Billa | Decision 2210329 – GSM (OPERATIONS) PTY LTD. v. Billa AG

OPPOSITION No B 2 210 329

Gsm (Operations) Pty Ltd., 1 Billabong Place, Burleigh Heads, Queensland 4220, Australia (opponent), represented by J A KEMP, 14 South Square Gray's Inn, London WC1R 5JJ, United Kingdom (professional representative)

a g a i n s t

Billa AG, IZ Nö-Süd, Str. 3, Obj. 16, A-2355 Wiener Neudorf, Austria, (applicant), represented by REWE-Zentralfinanz e.G., Matthias Humborg, Domstr. 20, 50668 Köln, Germany, (employee representative).

On 21/09/2017, the Opposition Division takes the following

DECISION:

Opposition No B 2 210 329 is partially upheld, namely for the following contested goods and services:

Class 14: Precious metals and their alloys and goods made from precious metals and their alloys; not included in any other classes; jewellery; ornaments [jewellery, jewelry (am.)]; precious stones; horological and chronometric instruments.

Class 18: Leather and imitations of leather and goods made therefrom; all the aforesaid goods included in class 18; animal skins, hides; trunks and travelling bags; umbrellas; parasols, sunshades.

Class 25: Outerclothing and underwear for women; men; children and infants, including sportswear; belts; collar protectors; stockings; hosiery; footwear; headgear for wear; gloves; heated clothing.

Class 28: Games; Toys; Gymnastic and sports articles; in class 28.

Class 35: Bringing together of a variety of goods, for advertising purposes; enabling customers to conveniently view and purchase those goods; providing information to consumers and customers in relation to the price and quality of goods (consumer consultancy); business administration; radio advertising; television advertising; advertising; marketing; promotional services and merchandising; camping articles; clothing; electronic articles; clocks and watches, jewellery; telecommunications articles; in particular mobile radio articles; billing; payment procedures for telephone cards; arranging contracts, for others, regarding the use of charges for mobile telephone cards (prepaid).

2. European Union trade mark application No 11 592 623 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 592 623 for the word mark ‘Billa’. The opposition is based on, inter alia, European Union trade mark registrations No 4 474 268 and 4 497 202, both registered for the word mark ‘BILLABONG’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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

Preliminary remarks

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, inter alia, European Union trade mark registration No 4 474 268 registered for the word mark ‘BILLABONG’, in relation to the goods in Classes 25 and 28 only.

Since the Office does not examine the proof of use on its own motion but is limited to the request made by the applicant, the Operation Division will only proceed with the examination of the proof of use in relation to the goods in Classes 25 and 28, as requested by the applicant. The services in Class 35 for which the above-mentioned (please see ‘Preliminary remarks’) earlier EUTM No 4 497 202 is registered are not subject of the proof of use request in the present opposition proceedings. The same applies to the remaining goods in Classes 14 and 18 of the earlier EUTM registration No 4 474 268.

The Opposition Division will proceed with the examination of the proof of use exclusively in relation to the goods in Classes 25 and 28 of the earlier EUTM registration No 4 474 268. The request was submitted in due time and is admissible as the earlier trade mark is registered more than five years prior to the relevant date mentioned above.

The contested application was published on 12/04/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 12/04/2008 to 11/04/2013 inclusive.

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

Class 25: Clothing, footwear, headgear, including shirts, T-shirts, singlets, blouses and tops, sweaters, jackets, pullovers, coats, dresses, skirts, sarongs, trousers, pants, jeans, shorts, board shorts, surfwear, swimwear, sportswear, underwear, sleepwear, belts, scarves, gloves, hosiery, socks, shoes, boots, sandals, slides, thongs and slippers, hats, caps, beanies, peaks and visors; wetsuits, wetsuit vests, boots, gloves and hoods, wetsuit shorts and tops.

