OPPOSITION No B 2 744 186

Puma SE, Puma Way 1, 91074 Herzogenaurach, Germany (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Sebastiaan de Neubourg, Verschansingstraat 12, 2000 Antwerpen, Belgium (applicant), represented by Matthias Dobbelaere, Belliardstraat 2a bus 6, 1040 Brussel, Belgium (professional representative).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 744 186 is partially upheld, namely for the following contested goods:

Class 9: Sunglasses; prescription sunglasses; covers for sunglasses; anti-glare glasses; straps for sunglasses; chains for sunglasses; cords for sunglasses; cases for sunglasses; sunglass temples; sunglass nose pads; frames for spectacles and sunglasses; cases for spectacles and sunglasses; chains for spectacles and for sunglasses; tablet covers; flip covers for smart phones; frames for sunglasses; lenses for sunglasses.

2.        European Union trade mark application No 15 383 557 is rejected for all the above goods. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 383 557. The opposition is based on International trade mark registrations No 480 511  designating Czech Republic, Spain, Austria, Italy, Benelux, Slovenia, Portugal, Romania, Slovakia, Hungary, Croatia, Germany and France (earlier mark 1) and No 582 886 designating Spain, Czech Republic, Cyprus, Austria, Lithuania, Latvia, United Kingdom, Italy, Estonia, Benelux, Slovenia, Portugal, Romania, Bulgaria, Slovakia, Denmark, Poland, Hungary, Croatia, Greece, Finland and France (earlier mark 2). The opponent invoked Article 8(1)(b) for both earlier marks and 8(5) EUTMR with regard to earlier mark 2.

PRELIMINARY REMARKS

International trade mark registration No 480 511 (earlier mark 1) will be disregarded insofar as it designates Romania since the opposition is based on the goods in Class 9 and these goods have been deleted for this designation.

Likewise, International trade mark registration No 582 886 (earlier mark 2) will be disregarded insofar as it designates Estonia, Finland, Lithuania and Latvia since protection has been granted in these countries only for the goods in Class 12 (Estonia, Finland) and Class 3 (Lithuania, Latvia), on which the present opposition is not based. This registration is also under a total provisional refusal of protection in Poland. Finally, protection of this registration in the United Kingdom has been granted only for the goods in Class 9.

In view of the foregoing and for reasons of procedural economy, the Opposition Division finds it appropriate to focus the examination of the opposition on earlier mark 1 insofar as it designates Germany and on earlier mark 2 insofar as it designates Italy.

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. Assessment of the submitted evidence

The outcome of the opposition depends to a great extent on the conclusions in relation to the evidence submitted by the opponent in order to prove the enhanced distinctiveness of the earlier marks. Therefore, in this section the Opposition Division will first set out the submitted evidence in its entirety and will determine whether the abovementioned earlier registrations have acquired enhanced distinctiveness in Germany and Italy, respectively.

According to the opponent the earlier trade marks enjoy a high degree of distinctiveness as a result of their long standing and intensive use in the respective designated countries in connection with the goods and services for which they are registered.

This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Annex 1: comparative chart showing several models of glasses from the opponent and the applicant. The earlier mark 1 clearly appears on opponent’s glasses.
• Annexes 2 and 3: General information on the opponent obtained from the website www.puma.com and dated 2011. Notably, it informs that PUMA was founded in 1948, distributes its products in more than 120 countries and employs more than 9’500 people worldwide. It includes also information on part of the history of the company PUMA SE, and reference is made to elite sportsmen and sportswomen and soccer teams, basketball teams, etc. from all over the world sponsored by PUMA since 1948. For example, it informs that Pelé won the World Cup in 1962 and 1970 wearing PUMA boots and that Usain Bolt broke the 100m world record with a PUMA equipment.
• Annex 4: “60 Jahre 1948-2008”, namely an article of 20 pages in a German newspaper. This includes a summary of the 60 years during which PUMA has increased its fame and repute.
• Annex 5: Puma Motorsport History, a document that shows Puma’s relationship with the world of motorsport (including Formula 1) and includes a list of the sponsored teams between 1998 to date and the estimates for the year 2016. The earlier marks appear notably on advertisements, documents, cars, shoes and clothes.
• Annex 6: Annual Report 2013. In view of its last page, this document of 192 pages seems not to be internal but published and distributed to the public. It shows a lot of information on the company PUMA, its revenue, its products and its sport sponsorship programme. Express reference is made to the mark PUMA. It informs also that PUMA is one of the world’s leading sports brands. The earlier marks appear notably on shoes, sports equipment, bags and clothes. Express reference is made to the four key categories supporting PUMA’S business: fragrances and bodycare, glasses (optical and sunglasses), watches and security boots. Moreover, the document shows significant economic results achieved by the company in 2013, when the amount of three billion Euro PUMA brand sales was reached, with more than 40% coming from the EMEA zone (Europe, Middle East and Africa).

