OPPOSITION No B 2 774 704

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

Woo Sik Kim, Life Apartment #401, Beotkkot-ro 60, Geumcheon-gu, Seoul, Republic of Korea (applicant), represented by Protectia Patentes y Marcas S.L., C/ Arte 21, 2ºA, 28033 Madrid, Spain (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 774 704 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 384 696. The opposition is based on European Union trade mark registrations No 1 620 434, No 15 594, No 13 517 776 and No 13 614 854, all for the word mark ‘NEXT’; United Kingdom trade mark registrations No 2 371 317 for the word mark ‘NEXT’ and No 2 453 621 for the figurative mark ; Irish trade mark registrations No 228 242 and No 115 664, both for the word mark ‘NEXT’; and the well-known mark ‘NEXT’ in the Czech Republic, Denmark, Germany, Cyprus, Malta, Poland and the United Kingdom. The opponent invoked Article 8(1)(b) EUTMR, Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR, and Article 8(5) EUTMR.

PRELIMINARY REMARK

All of the earlier marks are subject to the proof of use requirement. However, for reasons of procedural economy that will become apparent below, there is no need to assess the evidence filed by the opponent for the purpose of establishing genuine use of the earlier marks.

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). 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. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the Czech Republic, Denmark, Germany, Cyprus, Malta, Poland, Ireland, the United Kingdom and the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 27/04/2016. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the Czech Republic, Denmark, Ireland, Germany, Cyprus, Malta, Poland, the United Kingdom and the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

European Union trade mark registration No 1 620 434

Class 35:        Retail services in the fields of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras; the bringing together for the benefit of others of a variety of goods including the aforesaid products; enabling customers to conveniently view and purchase these goods; services for the retail of products through high street stores, via mail order catalogues or over the Internet; providing on-line retail store services in the field of the aforesaid goods; information and advice in relation to retail services relating to the aforesaid goods; business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods; on-line trading services, trading services in respect of a wide range of goods; excluding modelling agency services.

Class 42:        Technical consultancy and advising in the establishment of retail stores in the field of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras.

European Union trade mark registration No 15 594

Class 3:         Soaps; cosmetics; essential oils; perfumes; non-medicated toilet preparations; preparations for the hair; deodorants for use on the person; dentifrices.

Class 11:        Installations for lighting; lamps; lamp bases; lampshades; light bulbs; parts and fittings for all the aforesaid goods.

Class 14:        Precious metals and their alloys and goods made thereof or coated therewith; jewellery; precious stones; clocks, watches and chronometric instruments; watch straps; watch bracelets; parts and fittings for all the aforesaid goods.

Class 18:        Leather and leather imitations and goods made thereof; skins and hides; travelling trunks and suitcases; bags; umbrellas, parasols and walking sticks; whips, harnesses and saddlery; parts and fittings for all the aforesaid goods.

Class 20:        Furniture; beds; bed heads; sofas, sofa beds; chairs; armchairs; tables; pillows; duvets; cushions; mattresses; bedding; parts and fittings for all the aforesaid goods.

Class 24:        Textiles; plastic material as a substitute for fabric; bed and table covers; bed linen; table linen; household linen; wall hangings; blankets; quilts; duvets and duvet covers; sheets; pillow cases; bed valances; bed-covers; table cloths; table mats; napkins; linen fabrics; fabric wall coverings; curtains; curtain tie-backs; cushion covers; pelmets; blinds; covers for chairs and sofas; towels and face cloths.

Class 25:        Articles of clothing; footwear; headgear.

Class 27:         Carpets; rugs; mats and matting; non-textile wall coverings; wall papers; wall paper borders.

European Union trade mark registration No 13 517 776

Class 16:        Paper; cardboard; paper and cardboard for wrapping and packaging, paper bags, cardboard boxes and containers; cardboard tubes; cardboard household storage boxes; paper gift wrap; paper gift bags; cardboard gift boxes; paper or cardboard gift bags for bottles; paper and cardboard gift tags; paper party bags; paper pouches for packaging, plastic bags for packaging, plastic bubble packs for wrapping or packaging; labels, namely, printed paper labels, printed shipping labels; return address labels not of textile; paper signs, advertising signs made of cardboard; paper labels; plastic bags for general use; paper and cardboard tableware, paper and cardboard place mats, paper and cardboard table mats, paper and cardboard coasters; paper napkins and serviettes, paper table linens, paper tablecloths; paper and cardboard cake decorations; drawer liners made of scented or unscented paper; paper handtowels, paper towels; paper garlands, paper bunting, paper banners, paper flags; hat boxes made of cardboard; figurines made of card; wallpaper stencils, wallpaper sample books, wallpaper pattern books, paper for use in the manufacture of wallpaper, pens; pencils; pencil sharpeners; pencil cases; chalk; erasers; rubber erasers, chalk erasers, blackboard erasers; posters; notebooks; memo pads; scribble pads; writing paper; notepaper; envelopes; date books; address books; agenda books; rubber stamps; stamp pads; folders; calendars; photographs; framed pictures; photographic prints; pictures; paper picture mounts; photo albums; catalogues, brochures, newsletters, magazines, postcards; greeting cards; trading cards; colouring books; children’s activity books; picture books; book covers; paper book markers; bookplates; stencils for tracing designs onto paper; decals; stickers; gift vouchers.        