Class 28: Sporting goods, parts, fittings and accessories for the aforegoing goods, including surfboards, sailboards, kiteboards, bodyboards, wake boards, waterskis, sporting goods for other water sports, scooters (toys), skateboards, rollerblades, roller skates, parts, fittings and accessories for all of the aforegoing goods, bags and covers for sporting goods, surfing traction systems, grips, legropes and tethers for sporting goods, waxes for surfboards, skateboards, skis, other sporting goods and related sporting accessories in this class.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 12/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 17/09/2016 to submit evidence of use of the earlier trade mark. On 16/09/2016, within the time limit, the opponent submitted evidence of use. Moreover, in its observations the opponent refers to the evidence filed on 10/03/2016 with the purpose of proving the reputation of the its earlier rights and makes an explicit reference to the fact that the evidence filed with the purpose of proving prof of use is additional to the very extensive evidence already filed on 10/03/2016.

The evidence to be taken into account is the following:

List of the ‘Billabong’ registrations in the European Union.

Affidavit of 03/03/2016 of Lesley Skipp, the global Intellectual Property Manager for Billabong International Limited, of which the opponent is a whole-owned subsidiary.

Printouts from the Billabong website www.eu.billabong.com which shows BILLABONG branded stores in various European countries (in particular in France, Germany, United Kingdom, Italy).

Copies of various invoices dating from 2005 – 2012 relating to distribution and sale of BILLABONG goods, inter alia, T-shirts, shorts, skirts, surf wear, blousons, jerseys, beach shoes, boots caps and surfboards, parkos, leashes, pads in various countries of the European Union, inter alia France, Germany, Italy, Portugal, Austria, Malta, Slovene, Slovakia) bearing BILLABONG figurative mark .

Schedule of the BILLABONG shops in various countries of the European Union (in particular, in France, Germany, Spain, the United Kingdom).

Printouts from the Internet Archive (archive.org/web) from May 2001 to June 2012 making reference to BILLABONG marks, inter alia on various articles of clothing, headgear, footwear and sporting articles and their accessories.

Selection of BILLABONG catalogues distributed in various countries of the European Union from 2006 to 2012 in relation to various articles of clothing, headgear, footwear and sporting articles and their accessories.

Printouts from a selection of magazines featuring the BILLABONG mark (both word and figurative), BILLABONG branded goods and BILLABONG sponsored events in the relevant territory and sports personalities known at the European and International level showing the BILLABONG mark as a figurative sign, inter alia on articles of clothing, footwear, headgear (in particular, T-shirts, shorts, skirts, surf wear, blousons, jerseys, beach shoes, boots caps ) and sporting articles and its accessories ( in particular, surfboards, parkos, leashes, pads, etc.).

Printouts from the EuroSima website www.eurosima.com making reference to the BILLABONG marks , products inter alia various sports articles, inter alia, surfboards.

Documents relating to sports events and fairs organised in various countries of the European Union with participation of the BILLABONG figurative marks, inter alia (see also other above) dated 2003, 2004, 2005, 2006 and 2009 and press releases mentioning the BILLABONG stand within the Munich fair (2003).

Independent statistics relating to the relevant period compiled from Google analytic Reports relating to the viewing of the events organised with participations of the BILLABONG mark (both word and figurative), for example during BILLABONG PIPE MASTERS which has been viewed in streaming by 162 000 persons within the EU.

Printouts from websites and copies of advertisements from different events sponsored by the BILLABONG brand in the EU territory. They include sportspersons and teams sponsored by the BILLABONG trade mark and using and wearing BILLABONG branded goods mentioned above.

Excerpts from the Euro SIMA market survey conducted in 2012 among 11078 participants aged between 15-35 years in eleven countries in Europe, inter alia France, Germany, Netherlands, UK, Portugal, Austria, Belgium, Spain. The survey showed that the BILLABONG brand was in the top three recognized sports brands in Europe in particular in relation to sorting articles, inter alia surfboards. The survey participants indicated 65% awareness of the BILLABONG brand.

List of the BILLABONG domain names and a selection of print-outs of pages from the abovementioned BILLABONG websites.

Google Analytics reports listing the number of visitors to the BILLBONG websites between January 2008 – September 2013 that accounts for almost 80% of all entries.