The licence sales for fragrances, eyewear and watches rose in 2013 by 10.1% to €193.5 million.

• Annex 7: Affidavit, signed by Mr Lämmerman, Managing Director of PUMA SE, showing the sales of footwear, apparel and headgear in France, Germany, Austria, Switzerland, Italy, United Kingdom, Benelux, Denmark, Finland, Sweden, Norway, Spain, Portugal, Lithuania, Czech Republic, Slovakia, Poland, Hungary, Estonia, Latvia, Cyprus and Greece. The figures and amounts are very substantial as can be seen below.

Year	Units sold	Net sales in €
2008	c. 63.7 million	c. 947 million
2009	c. 57.6 million	c. 773 million
2010	c. 60.0 million	c. 789 million
2011	c. 62.5 million	c. 820 million
2012	c. 56.6 million	c. 761 million
2013	c. 52.1 million	c. 680 million

• Annex 8: Several affidavits, signed by Mr Lämmerman, Managing Director of PUMA SE, showing the sales of footwear labelled with the trade marks and  for the years 2008 to 2013 in the United Kingdom, Sweden, Italy, Germany, Finland, Denmark, Benelux and Spain. The figures are very substantial, especially in Germany and Italy.
• Annex 9: Sales figures for the years 2014 and 2015 for footwear in several EU countries. This internal document shows very substantial amounts.

The opponent provides also several affidavits that show the sales of glasses under the earlier marks between 2010 and 2015 in several EU countries. The figures and amounts are very substantial.

• Annex 10: Copies of the publications "Sporting Goods Intelligence", an independent news source in the sporting goods industry, which delivers expert analysis. These publications from the years 2004-2015 show business information on the sports sector mentioning the opponent's mark or company name ‘PUMA’. Notably, ‘PUMA’ ranks third regarding international branded athletic footwear market, showing very substantial sales and market shares.
• Annex 11: Report from a public survey on the well-known character of the earlier marks carried out in France in 2008 and translated into English. The report rates the spontaneous notoriety of PUMA’s pouncing feline mark at 97% (96% among men, and 98% among women).
• Annex 12: News appeared on the Internet, several rankings and lists drawn up by organizations that are independent from PUMA, showing that PUMA is the third most famous mark in relation to sport apparel, footwear and accessories.

• Annex 12.1: The document titled “Verbraucher schätzen Qualität und Marke” (Consumers appreciate quality and trade mark) and published under www.textilwirtschaft.de shows a brand awareness chart. The percentage of awareness of the trade mark PUMA amounts to 99% of the interviewees in Germany during the year 2013.
• Annex 12.2: An article called “Nike, Adidas, Puma, among Interbrand’s ‘Best Global Brands’ in ‘09. The mark PUMA ranks 97th in the independent Interbrand’s best global brands.
• Annex 12.3: A document called PUMA Case Study, drawn up by the independent company D&AD. This study shows that the trade mark PUMA has achieved a relevant well-known character during the last years. Notably, the study states that “By some measures, the brand has achieved a great deal. According to research by TNS published in 2009, PUMA now has a six percent market share of the UK sportswear market, behind Nike, Adidas, Reebok and Umbro. Surveys of US college students in 2010 ranked PUMA as the number seven sports-shoe brand of choice for females, and the number eight for males, aged 18-24 (e-marketer.com).”
• Annex 12.4: On page 35 of the book Sports in the Co-opetition of Metropolitan Regions – Page 35, Gerhard Trosien – 2012, the following statement on the biggest sporting goods corporations in Germany and in Europe can be found:

“But it seems that there are possibilities to find approaches to transfer some findings on sports economics. From one metropolitan … The reason for this is that the two biggest sporting goods corporations in Germany and in Europe are located there (Adidas, no. 2 and Puma, no 3 world-wide also).”