European Union trade mark registration No 13 614 854

Class 11:        Toilet seat covers.

Class 20:        Furniture; beds; bed heads; cots; sofas; sofa beds; chairs; armchairs; tables; bedside tables; bookcases; sideboards; desks; bureaus; shelves; mirrors; picture frames; chests of drawers; wardrobes; cabinets; chests; beanbags; cushions; curtain poles; pillows; mattresses; bedding; parts and fittings for all the aforesaid goods; goods of wood, namely, furniture, garden furniture, beds, bedframes, bed heads, sideboards, bunk beds, cots, futons, sofa beds, bedside tables, chests of drawers, wardrobes, dressing tables, curtain poles, blinds, sofas, chairs, arm chairs, footstools, upholstered footstools, tables, desks, bureaus, cabinets, chests, units, bookcases, boxes, storage racks, storage furniture, baskets, shelves, ornaments, picture frames, mirror frames, doors, consoles; goods of cork, namely, memo boards, notice boards, pin boards; goods of reed, namely, blinds, caskets, divans; goods of cane, namely, caskets, containers, divans, furniture, garden furniture; goods of wicker, namely, furniture, garden furniture, chests of drawers, units, baskets, ornaments; goods of amber, namely, figurines, sculptures, caskets.

Class 21:        Laundry bins.

United Kingdom trade mark registration No 2 371 317

Class 2:        Paints, varnishes, lacquers.

Class 3:        Soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.

Class 4:        Candles and wicks for lighting.

Class 8:        Hand tools and implements (hand-operated); cutlery and razors.

Class 16:        Paper, cardboard, stationery, adhesives for stationery, plastic materials for packaging.

Class 21:        Household kitchen utensils and containers (not of precious metal or coated therewith); combs, sponges, brushes, (except paint brushes) articles for cleaning purposes; glassware, porcelain and earthenware.

Class 30:        Coffee, tea, cocoa, artificial coffee, preparations made from cereals, bread, pastry and confectionery, salt, mustard, vinegar, sauces, spices.

Class 33:        Alcoholic beverages (except beers).

Class 35:        Advertising, business management, business administration; office functions.

United Kingdom trade mark registration No 2 453 621

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4:        Candles.

Class 9:         Sunglasses; glasses; spectacle cases; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; none of the aforesaid goods including speaker docks or standalone speakers.

        

Class 11:        Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery; precious stones; horological and chronometric instruments.

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

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

Class 20:        Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21:        Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 24:        Textiles and textile goods, not included in other classes; bed and table covers.

Class 25:        Clothing, footwear, headgear.

Class 26:        Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27:        Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

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

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 35:        Retail services, including retail services offered via a general merchandising and clothing store, mail order catalogue, online, via television channel, via mobile phone and by direct marketing, all connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eyewear, carrying cases, leather goods, handbags, sports bags, travel bags, shopping bags, toiletry bags, messenger bags, carrier bags, document bags and children’s bags, kitchenware, paints, wallpaper, wall stickers and borders, pictures, picture frames, electrical products, cameras; the provision of information and advice in relation to retail services relating to the aforesaid goods; business management consultancy including giving assistance and advice in the management of retail stores in the field of the aforesaid goods.

Irish trade mark registration No 228 242

Class 3:        Soaps, perfumery, essential oils, cosmetics, non-medicated toilet preparations; non-medicated hair care preparations.        

Class 8:        Hand tools and implements (hand operated)

Class 9:        Calculators, electronic organisers, sunglasses.

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, included in Class 14; jewellery, precious stones, clocks and wristwatches; parts and fittings for all the aforesaid goods.

Class 18:        Leather and imitations of leather and goods made of these materials included in Class 18; animal skins, hides; trunks (luggage) and travelling bags; umbrellas, parasols and walking sticks; whips.

Class 20:        Furniture; beds; bed heads; sofas, sofa beds; chairs; armchairs; tables; pillows; cushions; mattresses; curtains and blinds; picture frames; mirrors; fireguards; baskets; parts and fittings for all the aforesaid goods.

Class 21:        Household or kitchen utensils and containers (not of precious metal or coated therewith); glassware, porcelain and earthenware not included in other classes, pots, bowls, vases, plant pots and candlesticks, brushes.

Class 27:        Carpets, rugs, mats and matting included in Class 27, linoleum and materials for covering existing floors; wall hangings (non-textile).

Class 35:        Retail services in the fields of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras; the bringing together for the benefit of others a variety of goods including the aforesaid products; enabling customers to conveniently view and purchase these goods; services for the retail of products through high street stores, via mail order catalogues or over the internet; providing on-line retail store services in the field of the aforesaid goods; information and advice in relation to retail services relating to the aforesaid goods; business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods; on-line trading services in the fields of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, handbags, bags, kitchen ware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products and cameras, trading services in respect of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, handbags, bags, kitchen ware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products and cameras.

Class 42:        Technical consultancy and advising in the establishment of retail stores in the field of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras.

                

Irish trade mark registration No 115 664

Class 16:        Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastics materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks.

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.

