OPPOSITION No B 2 775 362

Money Industries Limited, Units 1-6 Euro Centre, 116-118 Bury New Road, Manchester  M8 8EB, United Kingdom (opponent), represented by Alpha & Omega,  Chine Croft  East Hill, Ottery St. Mary, Devon EX11 1PJ, United Kingdom (professional representative)

a g a i n s t

19 Group GmbH, Alt Moabit 71, 10555 Berlin, Germany, (applicant).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 775 362 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 534 506, namely against all the goods in Classes 18 and 25. The opposition is based on the following earlier rights:

• European Union trade mark registration No 8 954 984

• United Kingdom trade mark registration No 2 311 768

• United Kingdom trade mark registration No 3 107 522

The opponent invoked Article 8(1)(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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 954 984.

1. The goods

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

Class 18: Bags, wallets, purses

Class 25: Clothing, footwear, headgear; jeans, jumpers, cardigans, jackets, T-shirts, polo shirts, sweat shirts, sweat pants, sweat shorts, hoodies, hats.

The contested goods are the following:

Class 18: Luggage, bags, wallets and other carriers; Sausage skins and imitations thereof; Umbrellas and parasols; Saddlery, whips and animal apparel; Walking sticks.

Class 25: Footwear; Headgear; Clothing.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 18:

Bags, wallets appear identically on both lists of goods.

Luggage and other carriers are similar to the opponent’s bags as they have the same purpose, namely carrying items. They can coincide in end user and distribution channels.

Umbrellas and parasols; saddlery, whips and animal apparel; walking sticks are dissimilar to all the goods of the opponent in Classes 18 and 25. These goods serve a distinct purpose, i.e. walking, protecting from rain or sun, riding or covering animals. The goods do not coincide with the opponent’s bags, wallets, clothing, footwear, headgear in distribution channels, sales outlets, producers or method of use. They are neither complementary nor in competition.

This finding increasingly holds true for the contested sausage skins and imitations thereof, which is material that encloses the filling of a sausage. In fact, with the entry into force of the 11th edition of the Nice classification, these goods are no longer classified in Class 18 together with certain fashion items, but rather in Class 29 together with other foodstuffs of animal origin. The nature, purpose, method of use of these goods is fundamentally different from that of the opponent’s goods. They are neither complementary nor in competition. They are dissimilar.

Contested goods in Class 25:

Footwear; headgear; clothing appear identically on both lists of goods.

2. Relevant public — degree of attention

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

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

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a figurative mark consisting of the expression ‘money’ written in a custom handwriting font. The contested sign consists of a figurative device element, a symbol which may possibly be seen as a highly stylised letter ‘B’, i.e. second letter of the Latin alphabet, above the term ‘BLACK MONEY’ written in standard black upper case letters. Given its upper position and significant larger size, the symbol is the dominant element of the contested sign as it is the most eye-catching.

The English word ‘MONEY’ is likely to be understood in a significant part of the relevant territory referring to an official currency, in the form of banknotes, coins, etc, issued by a government or other authority. This is because the term is commonly referred to in widely known English-language song lyrics, films, etc.

The word ‘BLACK’ will also be recognised by the relevant public as a basic English term indicating the name of a primary colour.

The English expression ‘BLACK MONEY’ in the contested sign may also be understood by part of the relevant public referring to any money that a person or organization acquires illegally, as by a means that involves tax evasion.

   

None of these meanings have any direct relation to bags, clothing, footwear or other fashion items and therefore the distinctiveness of these terms is normal.

Visually, the signs do not coincide. While they both contain the term ‘MONEY’, its representation is completely different in the two marks: it is written in an unusual handwritten font consisting of a single line in the earlier mark, while in the contested sign the term is in standard upper case. Moreover, the signs differ in the additional figurative symbol, possibly a letter ‘B’, and the term ‘BLACK’ in the contested sign.

Therefore, the signs are visually dissimilar.

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 ‘MONEY’, and differs in the sounds of ‘BLACK’ of the contested sign; possibly also in the sound of the letter ‘B’ in case it is recognised as such.  

Therefore, the signs are aurally similar to a medium degree.

Conceptually, the concept of ‘MONEY’ will be recognised in both signs, although in the contested sign together with an additional, differing concept in ‘BLACK’. The signs are therefore conceptually similar to a medium degree.  