Copies of decisions relating to oppositions/court proceedings involving the BILLABONG trademarks registered in Spain, Hungary and Bulgaria recognizing a well-known or famous status of these BILLABONG registrations.

Photos (undated) referring to various Billabong figurative trade marks, inter alia appearing on various articles of clothing, footwear and headgear and sporting articles and their accessories.

Examples of agreements with the opponent’s retailers and distributors to sale and distribute the opponent’s goods.

Financial report of the company Billabong International Limited, dated 30 June 2009, showing its financial situation for the period 2011-2012.

Full financial report of the company Billabong International Limited for the period 2009-2010.

Financial report of the company Billabong International Limited, dated 30 June 2010.

Interbrand article ‘Why the digital space is so powerful for surf, board and action sports brands’ by Betrand Chovet referring to the relevant time and mentioning Billabong marks, both, as a word and a figurative mark as one of the top three international surf brands.

Screensshot of facebook dated 08/03/2016 showing the earlier mark ‘Billabong’ on various articles of clothing, footwear and headgear.

Additionally, on 16/09/2016, the opponent filed the evidence referring to the relevant period and to the goods in Classes 25 and 28. Within this additional material the opponent delivers:

Excerpts of catalogues 2009, 2010, 2011 and 2012 showing the BILLABONG figurative mark, inter alia, on articles of clothing, footwear and headgear.

Printouts from a selection of magazines featuring the BILLABONG mark, inter alia, , BILLABONG branded goods (as mentioned above) and BILLABONG sponsored events in the relevant territory and sports personalities known at the European and International level using and wearing BILLABONG branded goods during the period 2008-2010.

Printouts from websites and copies of advertisements from different events sponsored by the BILLABONG brand in the EU territory. They include sportspersons and teams sponsored by the BILLABONG trade mark and using and wearing BILLABONG branded goods during the period 2008-2013.

Numerous invoices referring to the relevant period and explicitly to the goods in Classes 25 and 28 bearing the BILLABONG figurative mark, inter alia

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the context of the nature of marks used by the opponent, the Opposition Division notes that Article 15 EUTMR states that use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, and regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (judgment of 23/02/2006, T-194/03, EU:T:2006:65, § 50).

The General Court (the ‘GC’) further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

In order to decide whether the sign as used and the sign as registered are broadly equivalent, it must first be established which elements are negligible. The GC has developed criteria for doing so in several judgments.

The GC has held that:

the assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the arrangement of the trade mark (judgment of 24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 36).

With regard to additions:

several signs may be used simultaneously without altering the distinctive character of the registered sign (judgment of 08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34);

if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (judgments of 30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.)

With regard to omissions:

if the omitted element is in a secondary position and not distinctive, its omission does not alter the distinctive character of the trade mark (judgment of 24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37).

It is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.

There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42).

In the present case, the evidence shows the earlier marks both as a word (for example in articles) and also frequently as a figurative mark in its different variations, inter alia, C:UsersciszemoPicturesimages.png , C:UsersciszemoPicturesdownload.png .

In this context, the Opposition Division notes that the word ‘BILABONG’ is represented in the uppercase letters. Its slight stylisation does not catch the attention of the relevant consumer but plays rather a decorative role. Furthermore, the additional figurative element referring to a wave and depicted on a black/white background does not constitute a dominant element in the signs in question and may refer to the goods concerned in Class 28, in particular to surfboards, and consequently, has a certain descriptive character. All these elements do not distract consumers from the word ‘BILLABONG’.

Therefore, in the case at hand, the evidence filed shows the use of the earlier marks in their acceptable variations and do not alter their distinctive character within the meaning of Article 15(1)(a).