• Annex 12.5: In the book Sport Brands – Page 152, of Patrick Bouchet, Dieter Hillairet, Guillaume Bodet – 2013, the following assertions can be found:

“While this reinforcement may have only concerned the French market, it represented a quarter of the brand's turnover worldwide. The German brand Puma faced the same kind of aging situation. (…) Puma chose the opposite strategy and targeted upper segments. The brand commercialised a trendy urban collection inspired by its models designed for sport competition. Available in many colours, these models were very quickly successful. (…) Puma passed its rejuvenating challenge and has become one of the younger generations’ favourite brands…”

• Annex 12.6: Article MOST EXCITING BRANDS 2015, published under http://retail.economictimes.indiatimes.com. Notably, it notes that “The relatively humble and unprepossessing Woodland has trumped formidable competitors like Nike, Adidas and Puma to dominate the Sport and Footwear category in the Most Exciting Brands 2015 survey.”
• Annex 12.7: An article published under www.statista.com – The Statistics Portal. Under the title “PUMA products purchased in the UK, by clothing type”, this study confirms that 1.38 Million people used PUMA sport shoes in 2013 in the UK.
• Annex 12.8: On the same website of Statistics Portal we can find another document showing a ranking of the sporting goods brands awareness, in which PUMA is ranked as number four.

• Annex 13: Marketing expenses from 2006 until 2015. This Annex contains details of the different campaigns of PUMA in the European Union, and their corresponding costs. These campaigns were conducted notably in media, in newspapers, on television and on the internet (Youtube and social networks). The figures are substantial.
• Annex 14: Numerous clippings from 2006 to 2012 showing the earlier trade marks in relation to sportswear goods, such as shoes, clothes. These clippings are notably taken from magazines and newspapers published across the European Union, such as FHM (Germany), Glamour (Italy), GQ (Portugal), FHM (Romania), Financial Times (United Kingdom), Max (France) or Tiempo (Spain). These documents show also PUMA events and store openings.
• Annex 15: Photos and clippings about celebrities in the sports world who use footwear and clothing with PUMA’s marks, not only in Europe, but all over the world. There is also a document listing all the sportsmen and teams sponsored by PUMA, including Usain Bolt, star footballers such as Cesc Fabregas, Gianluigi Buffon or Radamel Falcao; national football teams such as Italy, Austria, South Africa or Uruguay; and Formula 1 drivers such as Fernando Alonso or Michael Schumacher. Moreover, other celebrities without any relationship with the world of sports use and/or wear PUMA products, such as Rihanna and Kylie Jenner. In addition, some advertisement expenses are provided. The figures are substantial.
• It is also worth noting that the opponent provided numerous images and photographs of PUMA sunglasses in its arguments and evidence.

Having examined the material listed above, the Opposition Division concludes that the earlier trade marks have acquired a very high degree of distinctiveness through their use on the market for part of the goods, namely:

Earlier mark 1

• spectacles and sunglasses in Class 9

Earlier mark 2

• at least for spectacles in Class 9

• backpacks and bags for matches (sports) in Class 18 as well as clothing, footwear and headgear in Class 25.

This high distinctiveness can be established in all the relevant countries on which the opponent bases its opposition but is particularly important in Germany and Italy notably.

Indeed, the abovementioned evidence and affidavits with supporting evidence indicate that the earlier trade marks have been intensely used for a substantial period of time and are very well known in the relevant markets of sporting goods, such as sportswear, shoes and accessories. The evidence shows also that the trade marks have been used as registered. The considerable sales figures, revenues and market share as well as the very significant marketing efforts, the surveys, the independent studies and the extensive press coverage in leading magazines and newspapers show that the trade mark have a prevailing position among the leading brands in the abovementioned markets.

Therefore, it can be concluded that the earlier marks acquired a very high degree of distinctiveness and are even reputed for the abovementioned goods.

2. The goods and services

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

Earlier mark 1

Class 9: Spectacles, glasses and frames, contact lenses; parts for all the aforesaid goods.

Earlier mark 2

Class 9: Optical, apparatus, devices and instruments (included in this class); spectacles, spectacle lenses and spectacle frames, contact lenses; binoculars; protective eyewear; special containers (covers, sheaths, cases) adapted to the apparatus and instruments included in this class.

