OPPOSITION No B 2 574 344

S.C. Johnson & Son, Inc., 1525 Howe Street, Racine, WI 53403-2236, United States of America (opponent), represented by Gilbey Legal, 43, Boulevard Haussmann, 75009 Paris, France (professional representative)

a g a i n s t

Maurizio Ronchi, Via Cimabue, 24, 50121 Firenze, Italy (applicant).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 574 344 is upheld for all the contested goods, namely:

Class 25:        Footwear; training shoes; sandals; footwear; gymnastic shoes; football boots; training shoes; boots; lace boots.

2.        European Union trade mark application No 14 185 227 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 185 227, namely against some of the goods in Class 25. The opposition is based on, inter alia, German trade mark registration No 1 007 268. The opponent invoked Article 8(1)(b) EUTMR.

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 opposition is based on more than one earlier trade mark. The applicant requested that the opponent submit proof of use of all three trade marks on which the opposition is based, namely European Union trade mark registration No 3 041 852, international registration No 993 694 designating the European Union, and German trade mark registration No 1 007 268. The request was submitted in due time and has been found admissible for earlier European Union trade mark No 3 041 852 and German trade mark No 1 007 268, which were registered more than five years prior to the relevant date mentioned above.

The Opposition Division finds it appropriate to first examine the evidence of use in relation to the opponent’s German trade mark No 1 007 268.

The contested application was published on 10/06/2015. The opponent was therefore required to prove that the earlier trade mark was put to genuine use in Germany from 10/06/2010 to 09/06/2015 inclusive.

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

Class 25:        Inner soles.

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 27/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 02/09/2016 to submit evidence of use of the earlier trade mark. At the request of the opponent, this deadline was extended until 02/11/2016. On 02/11/2016, within the time limit, the opponent submitted evidence of use.

The opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. The Opposition Division accepts this request insofar it relates to some of the evidence (specifically the financial and other sensitive commercial information contained in the documents) and will describe this evidence only in the most general terms without divulging any such data. However, this does not apply to evidence that consists of information that is already available to the public, either in printed form or on the internet.

The evidence to be taken into account is the following:

• Exhibits 21-26: invoices issued by S.C. Johnson Bama GmbH (a German subsidiary of the opponent) to Siemes Schuhcenter GmbH & Co KG and its branches in Berlin, Düsseldorf, Bornheim, Kleve, Dachau, Giessen, Oldenburg, etc., using the mark ‘AMA’ in the lists of products (inner soles) sold:

• 10 invoices relating to the period from June to December 2010 (18 pages);
• 10 invoices relating to the period from February to September 2011 (18 pages);
• 10 invoices relating to the period from February to December 2012 (18 pages);
• 10 invoices relating to the period from January to December 2013 (18 pages);
• 10 invoices relating to the period from April to October 2014 (19 pages);
• 10 invoices relating to the period from January to June 2015 (10 pages).

• Exhibits 27-28: invoices issued by Bama International and SC Johnson Bama GmbH to Siements Schuh Center GmbH & Co. KG, using the trade mark ‘AMA’ in the lists of products (inner soles) sold:

• 1 invoice dated 26/05/2008 (3 pages);
• 1 invoice dated 19/08/2015 (1 page).

• Exhibit 29: a commercial brochure for ‘AMA’ products, providing basic information, pictures and short descriptions of 12 products, indicated as ‘AMA Moos’, ‘AMA Frottee’, ‘AMA Odor’, ‘AMA Frische-Sohlen’, ‘AMA Leder’, ‘AMA Gel polster’, ‘AMA Gel Fersenhalter’, ‘AMA Gel Fersenkissen’, ‘AMA Alu’, ‘AMA Wolle’, ‘AMA Polar’ and ‘AMA Sokkets’. The brochure is undated; it has the opponent’s German distributor’s name, Siemes Schuh Center, on the cover page, and the trade mark  appears on each page, depicted in white, green, blue, yellow-brown, orange, etc., on a grey, green, blue, yellow-brown, orange, etc., background, as well as on the items of packaging for the goods shown in the brochure.

This exhibit also includes a sample of packaging for the goods, bearing the mark  on the top.

• Exhibit 30: a statutory declaration signed by Benno Duetz, senior director of SC Johnson Bama GmbH, attesting to the accuracy of the figures for sales volumes submitted in relation to Germany for insoles bearing the trade mark ‘AMA’, together with the figures in question, namely a list of ‘AMA’ sales figures for the years 2008-2015, and samples of ‘AMA’ product packaging dating from between 2006 and 2013, bearing the mark depicted in black, light blue, green, yellow or brown on a darker blue, green, yellow, brown or white background.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States. To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that, even if the use of the mark was made by other company, it was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered, since the evidence submitted shows very limited commercial activity on the German market, relates to only one client and does not prove the public use of the mark; furthermore, the samples of product packaging are undated.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The invoices, the sales figures for the years 2008-2015, the samples of ‘AMA’ product packaging dating from between 2006 and 2013, and the commercial brochure for ‘AMA’ products show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros) and the addresses in different cities in Germany where Siemes Schuh Center branches are located. Therefore, the evidence relates to the relevant territory.

