OPPOSITION No B 2 692 948

Next Retail Limited, Desford Road, Enderby, Leicester, Leicestershire LE19 4AT, United Kingdom (opponent), represented by Marks & Clerk LLP, 90 Long Acre, London WC2E 9RA, United Kingdom (professional representative)

a g a i n s t

Clarissa Falzone, Piazza Ruggero di Sicilia 7, 00162 Rome, Italy and Alessandra Danesi, Via Riccardo Zandonai 88, 00135 Rome, Italy (applicants).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 692 948 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 992 291. The opposition is based on, inter alia, the United Kingdom trade mark registration No 2 555 795 and the European Union trade mark registration No 12 706 164. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

United Kingdom trade mark registration No 2 555 795 ‘LABEL’ 

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

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier UK trade mark No 2 555 795 on which the opposition is, inter alia, based.

On 13/05/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 18/09/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier UK trade mark No 2 555 795.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark. The examination of the opposition will continue in relation to the remaining earlier EUTM No 12 706 164.

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 EUTM registration No 12 706 164.

1. The goods and services

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

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 25: Clothing. 

Clothing is identically contained in 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 are directed at the public at large. The degree of attention will be average.

3. The signs

LABEL
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a word sign which consists of one indivisible element ‘LABEL’. On the other hand, the contested sign is a figurative sign which consists of a central device which resembles an unfinished triangle conjoined with an unfinished circle. None of these figurative elements has any relation to the relevant goods, they are therefore distinctive. Below this element and in a smaller size, there is a verbal element which resembles the letters ‘label’, although hardly readable, written in highly stylised pale grey letters.

The common element ‘label’ is understood in part of the EU as indicating a piece of fabric sewn inside a garment and bearing the brand name, size or instructions for care, and therefore is non-distinctive for this part of the public for the relevant goods clothing. However, for the other part of the public, such as the non-English-speaking part of the public, it has no meaning and is distinctive.

The Opposition Division will first examine the opposition in relation to the part of the public for which ‘label’ has no meaning and it is distinctive.

The figurative element in the contested sign is the dominant element as it is the most eye-catching, the element ‘label’, due to its size position and graphical highly stylisation, plays a secondary role and it is hardly readable.

Visually, the signs coincide in the word ‘label’ which forms the earlier mark and the non-dominant element of the contested sign. However, they differ in the device element of an unfinished triangle conjoined with an unfinished circle and in the graphical representation and colours of the contested sign. Therefore, the signs are visually similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛label’ in case they are readable by the relevant consumers in the contested sign. Since the other element is a purely figurative device which will not be pronounced by the relevant consumers, the signs are aurally identical for those consumers.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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, it is a substantial company with an international business and reputation. The opponent’s mark has been used extensively within the European Union and in particular in the United Kingdom and in the Republic of Ireland. The Opponent has an annual turnover in excess of £4 billion, over 4 million active customers on their mail order database and around 500 stores in the United Kingdom.

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 contested sign was filed on 12/01/2016 and therefore the opponent was required to show enhanced distinctive character of the earlier mark in the European Union before that date.

The opponent submitted the following evidence:

• Exhibit 1: Extract form the eSearch EUIPO database which contains the registration details of the earlier mark No 12 706 164. Extract from the UK Intellectual Property Office showing the registration details of the earlier mark No 3 099 443.

• Exhibit 2: Extracts from the website www.nextplc.co.uk which contain the history of the opponent and the parent companies Next Holdings Ltd. and Next Plc.

• Exhibit 3: Extracts from the website www.nextdirect.com dated 16/09/2016 which show the signs ‘LABEL’ in relation to, among others, clothing in Ireland, Germany, Poland, Denmark, Cyprus, the UK, Austria, Belgium, Bulgaria, Croatia, Estonia, Finland, France, Greece, Hungary, Latvia, Lithuania and the Czech Republic.

• Exhibit 4: Extracts from the website www.labelonline.co.uk which show the sign ‘LABEL’ in relation to different brands such as Karen Millen, Ted baker, Tommy Hilfiger for wallets, suitcases, bags, dresses, shoes and caps, among others.  