On 27/01/2017, the opponent submitted the following evidence:

• List of the opponent’s ‘NEXT’ family of marks registered worldwide (Exhibit 1).
• Extract from the opponent’s website http://nextplc.co.uk giving an overview of the opponent’s history (Exhibit 1).
• Tables originating from the opponent showing the numbers of hits on the UK website next.co.uk and the opponent’s EU websites during the months of April 2013, April 2014, April 2015 and April 2016 (Exhibit 2).
• Extract from the International Olympic Committee Marketing Report 2012 showing the mark ‘NEXT’ in a list of the London 2012 Olympic Supporters (Exhibit 3).
• Extract from the opponent’s website www.nextdirect.com showing various territories where the opponent provides online retail services, including, inter alia, the Czech Republic, Denmark, Germany, Cyprus, Malta and the United Kingdom (Exhibit 4).
• Extracts from the opponent’s mail order catalogues of 2011, 2012, 2013 and 2016, showing the trade mark ‘NEXT’ used mainly in relation to retail of homeware and furniture. The currency used throughout the catalogues is pounds sterling (Exhibit 5).
• List of store addresses dated 05/02/2013, including several hundreds of addresses of the opponent’s stores in the United Kingdom; a screenshot of the opponent’s website http://stores.next.co.uk/next/locator/stores/country/United+Kingdom dated 30/03/2015, including several hundreds of addresses of stores in Bulgaria, Croatia, Cyprus and the United Kingdom; and a photo of a store sign bearing the name ‘NEXT HOME’ (Exhibit 6).
• Extracts from the website FT.com (the online version of the Financial Times) containing a profile of Next Plc, including annual revenue, number of employees and market share as of January 2017. According to this profile, inter alia, the company Next Plc has around 30 590 employees and revenue of 4.23 billion (Exhibit 7).
• List of the ‘NEXT’ trade mark registrations that the opponent owns worldwide (Exhibit 8).
• Copy of the trade mark licence agreement between Next Plc and Next Holding Limited, and of the trade mark licence agreements between the opponent and Next Holding Limited, all dated 2016 (Exhibit 9).
• Extracts from the NEXT Annual report and accounts for 2012, 2013, 2014, 2015 and 2016. According to these publications, inter alia, the revenue (excluding VAT) in relation to ‘NEXT’ retail services was GBP 2 227.6 million in January 2014 and GBP 2 190.9 million in January 2013, whereas the profit and EPS (earnings per share) in relation to ‘NEXT’ retail services were GBP 347.7 million in January 2014 and GBP 331 million pounds in January 2013 (Exhibit 10).
• Summary of net sales (excluding VAT) of goods bearing ‘NEXT’ trade marks in all the EU Member States except the United Kingdom, from 2010 to 2013 (Exhibit 11).
• Summary of sales of goods bearing ‘NEXT’ trade marks in the UK. The numbers include sales through the ‘NEXT Directory’ catalogue and online sales, as well as the sales in UK stores for the period between 2009 and 2013 (Exhibit 11).
• Summary of total sales to franchise partners in the EU during the period 2010 to 2013, as well as turnover figures for international ‘NEXT’ retail stores, in, inter alia, the Czech Republic, Denmark and Germany (Exhibit 12).
• Summary of the annual cost of retail advertising and promotional expenditure by the opponent in relation to ‘NEXT’ products during the period from 2004 to 2007, and a summary of brand advertising expenditure between 2008 and 2011 (Exhibits 13 and 14).
• Extracts from magazines showing advertisements for ‘NEXT’ goods, such as women’s clothing, dated 2012 and 2017 (Exhibit 14).
• Extracts from the catalogues ‘Next home spring 2014’, ‘next fitted kitchens’ and ‘Christmas edition of NEXT magazine’, published by NEXTMEDIA. Photographs of ‘NEXT’ stores and examples of labels can be seen in these catalogues (Exhibit 15).
• Screenshots of the opponent’s Facebook page, dating from 2016, featuring information on various ‘NEXT’- and third party-branded products and services. According to the opponent, the page had over 243 million users in September 2012, and in January 2017 it received 27 734 visits (Exhibit 16).
• Extract from the website internetworldstats.com, which provides details on the number of Facebook users globally (Exhibits 16 and 17).
• Screenshots of the opponent’s Twitter page, dating from 2017, featuring information on various ‘NEXT’- and third party-branded products and services. According to the opponent, the account has over 243 million followers (Exhibit 18).
• Extract from the opponent’s blog http://blog.next.co.uk, mainly relating to articles of clothing. According to the opponent, in January 2014 there were around 40 000 visits to the blog (Exhibit 19).
• Extracts from Pinterest and YouTube, dating from 2012 and 2013, mainly relating to retail of homeware and furniture (Exhibits 20 and 21).
• Extracts from social media sites such as Instagram and Facebook showing competitions promoted by ‘NEXT’, dated 2016 (Exhibit 22).
• Decisions by the Spanish Patent and Trademark Office and the EUIPO (Exhibits 23-25).
• Extracts from the ‘Global 500’ rankings for 2015, 2014, 2013, 2012, 2010, 2009 and 2008, listing the world’s top brands for those years, including ‘NEXT’. According to the Brand-Finance Brandirectory, available online at www.brandirectory.com, ‘NEXT’ is one of the top 500 most valuable brands in the world (Exhibit 26). The rankings achieved by the brand ‘NEXT’ were as follows:

2008	467th
2009	399th
2010	404th
2011	–
2012	460th
2013	460th
2014	449th
2015	451th

• Extracts from the 2012 and 2014 editions of the publication Best retail brands, compiled by Interbrand, in which the brand ‘NEXT’ is listed as the fifth most valuable UK retail brand for 2012 (Exhibit 27).
• Market shares in relation to sales of women’s, men’s and children’s wear under the brand ‘NEXT’ in 2013, provided by Kantar Worldpanel (Exhibit 28).
• Market shares in relation to sales of women’s, men’s and children’s outer clothing under the brand ‘NEXT’ in 2013, provided by Kantar Worldpanel (Exhibit 28).

