name of a country in Central America as well as the name of the canal connecting the Atlantic and Pacific oceans. Another meaning of this word is ‘cotton fabric with thick threads, very suitable for embroidery’ (information extracted from Diccionario de Real Academia Espanola on 18/08/2017 at http://dle.rae.es/?id=RdM22Zz). The word ‘JACK’, which the marks also have in common, will be understood by at least the majority of the public in the relevant territory as a male personal name. The figurative elements of the earlier marks will be perceived as a depiction of a man. As these elements are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive to an average degree.

None of the marks has any element that could be considered clearly more dominant than other elements.

Visually, the signs are similar to the extent that they coincide in the word combination ‘PANAMA JACK’. However, they differ in the figurative elements of the earlier marks, as well as in the colour of earlier Spanish trade mark registration No 1 678 825.

Therefore, the signs are visually highly similar.

Aurally, the marks are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings owing to the word elements present in both signs, they are conceptually highly 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 marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, earlier Spanish trade marks No 1 678 825 and No 1 552 318 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’).

The opponent did not explicitly claim that earlier Spanish mark No 2 913 484 is particularly distinctive by virtue of intensive use or reputation.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are partly similar and partly dissimilar to the opponent’s goods and services and target the public at large. The degree of attention is average.

From the point of view of the relevant public, the signs are visually and conceptually highly similar, inasmuch as they have in common the verbal elements ‘PANAMA JACK’, which are the only verbal elements of each mark. Aurally, the signs are identical. The signs differ in the figurative elements of the earlier 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).

The fact that the contested sign is entirely included in the earlier 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 mark, configured in a different way according to the type of goods 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 Spanish trade mark registration No 2 913 484.

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 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.

REPUTATION – ARTICLE 8(5) EUTMR

Considering the conclusion of the ‘Proof of use’ section and the fact that the opponent invoked Article 8(5) EUTMR only for earlier marks (2), (3), (4) and (5), as detailed at the beginning of this decision, the question of reputation will be analysed insofar it concerns earlier Spanish trade marks No 1 678 825 and No 1 552 318, namely earlier marks (3) and (4).

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 Spanish trade marks No 1 678 825 and No 1 552 318 have a reputation in Spain.

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 29/08/2011. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the Spain prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation and proved use, namely footwear (except orthopaedic) in Class 25.

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

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks is the same as that submitted to prove the use of the earlier marks, and it is listed above in the ‘Proof of use’ section.

On the basis of the evidence submitted, the Opposition Division concludes that the earlier trade marks have a reputation in Spain.

The abovementioned evidence indicates that the earlier trade marks have been used for a substantial period of time. The sales figures and marketing efforts suggest that the trade marks have a consolidated position in the market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade marks enjoy a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade marks enjoy some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51 and 52.)

It is appropriate to recall that the opposition is directed against the following goods:

Class 20: Soft sculpture wall decorations; wall plaques made of plastic or wood; interior window blinds; stools; and wall decorations made of wood, wax, plaster or plastic; beach chairs; armchairs; furniture, outdoor furniture, mirrors, picture frames, hand fans, pillows ; bamboo blinds; bathroom vanities; bed, benches, busts of plastic, chairs, cold cast resin figurines, cushions; busts, sculptures and figurines of bone, ivory, plaster, plastic, wax and wood; magazine racks; screens; interior window blinds; wood carvings; wind chimes; wine racks; baby changing tables; baby changing mats; bookcases; bottle racks; bunk beds; coat racks; cots; non-metal key rings; sleeping bags; portable outdoor privacy screens for sunbathing; bath pillows; bean bag chairs; bed frames; bed headboards; bed pillows; bed rails; bed rests; beds for household pets; foot rests, ottomans, stools, foot stools, mattresses, pillows and bolsters; futons and futon mattresses.

Class 24: Towels; textile wall hangings; pillowcases; bed and table linens; bed blankets; blanket throws; blankets for outdoor use; dining linens; textile tablecloths; place mats made of textiles; shower curtains; window treatments, namely, curtains, draperies, sheers, puffs, window panels, swags and valances; baby bedding, namely, bundle bags, swaddling blankets, crib bumpers, fitted crib sheets, crib skirts, crib blankets, and diaper changing pad covers not of paper; bed sheets; bed pads; bed trhows; bedspreads; comforters; face cloths, hand towels and face towels made of textile fabrics; futon quilts; handkerchiefs of textiles; mattress pads; and quilts of textiles.

The earlier marks are reputed for footwear (except orthopaedic) in Class 25.

While the relevant section of the public for the goods covered by the conflicting marks is the same or overlaps to some extent, those goods are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public.

The contested goods consist mainly of furniture, mirrors, picture frames and goods made of bone, ivory, plaster, plastic, wax and wood, textile goods or goods made of textile substitutes and have, therefore, different natures and purposes from the opponent’s footwear. These goods are very far removed from the opponent’s goods and it is unlikely that consumers would perceive the contested mark, when used in relation to these goods, as in any way related to the earlier marks with a reputation. Moreover, they are distributed through different channels and manufactured by different producers. Their end users are different and they are not complementary or in competition. Although the opponent’s footwear may be made of textiles, this is not sufficient to find a link between them, as the contested goods in Class 24 are mainly textile goods or goods made of textile substitutes intended to be used for household purposes, whereas the opponent’s footwear is a fashion product, intended to protect the foot.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Erkki MÜNTER

Francesca DRAGOSTIN

Zuzanna STOJKOWICZ

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.