• Exhibit 5: Four catalogues corresponding to Winter 2014 and 2015, Spring and Summer 2015 respectively which show the signs ‘LABEL’. The articles could be ordered by mail and they are delivered by Next. They include items under trade marks such as PUMA, New Balance, Converse, Ray Ban, Lee and Calvin Klein.

• Exhibit 6: A copy of the Annual Report and Account of January 2016 of NEXT Plc. It includes a breakdown of the sales of the Next Retail and Brand as well as the Profits and EPS of 2015 and 2016. The opponent also states that the ‘LABEL’ marks had a turnover of 145 million GBP in 2015 and 180 GBP in 2016.

• Exhibit 7: Pictures of hangers, labels which show the marks ‘LABEL’. These documents are undated.

Having examined the material listed above, the Opposition Division concludes that it has not been proved that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market.

The majority of the documents, such as the extracts from the opponent´s website, are entirely issued by the company itself. Some of these pieces of evidence are either undated or dated after the contested application was filed (annexes 2-4 and 7).

On the other hand, the catalogues (annex 5), indicate that some promotional activities were carried out. Moreover, the sale figures (annex 6) issued by the Annual Report and Account are indications of some activity of the earlier marks in the EU markets.

However, the evidence provided, taken as a whole, does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use for the goods in Class 25. The opponent did not file any direct evidence (such as a survey on the mark’s recognition that support the finding of brand awareness among the public) or sufficient indirect evidence (such as evidence of high turnover, high advertising expenditures or extensive press coverage) to substantiate the enhanced distinctiveness of the earlier mark. Therefore, this claim is rejected as unfounded.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier mark has no meaning for any of the goods from the perspective of the part of the public abovementioned. Therefore, the distinctiveness of the earlier mark must be seen as normal for that part of the public for which ‘LABEL’ is distinctive.

5. Global assessment, other arguments and conclusion

The goods are identical, the degree of attention of the relevant public is average and the distinctiveness of the earlier mark is normal.

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 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

The interdependence of those factors is expressly referred to in recital 8 in the preamble to the CTMR, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the mark and the sign and between the goods or services identified (10/09/2008, T-325/06, Capio, EU:T:2008:338, § 72 and the case-law cited).

In the present case, it is considered that the differences between the signs are enough to counteract the similarities between them. The fact that they merely share some letters ‘label’ which are hardly readable and form the non-dominant element of the contested sign, is insufficient to conclude a likelihood of confusion between the marks in comparison, when seen as a whole, despite the identity of the goods at issue. The relevant public will perceive the contested sign as a figurative device, which is the most dominant element of the sign, and the verbal element ‘label’ which is hardly readable due to is stylisation, and will not immediately identify the earlier mark included in it. Moreover, there exist important visual and conceptual differences between the signs which make the consumers notice them and consequently to distinguish them.

Generally in clothes shops customers can themselves either choose the clothes 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 different verbal and figurative elements of the contested sign are particularly relevant when assessing the likelihood of confusion between them.

Considering all the above, even if the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the common element ‘label’ is non-distinctive. This is because, as a result of the non-distinctive character of that element, that part of the public will perceive the signs as being even less similar. Therefore, there is no likelihood of confusion even for the English-speaking part of the public.

The opponent has also based its opposition on the UK trade mark registration No 3 099 443 for the word mark ‘LABEL’ registered for retail services, including retail services offered via stores, mail order catalogue, online, via television channel, via mobile phone and by direct marketing, all connected with the sale of jewellery, watches and clocks, fashion accessories, homewares, kitchen and tableware and household textiles in Class 35.

Since this mark is identical to the one which has been compared and covers services which are clearly different to the goods applied for in the contested trade mark due to their different natures, purpose, method of uses, distributions channels and end consumers, the outcome cannot be different with respect to the goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

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 applicants 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 applicants are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicants did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

José Antonio GARRIDO OTAOLA

Carmen SÁNCHEZ PALOMARES

Ana MUÑIZ RODRIGUEZ

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.