Having assessed the evidence submitted by the opponent, it can be concluded that the word mark ‘NEXT’ has been used substantially and over a relatively long period. The revenue of Next Plc (GBP 4.23 billion in 2017) and the annual cost of promotional activities are substantial amounts and must be taken as indicating that the mark has acquired a reputation. This is all the more true given that the evidence shows that the ‘NEXT’ mark is the group’s core brand and the focus of its trading and promotional activities. Furthermore, the large number of ‘NEXT’ stores in the European Union and worldwide makes it very likely that the public at large will be familiar with the opponent’s mark. In addition, the fact that ‘NEXT’ is one of the top 500 most valuable brands in the world is also an indicator of the reputation of the brand.

However, there is little information or evidence to show knowledge of the marks on the part of consumers outside the United Kingdom. It is true that much of the advertising presented in the evidence appeared in international magazines, and the opponent also has some stores in countries other than the United Kingdom. In this regard, according to Article 8(5) EUTMR, the relevant territory for establishing the reputation of the earlier mark is the territory of protection: the earlier mark must have a reputation in the territory where it is registered. Therefore, for national marks the relevant territory is the Member State concerned, whereas for EUTMs the relevant territory is the European Union. However, the Court has clarified that for an earlier EU trade mark reputation throughout the territory of a single Member State may suffice. Therefore, it can be considered that the marks’ reputation has been proven for all the earlier European Union and United Kingdom trade marks but not for the earlier Irish trade marks.

As for the relevant goods and services, the evidence shows that clothing and homeware account for the majority of sales under the mark ‘NEXT’.

With all this in mind, the Opposition Division finds that the evidence shows the reputation of the sign ‘NEXT’ for clothing, headgear, footwear and homeware and retail services in the fields of clothing, headgear, footwear and homeware goods. Consequently, this reputation relates to only some of the earlier goods and services. The opponent has not provided proof of significant use of the earlier marks in relation to any of the other goods and services for which a reputation is claimed. Therefore, the earlier marks are not found to enjoy a reputation in relation to these remaining goods and services.

Considering all the above, as regards earlier European Union trade mark registrations No 15 594, No 13 614 854 and No 1 620 434, and United Kingdom trade mark registrations No 2 371 317 and No 2 453 621, since these earlier trade marks cover among others, goods and services for which reputation has been shown, these earlier trade marks have, consequently, acquired a reputation for these particular goods and services.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. As regards the other earlier marks, since it has not been established that they have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as regard these other earlier rights.

The analysis of the opposition on the ground of Article 8(5) EUTMR will continue taking into consideration only the earlier trade marks for which reputation has been shown.

2. The signs

As a preliminary remark, it is to be noted that the opponent’s United Kingdom trade mark registration No 2 453 621 includes two marks registered as a series, as permitted under the UK PTO’s practice. Therefore, the registration protects each of the two signs separately and not as a single mark comprising two elements. Nevertheless, the fact remains that one of the marks in the series may have a higher degree of similarity to the contested sign than the other. Consequently, as regards this registration, the comparison will be made between the contested mark and the mark covered by the earlier UK trade mark registration that bears the closest resemblance to the contested sign, namely that shown below.

European Union trade mark registrations No 15 594, No 13 614 854 and No 1 620 434, and United Kingdom trade mark registration No 2 371 317 NEXT United Kingdom trade mark registration No 2 453 621
Earlier trade marks	Contested sign

The relevant territories are the European Union and the United Kingdom.

Earlier mark 1) is the word mark ‘NEXT’.

Earlier mark 2) is a figurative mark composed of the verbal element ‘NEXT’, depicted in a standard white upper case typeface placed against a black rectangular background.

The contested sign is a figurative mark composed of the verbal element ‘ANEXTONE’, depicted in a white lower case typeface placed against a red rectangular background.

The English-speaking part of the relevant public will understand the earlier marks as meaning ‘coming immediately after the present one in order, rank, or space’ (information extracted from Oxford Dictionaries on the 11/07/2017 at https://en.oxforddictionaries.com/definition/next). In some parts of the European Union, for example in Spain, the word ‘NEXT’ is not likely to be understood. Therefore, the mark has concept for a part of the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

As regards the contested mark, contrary to the opponent’s argument, the mark will not be dissected into different words and therefore it has no meaning for the relevant public, and is consequently distinctive. Dissecting the mark into three words, ‘A’, ‘NEXT’ and ‘ONE’, would be very artificial because there is nothing in the sign that would prompt such a dissection, and it is not likely that the relevant public would perceive these elements in the mark.