The evidence, in particular invoices, covers of sports magazines and opponent’s catalogues show that the place of use is the European Union territory, in particular the United Kingdom, Spain, France, Germany and Portugal. This can be inferred from the language of the documents, the currency mentioned in the invoices (EUR, GBP) and addresses of clients mentioned on the invoices. They refer to various clients based in the United Kingdom (Devon), Spain (Mundaka, Bilbao, Moraira), France (Vendays Montalivet, Royan, Brest, Cannes), Germany (Westerland, Ulm, Rantum, Kiel) and Portugal (Ericeira). Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. However, there are also invoices bearing post datum. Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

The documents filed, in particular numerous invoices covering the relevant time and relating to the goods in question, frequently sold in the United Kingdom, Spain, France, Germany and Portugal (amounts appearing on the invoices by way of example: 1721 EUR, 1047 GBP, 3379 EUR, 815 GBP, 3404 EUR, 2447 EUR, 561 EUR, 2869 EUR, 1379 EUR) under the opponent’s earlier mark, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. They refer to the earlier mark (both word and figurative) and when analysed in conjunction with the market survey, excerpts of magazines and product catalogues confirm the opponent’s intensive and longstanding use of its earlier mark in relation to various goods in Class 25, in particular, T-shirts, shorts, skirts, surf wear, blousons, jerseys, beach shoes, boots, caps and in relation to various goods in Class 28, inter alia, surfboards, parkos, leashes, pads, etc. Therefore, the above mentioned documents filed by the opponent provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

Where a mark is registered under all or part of the general indications listed in the class heading of a particular class and where it has been used for several goods or services that are properly classified in the same class under one of these general indications, the mark will be considered as having been used for that specific general indication.

In the present case in relation to goods in Class 25, the evidence relates to T-shirts, shorts, skirts, surf wear, blousons, jerseys, beach shoes, boots, caps, hats, etc. The earlier mark is registered for clothing, footwear, headgear, including shirts, T-shirts, singlets, blouses and tops, sweaters, jackets, pullovers, coats, dresses, skirts, sarongs, trousers, pants, jeans, shorts, board shorts, surfwear, swimwear, sportswear, underwear, sleepwear, belts, scarves, gloves, hosiery, socks, shoes, boots, sandals, slides, thongs and slippers, hats, caps, beanies, peaks and visors; wetsuits, wetsuit vests, boots, gloves and hoods, wetsuit shorts and tops. For the sake of completeness it is to note that the term ‘including’, used in the opponent’s specification indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107). As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, therefore, the earlier mark has been used for the general categories of the opponent’s clothing, footwear, headgear.

Likewise, regarding the goods in Class 28 the material provided by the opponent proves use for the goods in Class 28, in particular for various water boards like surfboards par examples and its parts, fittings and accessories like parkos, leashes, fleece socks, traction pads, etc. The earlier mark is registered for sporting goods, parts, fittings and accessories for the aforegoing goods, including surfboards, sailboards, kiteboards, bodyboards, wake boards, waterskis, sporting goods for other water sports, scooters (toys), skateboards, rollerblades, roller skates, parts, fittings and accessories for all of the aforegoing goods, bags and covers for sporting goods, surfing traction systems, grips, legropes and tethers for sporting goods, waxes for surfboards, skateboards, skis, other sporting goods and related sporting accessories in this class. Therefore, the earlier mark has been used for the general category of the opponent’s sporting goods, parts, fittings and accessories for the aforegoing goods.

Likewise, the material sent by the opponent on 16/03/2016 in purpose to prove the reputation reaffirms the previous conclusions as to the relevance of the opponent’s earlier mark in relation to the abovementioned goods in Classes 25 and 28.

The applicant argues that not all the items of evidence, in particular invoices indicate genuine use in terms of time, place, extent, nature and use of the goods in Classes 25 and 28 for which the earlier mark is registered because the earlier mark is not mentioned next to all the items sold by the opponent in relation to the classes in question and instead they are accompanied by commercial codes.

In this context the Opposition Division notes that it is a very common practice for retailers operating across different sectors to refer to products on their invoices by way of codes and numbers rather than by using the trade mark for each individual item listed. The invoices bear the earlier mark as a figurative sign. Furthermore, following the invoices, the opponent has provided catalogue pages that highlight the same reference numbers that are mentioned in the invoices.