As regards the time of use, the evidence submitted as Exhibits 21-26 is dated within the relevant period. According to settled case-law, evidence referring to use made outside the relevant timeframe can be taken into account if it contains conclusive indirect proof that the mark must have been put to genuine use also during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50). In the present case, the evidence referring to use outside the relevant period is one invoice dated 26/05/2008, one invoice dated 19/08/2015 (Exhibits 27-28), some data relating to sales between 2008 and 2015, and samples of ‘AMA’ product packaging dating from between 2006 and 2013 (Exhibit 30). However, these items of evidence merely confirm the use of the opponent’s mark within the relevant period, since the use that they demonstrate is quite close in time to the relevant period and shows continued use when considered in conjunction with the other invoices, dated between June 2010 and June 2015, and with the data on sales history and samples of ‘AMA’ product packaging that do relate to 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 and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency. It has been demonstrated that ‘AMA’ inner soles were sold in 2010, 2011, 2012, 2013, 2014 and 2015 (the invoices submitted as Exhibits 21-26 and supported by the statutory declaration and sales figures for the years 2008-2015 submitted as Exhibit 30). Although the invoices (Exhibits 21-26) indicate quite a low commercial volume, when assessed in conjunction with the sales figures for the years 2008-2015, samples of ‘AMA’ product packaging dating from between 2006 and 2013 (Exhibit 30) and the commercial brochure for ‘AMA’ products (Exhibit 29), the evidence submitted provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use of the earlier mark. Thus, it can be clearly seen that the owner has seriously tried to acquire a commercial position in the relevant market by using its mark for ‘AMA’ inner soles within the relevant period.

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

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.

The evidence submitted in the exhibits listed above shows that the earlier sign was used in such a way as to establish a clear link between the goods and the undertaking responsible for their marketing. Therefore, the Opposition Division considers that the evidence shows use of the sign as a trade mark.

As can be seen from the evidence, the mark ‘AMA’ has been used for inner soles in the form in which it is registered, namely as a word mark, ‘AMA’ (Exhibits 21-26, part of Exhibits 29 and 30), and as a figurative mark, , in white, black, light blue, green, brown, red or yellow on a darker blue, green, brown, red, yellow, grey, or white background (part of Exhibits 29 and 30). Since the stylisation of the word ‘AMA’ as it is used, the colours used and the different coloured backgrounds are of a rather decorative nature, the Opposition Division considers that these differences do not alter the distinctive character of the mark in the form in which it was registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The applicant argues that the outward use of the mark has not been proven, pointing out that the invoices submitted are addressed to only one shop (Siemes Schuhcenter) and stating that no evidence demonstrating public use was submitted. However, outward use does not necessarily imply use aimed at end consumers. In the present case, the evidence submitted as Exhibits 21-26 demonstrates that the opponent sold its products to an external purchaser (the German distributor Siemes Schuhcenter) and that these products were sent to different branches of the Siemes Schuhcenter group in different cities in Germany. The Court has held that the chain producer-distributor-market is a common method of business organisation and cannot be regarded as purely internal use (17/02/2011, T-324/09, Friboi, EU:T:2011:47, § 32). Therefore, the evidence submitted is sufficient to demonstrate that the mark was used publicly and outwardly.

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

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of earlier German trade mark No 1 007 268 during the relevant period in the relevant territory in connection with inner soles in Class 25.

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 German trade mark No 1 007 268, for which the use has already been assessed and proven.

1. The goods

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

Class 25:        Inner soles.

The contested goods, after limitations made on 04/03/2016 and 20/06/2016 and the opponent’s observations of 31/03/2017 stating that the opposition was not maintained for half-boots, are the following:

Class 25:        Footwear; training shoes; sandals; footwear; gymnastic shoes; football boots; training shoes; boots; lace boots.

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

The contested footwear (listed twice); training shoes (listed twice); sandals; gymnastic shoes; football boots; boots; lace boots are similar to the opponent’s inner soles, which are important parts of various kinds of footwear; these goods are likely to be produced by the same manufacturers and distributed through the same channels. Furthermore, they are complementary and may have the same relevant public.

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 considered average.

3. The signs

AMA
Earlier trade mark	Contested sign

The relevant territory is Germany.

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

The earlier mark is a word mark ‘AMA’. In the case of word marks, the words themselves are protected, not their written form.