Visually, the signs are similar to the extent that the letters of the word element of the earlier marks, ‘NEXT’, are included in the contested mark, albeit in different positions. However, they differ in the remaining letters, ‘A****ONE’, of the contested sign, which have no counterparts in the earlier marks. Furthermore, the signs also differ in the black rectangular background of earlier mark 2) and in the red rectangular background of the contested mark.

Therefore, the signs are visually similar to a 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 ‛NEXT’, present in all the signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the remaining letters, ‘A****ONE’, of the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the contested sign will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. The ‘link’ between the signs

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

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

∙        the degree of similarity between the signs;

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

∙        the strength of the earlier mark’s reputation;

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

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

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

The question of whether the relevant public will establish a link between the marks at issue is a question of fact that must be answered in the light of the facts and circumstances of each individual case.

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

According to the Court of Justice of the European Union,

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

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

The Court of Justice has also noted,

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

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

The earlier trade marks have a reputation in the European Union and in the United Kingdom for clothing; footwear; headgear and homeware and retail services in the fields of clothing, headgear, footwear and homeware goods, and the opposition is directed against the following goods:

Class 16:        Labels of paper or cardboards; Labels of plastic; Stationery; Office requisites, except furniture; School supplies (stationery); Boxes of paper; Paper sacks for packaging; Sacks of plastics for packaging; Paper covers for upholstery; Table decorations of paper; Printed matters (except books and periodicals); Painting and calligraphic works; Figures made of paper; Sculptures made from papier mache; Architects’ models; Books; Periodicals; Printed publications.

Class 20:        Baskets, not of metal; Signboard of plastic; Bins of wood or plastic; Furniture; Furniture fitting, not of metal; Roman shade; Indoor blinds; Picture and photograph frames; Mattress; Pillows; Cushions; Hand-held flat fans; Works of art of wood, wax, plaster or plastic; Vertical blinds [indoor]; Plaques made of bone; Plaques made of ivory; Plaques made of plastic; Plaques made of wax; Plaques made of wood.

Class 35:        Wholesale and retail services relating to labels of paper or cardboards, labels of plastic, Stationery, office requisites, except furniture, school supplies (stationery), boxes of paper, paper sacks for packaging, sacks of plastics for packaging, paper covers for upholstery, table decorations of paper, printed matters (except books and periodicals), painting and calligraphic works, figures made of paper, sculptures made from papier mache, architects’ models, books, periodicals, printed publications; Wholesale and retail services relating to baskets, not of metal, signboard of plastic, memorial cups (not of metal), bins of wood or plastic, furniture, furniture fitting, not of metal, roman shade, indoor blinds, picture and photograph frames, mattress, pillows, cushions, hand-held flat fans, works of art of wood, wax, plaster or plastic, vertical blinds [indoor], plaques made of bone, plaques made of ivory, plaques made of plastic, plaques made of wax, plaques made of wood.

Class 42:        Architectural design; Space design service; Interior design; Design of interior décor; Design of industrial products; Craft design; Design of precious metals; Stationery design; Consulting services in the field of product design; Color design; Font graphic art design; Toy design; Design of products; Advertising design; Graphic illustration design; Design consultancy; Industrial design; Visual design; Character design; Design services for packaging.

The signs have a certain degree of visual and aural similarity, albeit low, since they coincide in the letters ‘NEXT’. As stated above, the opponent’s marks ‘NEXT’ have a reputation for, inter alia, homeware and retail services in the field of homeware goods. It is obvious that there is a clear connection between these goods and services and some of the contested goods and services in Classes 20 and 35.

However, the fact that the signs have in common the letters ‘NEXT’ does not mean that the relevant public is necessarily likely to establish a link between them, even in relation to goods or services that are identical or similar to those of the earlier mark with a reputation. The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 41).

In the present case, not only do the signs create different overall impressions, because the contested mark, ‘ANEXTONE’, is much longer than the earlier marks, but they are also aurally quite distinct, because the earlier marks consist of one syllable, while the word ‘ANEXTONE’ of the contested sign has four. Furthermore, the word ‘NEXT’ does not appear as an independent and recognisable element in the contested sign; instead, the letter sequence ‘next’ forms part of and appears within the fanciful word ‘ANEXTONE’, which has no meaning for the relevant public.

As regards the contested goods and services other than those in Classes 20 and 35, there is even less possibility of a link, given that the reputation of the earlier marks relates to a set of goods and services that are quite different. In particular, the contested goods in Class 16 are mainly goods such as paper, goods made from paper, plastic, etc., that are all quite different from the goods and services for which the earlier marks have a reputation. The same applies with respect to the contested services in Class 42.

Family of marks

The existence of a family of marks is a further relevant factor to be considered in the assessment of the existence of a link. The opponent puts forward that it owns a family of ‘NEXT’ marks, all characterised by the presence of the word ‘NEXT’ followed by another word or words. It invokes other marks such as, inter alia, ‘NEXT NINE MONTHS’, ‘NEXT DIRECTORY’, ‘NEXT ELECTRICALS’ and ‘NEXT DIRECT’ as part of this series.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65. When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied. Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.