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

Therefore, in the present case, the Opposition Division considers that the opponent has proven genuine use for the abovementioned goods in Class 25: Clothing, footwear, headgear and in Class 28: Sporting goods, parts, fittings and accessories for the aforegoing goods.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 4 474 268 and 4 497 202, both registered for the word mark ‘BILLABONG’. As mentioned under the chapter ‘Proof of use’, the remaining goods in Classes 14 and 18 of the EUTM No 4 474 268 and the services in Class 35 of the EUTM No 4 497 202 for which the earlier trade marks have been registered were not under the obligation of proof of use, as requested by the applicant. Therefore, the Opposition Division will proceed with the assessment of the likelihood of confusion in the meaning of Art. 8(1)(b) EUTMR also in relation to these goods and services.

The goods and services

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

EUTM No 4 474 268 ‘Billabong’

Class 14: Jewellery and costume jewellery; charms; ornaments of precious metal, including, ornamental pendants and ornamental pins; cuff links; precious gemstones and semiprecious gemstones; watches and clocks, and parts of the foregoing goods; watch accessories, including, watch bands, watch chains, watch straps and watch cases; jewellery cases and jewellery boxes of precious metal, precious metal alloys or coated therewith; medallions and badges of precious metal, precious metal alloys or coated therewith; key rings, key cases, key tags and key fobs, all of precious metal, precious metal alloys or coated therewith.

Class 18: Chamois leather (other than for cleaning purposes), bags including beach bags, all purpose sports bags, all purpose athletic bags, barrel bags, tote bags, carry-all bags, shopping bags of leather, textile or mesh, leather bags for merchandise packaging, shoulder bags, handbags, clutch bags, waistpacks, rucksacks, knapsacks, backpacks, school bags, book bags, satchels, cosmetic bags sold empty, shaving bags sold empty; travel bags, trunks, luggage, carry-on bags, garment bags for travel, and other travel goods in this class; cases including travel eases, overnight cases, briefcases, document cases, credit card cases, business card cases, cosmetic and toiletry cases sold empty, vanity cases; jewellery bags for travel; pouches in this class; wallets; purses, key cases; key chains, key fobs and key tags, all being of leather, animal hides and imitations thereof; umbrellas.

Class 25: Clothing, footwear, headgear.

Class 28: Sporting goods, parts, fittings and accessories for the aforegoing goods.

EUTM No 4 497 202 ‘Billabong’

Class 35: Retailing of, optical apparatus and eyewear, including spectacles, sunglasses, eyeshades, anti-glare visors and glasses, goggles including goggles for swimming, skiing and snowboarding, glasses, eyewear cases, eyewear accessories including straps, chains and cords, protective clothing including diving suits, storage media and apparatus for recording, storage, transmitting, reproducing or processing data, sound and/or images including magnetic data carriers, tapes, cassettes and discs, audio tapes, pre-recorded films including video films, telecommunications equipment, apparatus, instruments and devices including mobile telephones, videophones, and other handheld communications apparatus, messaging devices, parts, fittings and accessories for all of the aforegoing goods and including mobile telephone housings, MP3 players, jewellery and costume jewellery, charms, ornaments of precious metals, including ornamental pendants and ornamental pins, cuff links, precious gemstones and semiprecious gemstones, watches and clocks and parts of the foregoing goods, watch accessories, including watch bands, watch chains, watch straps and watch cases, jewellery cases and jewellery boxes of precious metal, precious metal allloys or coated therewith, key rings, key cases, key tags and key fobs, all of precious metal, precious metal alloys or coated therewith, chamois leather (other than for cleaning purposes), bags including beach bags, all purpose sports bags, all purpose athletic bags, barrel bags, tote bags, carry-all bags, shopping bags or leather, textile or mesh, leather bags for merchandise packaging, shoulder bags, handbags, clutch bags, waistpacks, rucksacks, knapsacks, backpacks, school bags, book bags, satchels, cosmetic bags sold empty, shaving bags sold empty, travel bags, trunks, luggage, carry-on bags, garment bags for travel, and other travel goods, cases including travel cases, overnight cases, briefcases, document cases, credit card cases, business card cases, cosmetic and toiletry cases sold empty, vanity cases, jewellery bags for travel, pouches, wallets, purses, key cases, key chains, key fobs and key tags, all being of leather, animal hides and imitations thereof, umbrellas, clothing, footwear, headgear, including shirts, T-shirts, singlets, blouses and tops, sweaters, jackets, pullovers, coats, dresses, skirts, sarongs, trousers, pants, jeans, shorts, board shorts, surfwear, swimwear, sportswear, underwear, sleepwear, belts, scarves, gloves, hosiery, socks, shoes, boots, sandals, slides, things and slippers, hats, caps, beanies, peaks and visors, wetsuits, wetsuit vests, boots, gloves and hoods, wetsuit shorts and tops, sporting goods, parts, fittings and accessories for the aforegoing goods, including surfboards, sailboards, kiteboards, bodyboards, wake boards, waterskis, sporting goods for other water sports, scooters (toys), skateboards, rollerblades, roller skates, parts, fittings and accessories for all of the aforegoing goods, bags and covers for sporting goods, surfing traction systems, grips, legropes and tethers for sporting goods, waxes for surfboards, skateboards, skis, other sporting goods and related sporting accessories; loyalty programs; loyalty card programs; discount card schemes; incentive schemes, advertising and promotional services in this class namely consumer loyalty programs; loyalty programs; promoting the goods and services of others by means of offering discounts; schemes which offer discounts on hotels, motels, inns, resort accommodation, restaurants, car rentals, tours, cruises, air fares, tour packages; business management and business and office administration services; providing information regarding discount shopping services for shoppers, travellers and businesses; organisation, operation, and supervision of sales and promotional incentive schemes; marketing of entertainment, sporting and cultural events; franchising business services; registration and notification services relating to cards used in financial transactions; publication and dissemination of publicity material; information services relating to all of the aforegoing.