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

4. Distinctiveness of the earlier mark

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

According to the opponent the earlier European Union trade mark has a reputation in the European Union in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark 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 claimed that the trade mark ‘MONEY’ has been used in the EU since 2003 and significant sales were made in connection with the mark in Cyprus, Denmark, Germany, Italy and the UK. In the last 5 years EU sales amounted to £1.5- £2million per annum (wholesale figures). According to the opponent the annual amount spent over the last five years promoting the MONEY brand is in the region of £30,000 per annum.

The opponent claims that the mark ‘MONEY’ has been promoted widely throughout the EU via various methods, for example, by attendance at European trade shows such as Bread and Butter, Premium (Berlin), Pitti (Florence), Jacket required (London).

The opponent also submitted the following evidence:

• History about the ‘MONEY’ mark between 2013 – 2015, prepared by the opponent, according to which the band was created in 2003, first sold in Japan, and since 2004 in Italy where it is currently sold in 30 stores.  

• Promotional material of the opponent’s mark’s presence at the Bread and Butter, Premium event (Berlin, 2011)

• Screenshots from the opponent’s website http://moneyclothing.blogspot.co.uk/ showing clothing items dating back to 2008.

• Advertising material, brochures (e.g. autumn-winter 2007, collections 2006-2014), product labels, images of the products (clothing, footwear, headgear) from the opponent’s website http://moneyclothing.com/ 

• According to one screenshot ‘Money was launched in 2003 […] at the Magic Trade show in Vegas. Italian soccer stars soon adopted the brand, as a limited edition range quickly sold into Penelope’s (Milan) and Gerards Loft (Florence). A decade later Money is established in 150 premium accounts worldwide.’

• Another screenshot shows celebrities wearing clothing with the opponent’s trade mark or logos containing the mark.

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.

Despite showing some use of the trade mark, the evidence provides little information on the extent of such use. The evidence only contains limited indications of the relevant territory: it relates to the United Kingdom through a website with the extension .co.uk offering free delivery in the UK, giving prices in pounds, and the address of a distributor in the UK, and there are some references to stores in Italy. No evidence was provided as regards Cyprus, Denmark and Germany and the opponent only gave overall sales figures concerning sales in the EU as a whole. From these figures it is impossible to establish the specific sales figures in the United Kingdom and Italy where the opponent had demonstrated some market presence.

Furthermore, the evidence does not indicate the market share of the trade mark in the relevant market. This information would particularly have been relevant in the present case given that clothing and other fashion items account for a sizeable EU market with a multitude of market players.

There are some indications of promotional activity, but only figures provided by the opponent itself, with a few news clippings from its website. Overall, the evidence almost entirely comes from the opponent, its website, own collection and own declaration (especially the sales/advertisement figures), without much additional, third-party source documents supporting these statements.

The evidence, furthermore, does not provide any indication of the degree of recognition of the trade mark by the relevant public. There is no information, for example, as regards the visits to the opponent’s website. Equally, there is no information as to the number of visitors or relevance of the trade shows cited by the opponent. The opponent’s website features some – according to the opponent – famous musicians wearing the opponent’s clothing items; however, the recognition these persons may enjoy cannot be extrapolated to their clothing items in general.  

Overall, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

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

5. Global assessment, other arguments and conclusion

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’ (see judgment of 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22 et seq.).

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

The remaining contested goods are clothing, footwear, headgear, luggage, bags, wallets and other carriers, which are fashion items in general.

In clothes shops or stores selling footwear, bags, other fashion accessories, customers can themselves either choose the items they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the completely different visual representation of the coinciding term are particularly relevant when assessing the likelihood of confusion.

Indeed, upon visual inspection of the goods customers will rather focus on the unusual font of the earlier sign, or the contested sign’s dominant symbol. The contested sign also has an additional concept in ‘BLACK’. These differences will enable consumers to safely differentiate between the signs, even in the context of identical or similar goods.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on Article 8(1)(b).

The opponent has also based its opposition on two other UK trade mark registrations. These earlier rights invoked by the opponent cover the following goods: clothing, footwear, headgear (UK TM No 3 107 522) and clothing; shirts; t-shirts. (UK TM No 2 311 768)

These signs thus cover a narrower scope of goods than the EUTM already compared above. Therefore, the outcome cannot be different with respect to the dissimilar goods. Moreover, the signs are visually even less similar to the contested mark since they contain additional figurative elements. Consequently, detailed examination of these marks would not change the outcome.

The examination of the opposition will proceed with the other ground invoked, 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).

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 mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier European Union trade mark has already been examined 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.

It has not been established that the earlier trade mark has a reputation, 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.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Cynthia DEN DEKKER

Marianna KONDAS

Cristina CRESPO MOLTÓ

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.