In the present case, although the contested mark contains the letters ‘NEXT’, of which the earlier marks are composed, it does not follow the structure of marks in the opponent’s family of marks, as the letters ‘NEXT’ appear in the middle rather than the first part of the mark and will not be perceived as a separate element by the relevant public. Therefore, one of the necessary conditions for the existence of a family of marks is not fulfilled, and consequently this claim has to be rejected.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

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

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

European Union trade mark registration No 1 620 434

Class 35:        Retail services in the fields of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras; the bringing together for the benefit of others of a variety of goods including the aforesaid products; enabling customers to conveniently view and purchase these goods; services for the retail of products through high street stores, via mail order catalogues or over the Internet; providing on-line retail store services in the field of the aforesaid goods; information and advice in relation to retail services relating to the aforesaid goods; business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods; on-line trading services, trading services in respect of a wide range of goods; excluding modelling agency services.

Class 42:        Technical consultancy and advising in the establishment of retail stores in the field of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras.

European Union trade mark registration No 15 594

Class 3:         Soaps; cosmetics; essential oils; perfumes; non-medicated toilet preparations; preparations for the hair; deodorants for use on the person; dentifrices.

Class 11:        Installations for lighting; lamps; lamp bases; lampshades; light bulbs; parts and fittings for all the aforesaid goods.

Class 14:        Precious metals and their alloys and goods made thereof or coated therewith; jewellery; precious stones; clocks, watches and chronometric instruments; watch straps; watch bracelets; parts and fittings for all the aforesaid goods.

Class 18:        Leather and leather imitations and goods made thereof; skins and hides; travelling trunks and suitcases; bags; umbrellas, parasols and walking sticks; whips, harnesses and saddlery; parts and fittings for all the aforesaid goods.

Class 20:        Furniture; beds; bed heads; sofas, sofa beds; chairs; armchairs; tables; pillows; duvets; cushions; mattresses; bedding; parts and fittings for all the aforesaid goods.

Class 24:        Textiles; plastic material as a substitute for fabric; bed and table covers; bed linen; table linen; household linen; wall hangings; blankets; quilts; duvets and duvet covers; sheets; pillow cases; bed valances; bed-covers; table cloths; table mats; napkins; linen fabrics; fabric wall coverings; curtains; curtain tie-backs; cushion covers; pelmets; blinds; covers for chairs and sofas; towels and face cloths.

Class 25:        Articles of clothing; footwear; headgear.

Class 27:         Carpets; rugs; mats and matting; non-textile wall coverings; wall papers; wall paper borders.

European Union trade mark registration No 13 517 776

Class 16:        Paper; cardboard; paper and cardboard for wrapping and packaging, paper bags, cardboard boxes and containers; cardboard tubes; cardboard household storage boxes; paper gift wrap; paper gift bags; cardboard gift boxes; paper or cardboard gift bags for bottles; paper and cardboard gift tags; paper party bags; paper pouches for packaging, plastic bags for packaging, plastic bubble packs for wrapping or packaging; labels, namely, printed paper labels, printed shipping labels; return address labels not of textile; paper signs, advertising signs made of cardboard; paper labels; plastic bags for general use; paper and cardboard tableware, paper and cardboard place mats, paper and cardboard table mats, paper and cardboard coasters; paper napkins and serviettes, paper table linens, paper tablecloths; paper and cardboard cake decorations; drawer liners made of scented or unscented paper; paper handtowels, paper towels; paper garlands, paper bunting, paper banners, paper flags; hat boxes made of cardboard; figurines made of card; wallpaper stencils, wallpaper sample books, wallpaper pattern books, paper for use in the manufacture of wallpaper, pens; pencils; pencil sharpeners; pencil cases; chalk; erasers; rubber erasers, chalk erasers, blackboard erasers; posters; notebooks; memo pads; scribble pads; writing paper; notepaper; envelopes; date books; address books; agenda books; rubber stamps; stamp pads; folders; calendars; photographs; framed pictures; photographic prints; pictures; paper picture mounts; photo albums; catalogues, brochures, newsletters, magazines, postcards; greeting cards; trading cards; colouring books; children’s activity books; picture books; book covers; paper book markers; bookplates; stencils for tracing designs onto paper; decals; stickers; gift vouchers.        

European Union trade mark registration No 13 614 854

Class 11:        Toilet seat covers.

Class 20:        Furniture; beds; bed heads; cots; sofas; sofa beds; chairs; armchairs; tables; bedside tables; bookcases; sideboards; desks; bureaus; shelves; mirrors; picture frames; chests of drawers; wardrobes; cabinets; chests; beanbags; cushions; curtain poles; pillows; mattresses; bedding; parts and fittings for all the aforesaid goods; goods of wood, namely, furniture, garden furniture, beds, bedframes, bed heads, sideboards, bunk beds, cots, futons, sofa beds, bedside tables, chests of drawers, wardrobes, dressing tables, curtain poles, blinds, sofas, chairs, arm chairs, footstools, upholstered footstools, tables, desks, bureaus, cabinets, chests, units, bookcases, boxes, storage racks, storage furniture, baskets, shelves, ornaments, picture frames, mirror frames, doors, consoles; goods of cork, namely, memo boards, notice boards, pin boards; goods of reed, namely, blinds, caskets, divans; goods of cane, namely, caskets, containers, divans, furniture, garden furniture; goods of wicker, namely, furniture, garden furniture, chests of drawers, units, baskets, ornaments; goods of amber, namely, figurines, sculptures, caskets.