Class 18: Goods of leather and/or imitation leather (included in this class); handbags and other cases not adapted to the goods for which they are intended as well as small leather goods, particularly purses, wallets, key cases; handbags, briefcases for documents, storage bags and shopping bags, school bags and satchels, bags for campers, backpacks, pouches, bags for matches (sports), transport and storage bags for permanent use and traveling bags of leather, of synthetic materials and/or textile fabrics and cloths; traveling sets (leatherware); shoulder belts; trunks and suitcases; pocket key-holders of leather or leather substitutes; storage bags for bicycles.

Class 25: Clothing, footwear, headgear; parts and components of footwear, soles, insoles and adjustment soles, heels, boot uppers, non-slipping devices for footwear, studs and spikes; interlining (stiffening), ready-made pockets for clothing; corsetry articles; boots, boot liners and mules, slippers; finished articles for footwear, street, sports, leisure, training, jogging, gymnastic, bath and physiological footwear (included in this class), tennis shoes; leggings and gaiters, leggings and gaiters of leather, leg warmers, puttees, gaiters for shoes; training overalls, gym trunks and knitwear, football trunks and knitwear, tennis shirts and shorts, bath and beach clothing and outfits, bathing trunks, bikinis and bathing suits, including two-piece bathing suits, sports and leisure clothing and outfits (including knitted clothing and outfits and jerseys), also for physical training, jogging or endurance racing and gymnastics, sports trunks and pants, knitwear, pullovers, tee-shirts, sweatshirts, clothing and outfits for tennis and skiing; tracksuits and outfits for leisure, tracksuits and outfits adapted for all weather, stockings (hosiery), socks for football, gloves, including gloves of leather, also of imitation leather or of synthetic leather, knitted caps and caps, headbands and headbands as hairdressing accessories, sweatbands, sashes for wear, fichus, scarves, mufflers, neckties; belts, anoraks and parkas, reefer jackets and raincoats, coats, blouses, jackets and suit coats, skirts, panties, underpants and trousers, including denim trousers, pullovers and coordinated sets comprising several garments and undergarments; gloves for cross-country skiing or for ski touring and for cycling.

Class 35: Distribution of advertising material for third parties; advisory services for business organization, namely transfer of know-how for setting up physical exercise and training centers.

The contested goods and services are the following:

Class 9: Sunglasses; prescription sunglasses; covers for sunglasses; anti-glare glasses; straps for sunglasses; chains for sunglasses; cords for sunglasses; cases for sunglasses; sunglass temples; sunglass nose pads; frames for spectacles and sunglasses; cases for spectacles and sunglasses; chains for spectacles and for sunglasses; tablet covers; flip covers for smart phones; frames for sunglasses; lenses for sunglasses.

Class 35: Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; business management; business management for a trade company and for a service company; commercial trading and consumer information services; retail services in relation to smartphones; digital advertising services; data processing for the collection of data for business purposes; providing consumer product advice; product marketing.

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 ‘namely’, used in the applicant’s and 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.

Contested goods in Class 9

The contested sunglasses are optical devices, as are the opponent’s spectacles of earlier mark 1. Moreover, they can have the same producers, end users and distribution channels. Therefore, they are similar to a high degree.

The contested anti-glare glasses and prescription sunglasses overlap with the opponent’s spectacles, for which the earlier marks are highly distinctive. This is because some sunglasses and anti-glare glasses offer both sun protection or protection against glare and sight correction. Therefore, these sets of goods are considered identical.

The contested sunglass temples; sunglass nose pads; frames for spectacles and sunglasses; frames for sunglasses; lenses for sunglasses are parts for spectacles and sunglasses. These goods are similar to the opponent’s spectacles, for which earlier marks are highly distinctive. This is because both sets of goods share the same distribution channels (opticians) and will be usually manufactured or marketed by the same undertakings Furthermore, they are complementary.

The contested covers for sunglasses; straps for sunglasses; chains for sunglasses; cords for sunglasses; cases for sunglasses; cases for spectacles and sunglasses; chains for spectacles and for sunglasses are similar to the opponent’s spectacles, for which earlier marks are highly distinctive, since they are complementary, share the same distribution channels (opticians) and are directed at the same end users. As regards the contested covers for sunglasses, they are also usually manufactured or marketed by the same undertakings as the opponent’s spectacles.

The contested tablet covers; flip covers for smart phones are similar to the opponent’s backpacks in Class 18, for which earlier mark 2 is highly distinctive. Indeed, these opponent’s goods can be used, among other things, for carrying phones and tablets. Quite often these bags contain special compartments for putting tablets or phones in. The goods compared have a similar nature (bag/case/cover in which objects are placed), purpose of use (carrying or protecting things) and method of use (placing things inside a bag/case/cover). They can also be in competition and are often produced by the same manufacturers.