The contested sign is a figurative mark consisting of the word ‘AMA’ depicted in a stylised typeface with the much smaller stylised word ‘brand’ underneath and a larger black figurative element above. The word ‘brand’, by virtue of its size and position, is clearly overshadowed by the remaining elements and plays a secondary role in the overall composition of the mark. Although the figurative element occupies a large part of the contested sign, the verbal element ‘AMA’ is also clearly perceptible and the differences in size between these two elements are not of such a nature as to result in the dominance of one element.

The word ‘AMA’ in both marks does not have any meaning for the relevant German-speaking public and is therefore distinctive. The word ‘brand’ in the contested sign may be perceived by the relevant public either as an English word meaning ‘a trade name or trademark’ or as a German word meaning ‘fire’ (information extracted from Collins Dictionary on 29/06/2017 at https://www.collinsdictionary.com /dictionary/german-english/brand). Therefore, for the part of the public that perceives the English meaning of the word ‘brand’, this element is considered non-distinctive due to its common use in the market to refer to a brand/trade mark. For the remaining part of the public, it has an average degree of distinctiveness.

The figurative element does not convey any meaning in relation to the relevant goods and is therefore of average distinctiveness. However, regard must be had to the fact 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 verbal element ‘AMA’ in the contested sign will be attributed more trade mark significance than the figurative element by the relevant consumers.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘AMA’, which constitutes the earlier mark in its entirety and is one of two verbal elements in the contested sign. The signs differ in the figurative element and the additional (and non-distinctive for at least part of the public) verbal element ‘brand’ of the contested sign. However, the word ‘brand’ plays a secondary role in the overall composition of the mark (for the reasons described above) and will not be the first element to catch and retain consumers’ attention.

The applicant, in his observations, emphasises the importance of the figurative element, its coherence with the shape of the letter ‘M’ and the stylisation of the word ‘AMA’ in the overall composition of the mark. The Opposition Division agrees that these factors create some visual differences between the signs; however, they cannot counteract the fact that the distinctive verbal element ‘AMA’ is clearly perceptible as such and is identical to the earlier mark.

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

Aurally, the pronunciation of the marks coincides in the sound of the letters /AMA/, present identically in both signs. The pronunciation differs in the sound of the letters /brand/ of the contested sign. The figurative element of the contested sign is not subject to a phonetic assessment, since it will not be referred to orally by the relevant public. Having regard to the facts that the aurally identical element ‘AMA’ is depicted in a larger size than the element ‘brand’ in the contested sign and that the latter is clearly subordinate and also non-distinctive for at least part of the public, the word ‘AMA’ will be the first element noticed and pronounced by the relevant consumers.

Therefore, the signs are considered aurally similar to a high degree.

Conceptually, neither the word ‘AMA’, present in both signs, nor the figurative element of the contested sign has any meaning for the public in the relevant territory. The subordinate word ‘brand’ in the contested sign will evoke one of two concepts (as explained above). 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.

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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

5. Global assessment, other arguments and conclusion

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 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).

As concluded above, the contested goods are similar to the opponent’s goods and they target the public at large, which has an average degree of attention.

The signs are similar to the extent that the contested sign completely reproduces the earlier mark, ‘AMA’. The differences between the signs are limited to the secondary (and non-distinctive for part of the relevant public) verbal element ‘brand’, the figurative element and the stylisation of the coinciding element in the contested sign (the last two of these differences, however, can be perceived only visually). Therefore, as explained in section c), the signs are considered visually similar to an average degree, aurally similar to a high degree and conceptually not similar. The degree of distinctiveness of the earlier mark is average.

The applicant argues that, although the opponent’s goods can be found in the same footwear shops as the applicant’s goods, they are usually sold in separate departments, and consumers would never confuse or associate a producer of insoles with a producer of footwear. However, even though the goods under comparison can be sold in different departments, the fact that they are usually sold in the same footwear shops would only increase the likelihood of confusion, since the marks have the identical distinctive verbal element ‘AMA’, and it is common for shoe manufacturers to offer complementary products, such as insoles, shoe care products, etc., in addition to footwear.

Even taking into account the fact that for the relevant goods in Class 25 the visual aspect plays a greater role (since generally in shoe shops customers can themselves either choose the goods they wish to buy or be assisted by the sales staff and, therefore, the visual perception of the marks in question will generally take place prior to purchase), the visual differences between the signs, arising from the figurative element and secondary (or even non-distinctive for part of the public) element of the contested sign, are not capable of counteracting the similarities resulting from the identical element ‘AMA’. Therefore, 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49), and the consumer is likely to believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings.

Taking into account 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 Opposition Division finds that there is a likelihood of confusion on the part of the relevant public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 1 007 268. It follows that the contested sign must be rejected for all the contested goods.

As earlier German trade mark registration No 1 007 268 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lena FRANKENBERG GLANTZ

Rasa BARAKAUSKIENE

Ana MUÑIZ RODRÍGUEZ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.