Class 21:        Laundry bins.

United Kingdom trade mark registration No 2 371 317

Class 2:        Paints, varnishes, lacquers.

Class 3:        Soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.

Class 4:        Candles and wicks for lighting.

Class 8:        Hand tools and implements (hand-operated); cutlery and razors.

Class 16:        Paper, cardboard, stationery, adhesives for stationery, plastic materials for packaging.

Class 21:        Household kitchen utensils and containers (not of precious metal or coated therewith); combs, sponges, brushes, (except paint brushes) articles for cleaning purposes; glassware, porcelain and earthenware.

Class 30:        Coffee, tea, cocoa, artificial coffee, preparations made from cereals, bread, pastry and confectionery, salt, mustard, vinegar, sauces, spices.

Class 33:        Alcoholic beverages (except beers).

Class 35:        Advertising, business management, business administration; office functions.

United Kingdom trade mark registration No 2 453 621

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4:        Candles.

Class 9:         Sunglasses; glasses; spectacle cases; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; none of the aforesaid goods including speaker docks or standalone speakers.

        

Class 11:        Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery; precious stones; horological and chronometric instruments.

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

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

Class 20:        Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21:        Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 24:        Textiles and textile goods, not included in other classes; bed and table covers.

Class 25:        Clothing, footwear, headgear.

Class 26:        Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27:        Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

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

Class 29:        Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 35:        Retail services, including retail services offered via a general merchandising and clothing store, mail order catalogue, online, via television channel, via mobile phone and by direct marketing, all connected with the sale of clothing, headgear and footwear, jewellery, watches, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eyewear, carrying cases, leather goods, handbags, sports bags, travel bags, shopping bags, toiletry bags, messenger bags, carrier bags, document bags and children’s bags, kitchenware, paints, wallpaper, wall stickers and borders, pictures, picture frames, electrical products, cameras; the provision of information and advice in relation to retail services relating to the aforesaid goods; business management consultancy including giving assistance and advice in the management of retail stores in the field of the aforesaid goods.

Irish trade mark registration No 228 242

Class 3:        Soaps, perfumery, essential oils, cosmetics, non-medicated toilet preparations; non-medicated hair care preparations.        

Class 8:        Hand tools and implements (hand operated)

Class 9:        Calculators, electronic organisers, sunglasses.

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, included in Class 14; jewellery, precious stones, clocks and wristwatches; parts and fittings for all the aforesaid goods.

Class 18:        Leather and imitations of leather and goods made of these materials included in Class 18; animal skins, hides; trunks (luggage) and travelling bags; umbrellas, parasols and walking sticks; whips.

Class 20:        Furniture; beds; bed heads; sofas, sofa beds; chairs; armchairs; tables; pillows; cushions; mattresses; curtains and blinds; picture frames; mirrors; fireguards; baskets; parts and fittings for all the aforesaid goods.

Class 21:        Household or kitchen utensils and containers (not of precious metal or coated therewith); glassware, porcelain and earthenware not included in other classes, pots, bowls, vases, plant pots and candlesticks, brushes.

Class 27:        Carpets, rugs, mats and matting included in Class 27, linoleum and materials for covering existing floors; wall hangings (non-textile).

Class 35:        Retail services in the fields of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras; the bringing together for the benefit of others a variety of goods including the aforesaid products; enabling customers to conveniently view and purchase these goods; services for the retail of products through high street stores, via mail order catalogues or over the internet; providing on-line retail store services in the field of the aforesaid goods; information and advice in relation to retail services relating to the aforesaid goods; business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods; on-line trading services in the fields of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, handbags, bags, kitchen ware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products and cameras, trading services in respect of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye wear, carrying cases, handbags, bags, kitchen ware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products and cameras.

Class 42:        Technical consultancy and advising in the establishment of retail stores in the field of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras.

Irish trade mark registration No 115 664

Class 16:        Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastics materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks.

The contested goods and services are the following:

Class 16:        Labels of paper or cardboards; labels of plastic; stationery; office requisites, except furniture; school supplies (stationery); boxes of paper; paper sacks for packaging; sacks of plastics for packaging; paper covers for upholstery; table decorations of paper; printed matters (except books and periodicals); painting and calligraphic works; figures made of paper; sculptures made from papier mache; architects’ models; books; periodicals; printed publications.

Class 20:        Baskets, not of metal; signboard of plastic; bins of wood or plastic; furniture; furniture fitting, not of metal; roman shade; indoor blinds; picture and photograph frames; mattress; pillows; cushions; hand-held flat fans; works of art of wood, wax, plaster or plastic; vertical blinds [indoor]; plaques made of bone; plaques made of ivory; plaques made of plastic; plaques made of wax; plaques made of wood.

Class 35:        Wholesale and retail services relating to labels of paper or cardboards, labels of plastic, stationery, office requisites, except furniture, school supplies (stationery), boxes of paper, paper sacks for packaging, sacks of plastics for packaging, paper covers for upholstery, table decorations of paper, printed matters (except books and periodicals), painting and calligraphic works, figures made of paper, sculptures made from papier mache, architects’ models, books, periodicals, printed publications; wholesale and retail services relating to baskets, not of metal, signboard of plastic, memorial cups (not of metal), bins of wood or plastic, furniture, furniture fitting, not of metal, roman shade, indoor blinds, picture and photograph frames, mattress, pillows, cushions, hand-held flat fans, works of art of wood, wax, plaster or plastic, vertical blinds [indoor], plaques made of bone, plaques made of ivory, plaques made of plastic, plaques made of wax, plaques made of wood.