Contested services in Class 35

The contested digital advertising services; product marketing; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes overlap with the opponent’s distribution of advertising material for third parties. Therefore, they are considered identical.

The contested business management; business management for a trade company and for a service company; commercial trading and consumer information services; data processing for the collection of data for business purposes; providing consumer product advice are similar to the opponent’s advisory services for business organization, namely transfer of know-how for setting up physical exercise and training centers. All these services are usually rendered by specialised companies such as business consultants. Moreover, the contested services can relate to the specific fields of the opponent’s services, since they are very broad categories. The abovementioned companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire develop and expand market share. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ +activity that may be useful in the ‘management of a business’. For example, the contested commercial trading is, in its broadest sense, the operating of a business for profit, although it usually refers to those activities involving buying and selling as opposed to industry. And consumer information services are services which provide information and consultation on the products sold/services provided. All these services in conflict have a similar purpose and nature as they are involved in the running and operating of businesses and may provide advice and information to enable a company to function successfully in a given market target. In addition, these services are likely to be rendered in combination with each other through the same channels and providers and to the same end users. They are, therefore, considered to be similar.

Finally, the contested retail services in relation to smartphones are dissimilar to the opponent’s goods and services. Indeed, 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 smartphones are not identical to the opponent’s goods in Classes 9, 18 and 25. Moreover, these contested services have no points of contact with opponent’s services in Class 35 either. They differ in their nature, purpose, method of use and origins. Furthermore, they do not satisfy the same needs and are neither in competition nor complementary.

3. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar are directed at the public at large and at business customers. By contrast, the services found to be identical or similar are only directed at business customers with specific professional knowledge or expertise.

The degree of attention is high regarding some services in Class 35, since they may have important consequences on the smooth running and ultimate success of a business undertaking, namely business management; business management for a trade company and for a service company; digital advertising services; data processing for the collection of data for business purposes; product marketing.

For all the remaining goods and services, the degree of attention is average.

4. The signs

(earlier mark 1) (earlier mark 2)	YUMA
Earlier trade marks	Contested sign

The relevant territories are Germany for earlier mark 1 and Italy for earlier mark 2.

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 features the distinctive word PUMA written in slightly stylised upper case letters. Earlier mark 2 is furthermore surmounted by a pouncing feline resembling a shadow puppet element. The sign has no elements that could be considered clearly more dominant than other elements.

The element PUMA of the earlier marks and the figurative element of a pouncing feline composing the earlier mark 2 will both be associated with a wild animal that is a member of the cat family (see Duden dictionary online). However, these elements have no meaning in relation to the goods and services covered under these marks and, therefore, they are distinctive. It has to be noted that the term PUMA (or its identical transliteration) is found in all languages of the relevant territories, except in Dutch (POEMA) and Greek (transliteration: poúma). However, in these cases the pronunciation is identical and PUMA is a rather basic word.

The contested mark is a word mark, consisting of the distinctive verbal element YUMA, which is meaningless.

Visually, the signs coincide in the string of letters ‘*UMA’ and in their length. However, they differ in their first letters, ‘P’ and ‘Y’ respectively, in the slightly stylised typeface of the earlier marks and in the additional figurative element of earlier mark 2.

However, with regard to this figurative part, it has to be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the signs coincide in their vast majority, namely in the pronunciation of the letters ‘*UMA’. They only differ in the sounds of their first letters, ‘P’ and ‘Y’, respectively, which cannot counterbalance the similarity between the identical letter string ‘UMA’.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

While the public will perceive the earlier marks as having a clear and direct concept of a feline, the contested sign lacks any meaning. Therefore, since one of the signs will not be associated with any meaning, 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.

5. Distinctiveness of the earlier mark

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

The evidence submitted by the opponent has already been examined above and it has been concluded that the earlier trade marks have acquired a very high degree of distinctiveness through their use on the market in the relevant countries for parts of the goods, namely:

Earlier mark 1

• spectacles and sunglasses in Class 9

Earlier mark 2

• at least for spectacles in Class 9

• backpacks and bags for matches (sports) in Class 18 as well as clothing, footwear and headgear in Class 25.