Class 42:        Architectural design; space design service; interior design; design of interior décor; design of industrial products; craft design; design of precious metals; stationery design; consulting services in the field of product design; color design; font graphic art design; toy design; design of products; advertising design; graphic illustration design; design consultancy; industrial design; visual design; character design; design services for packaging.

Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the goods and services were identical to those of the earlier marks.

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 and services assumed to be identical are directed at the public at large and, in the case of the services in Classes 35 and 42, also at business customers with specific professional knowledge or expertise.

The degree of attention is average in relation to the goods in Classes 16 and 20. Regarding the services in Classes 35 and 42, the degree of attention may vary from average to high, depending on the price, frequency of purchase or terms and conditions of the services in question.

3. The signs

The signs have already been compared above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

4. Distinctiveness of the earlier marks

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

According to the opponent, the earlier trade marks enjoy a high degree of distinctiveness as result of their long-standing and intensive use in the Czech Republic, Denmark, Germany, Cyprus, Malta, Poland, the United Kingdom and the European Union in connection with all the goods and services for which they are 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 evidence submitted by the opponent in this regard has already been listed and assessed above in relation to Article 8(5) EUTMR. The same findings are valid in relation to Article 8(1)(b) EUTMR. Specifically, the Opposition Division concluded above that reputation has been proven in the United Kingdom and in the European Union in relation to clothing, headgear, footwear and homeware in Classes 20 and 25 and retail services in the fields of clothing, headgear, footwear and homeware goods in Class 35.

In relation to the remaining goods and services of the earlier United Kingdom and European Union trade mark registrations, as well as in relation to the earlier Irish trade marks for which reputation has not been proven, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning in relation to any of the goods and services at issue from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16).

In the present case, the contested goods and services have been assumed to be identical and are directed at the public at large and professionals; the degree of attention is deemed to be average to high.

The marks are similar to the extent that they coincide in the verbal element ‘NEXT’, which constitutes the earlier marks and is included, although not clearly perceptible, in the contested sign. This renders the signs visually and aurally similar to a low degree. The earlier word marks are composed of a single verbal element. In the earlier figurative marks, the slightly different graphical depictions of the marks under comparison do not substantially affect the assessment of likelihood of confusion. The contested sign is composed of a sequence of eight letters. This creates a visually and aurally striking difference between it and the earlier marks. Furthermore, the word ‘NEXT’ does not appear as an independent and recognisable element in the contested sign, but only forms part of the fanciful word ‘ANEXTONE’, which has no meaning for the relevant public.

As explained above, there is no conceptual similarity between the conflicting signs, as the contested mark has no meaning for the relevant public.

Bearing in mind the foregoing, the Opposition Division finds that both the general public and business customers would be able to distinguish between the signs, in particular because the earlier marks constitute a specific semantic unit (‘NEXT’), whereas the contested sign produces a strikingly different visual and aural impression. Consequently, although the letters ‘N’, ‘E’, ‘X’ and ‘T’ are included in all the signs, the word ‘NEXT’ will not be perceived by the relevant public in the contested sign.

Therefore, considering all the above, the Opposition Division finds that the differences between the marks safely counterbalance the similarities between them. The differences are, therefore, sufficient to exclude any likelihood of confusion on the part of the public, including the risk that consumers might believe that the goods and services came from the same undertaking or from economically linked undertakings.

As seen above, the earlier European Union and United Kingdom marks have a reputation in relation to some of the goods and services. However, the outcome of no likelihood of confusion remains the same due to the significant differences between the signs.

Considering all the above, the Opposition Division finds that, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.

EARLIER WELL-KNOWN MARKS – ARTICLE 8(1)(b) EUTMR IN CONJUNCTION WITH ARTICLE 8(2)(c) EUTMR

The opposition has already been rejected under Article 8(1)(b) EUTMR.

The opponent also bases its opposition on the earlier well-known word trade mark ‘NEXT’ in the Czech Republic, Denmark, Germany, Cyprus, Malta, Poland and the United Kingdom within the sense of Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR in relation to goods and services in Classes 3, 9, 11, 14, 16, 18, 20, 21, 24, 25, 28, 28, 35, 39 and 42.

Article 8(2)(c) EUTMR in general only defines the earlier trade mark ‘for the purposes of paragraph 1’ and, therefore, does not provide an independent relative ground for refusal. Accordingly, the grounds for refusal and opposition are those established by Article 8(1)(b) EUTMR.

The Opposition Division has already found that under Article 8(1)(b) there is no likelihood of confusion between the contested sign and the earlier mark. Therefore, the outcome cannot be more favourable for the opponent under this legal basis. The only possible outcome is that there is no likelihood of confusion in the relevant territory, not even where the opponent relies on the well-known character of its earlier trade mark.

Consequently, the opposition based on Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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.

The Opposition Division

Ferenc GAZDA

Cristina CRESPO MOLTO

Zuzanna STOJKOWICZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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.