In contrast, the opponent does not succeed in establishing that the trade marks have acquired an above average distinctiveness for the identical services in Class 35. On the contrary, the evidence does not make any reference to the vast majority of these services. Therefore, the result would be the same for all the other designated countries, on which the comparison has not been focused.

It is recalled that the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

6. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

Moreover, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods and services are partly identical, partly similar and partly dissimilar as regards the retail services in relation to smartphones in Class 35. 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 abovementioned services cannot be successful.

The signs are visually and aurally similar to an average degree but are conceptually not similar.

The contested goods in Class 9 are identical or similar to some of the opponent’s goods in this class for which the earlier marks are highly distinctive. In that case, the very high distinctive character generates a broader protection for the earlier marks and is sufficiently strong to counteract the conceptual impact of the earlier marks. In other words, the primary meaning of these signs is replaced by the indication of a particular company, namely the opponent. Taken together with the main difference of only one letter, the identity and similarity of the goods, as well as the average degree of attention, it is likely that parts of the consumers will not safely distinguish between the signs in conflict and confuse them.

However, the identical and similar services in Class 35 have no relevant points in common with the goods for which the marks are highly distinctive. Therefore, they do not benefit from the enhanced distinctiveness of the earlier marks.

For these services, the fact that the earlier signs have a concept and will be widely understood by the relevant public plays, consequently, an important role in the evaluation of the likelihood of confusion. As it is stated in the case-law ‘conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs concerned. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately’ (22/06/2004, T-185/02, Picaro, EU:T:2004:189, § 56). In the present case, the earlier marks have a clear and distinctive concept, which is sufficient for the public to safely avoid the confusion (and even association) of the signs at issue in relation to the goods and services for which the earlier marks have not acquired a high distinctiveness.

Therefore, a likelihood of confusion does not exist for any of the contested services in Class 35, which are not identical or similar to the opponent’s goods for which a high distinctive character has been recognized. Indeed, consumers will not think that these services originate from the same or, at least, from economically-linked undertakings.

Moreover, it has to be noted that the degree of attention is high regarding some of these services. Therefore, the opposition must be rejected for Class 35.

Given all of the above, the opposition is partly well-founded under Article 8(1)(b) and the contested trademark must be rejected for all the contested goods in Class 9.

The Opposition Division will continue with the examination of the opponent’s claims under Article 8(5) EUTMR in relation to earlier trade mark 2.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims that earlier mark 2 has a reputation for all the goods registered in Classes 18 and 25.

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 earlier trade mark 2

The evidence submitted by the opponent to prove the reputation of earlier mark 2 for Classes 18 and 25 has already been examined above under the grounds of Article 8(1)(b) EUTMR and the high distinctive character of the earlier marks.

As mentioned previously, it is concluded that, taken as a whole, the evidence indicates that the earlier trade mark 2 has not only acquired a very high distinctive character but also enjoys a very high degree of recognition among the relevant public, which leads to the conclusion that this mark enjoys a very strong reputation in Germany and in Italy, respectively for the following goods:

• backpacks and bags for matches (sports) in Class 18

• clothing, footwear and headgear in Class 25

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.

Moreover, Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. Even though consumers may or are likely to establish a link between the two trade marks, in the sense, for example, that the contested trade mark would bring the earlier trade mark to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 71).

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and/or be detrimental to, the distinctive character or repute of the earlier trade mark, as the direct, “inevitable” consequence, and for the sole reason that the mark has reputation. It only refers to these theoretical situations with hardly any link to the present case and to the evidence provided. Indeed, the opponent does not mention any facts, concrete arguments or actual circumstances which could support its conclusions and show how an injury would actually occur, which could lead to the prima facie conclusion that such events are indeed likely in the ordinary course of events. These requirements are 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.

On the contrary, the opponent simply lays down certain general principles, treating the whole as an unavoidable effect of the reputation of earlier mark 2. However, there seems to be no good reason to blindly 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 insufficient, as seen above.

Therefore, the Opposition Division considers that in any case the arguments of the opponent could have not been deemed sufficient to establish that there is a non-hypothetical risk of unfair advantage and/or detriment to distinctiveness when the contested sign is used in relation to the contested services in Class 35.

It has also to be recalled that 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 earlier trade mark 2, as required by Article 8(5) EUTMR. As one of the necessary requirements is not met, the opposition must be rejected as 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Adriana VAN ROODEN

Steve HAUSER

Martina GALLE

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.