The contested goods and services are the following:

Class 14: Precious metals and their alloys and goods made from precious metals and their alloys; not included in any other classes; Jewellery; Ornaments [jewellery, jewelry (Am.)]; Precious stones; Horological and chronometric instruments.

Class 18: Leather and imitations of leather and goods made therefrom; All the aforesaid goods included in class 18; Animal skins, hides; Trunks and travelling bags; Umbrellas; Parasols, sunshades and walking sticks; Whips; Saddlery, harnesses.

Class 25: Outerclothing and underwear for women; Men; Children and infants, including sportswear; Belts; Collar protectors; Stockings; Hosiery; Footwear; Headgear for wear; Gloves; Heated clothing.

Class 28: Games; Toys; Gymnastic and sports articles; In class 28; Decorations for Christmas trees.

Class 35: Bringing together of a variety of goods, for advertising purposes; Enabling customers to conveniently view and purchase those goods; Providing information to consumers and customers in relation to the price and quality of goods (consumer consultancy); Business administration; Radio advertising; Television advertising; Advertising; Marketing; Promotional services and merchandising; Camping articles; Clothing; Electronic articles; Clocks and watches, jewellery; Telecommunications articles; In particular mobile radio articles; Billing; Payment procedures for telephone cards; Arranging contracts, for others, regarding the use of charges for mobile telephone cards (prepaid).

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘in particular’ used in the applicant’s specification and ‘including’, used in the opponent’s specification indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

In its letter of 11/07/2013 the applicant limited the list of the goods and services in Classes 16 and 41. Since the above-mentioned limitation does not affect the contested goods and services under the present opposition proceedings the Opposition Division will not take it into account.

Contested goods in Class 14

The contested precious metals and their alloys and goods made from precious metals and their alloys; not included in any other classes include as a broader category the opponent’s key rings, key cases, key tags and key fobs, all of precious metal. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested jewellery is included in the opponent’s jewellery and costume jewellery. Therefore, they are identical.

The contested ornaments [jewellery, jewellery (Am.)] include, as a broader category the opponent’s ornaments of precious metal. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested horological and chronometric instruments include, as a broader category, the opponent’s watches and clocks. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested precious stones are similar to the opponent’s jewellery and costume jewellery. These goods can coincide in the same distribution channels and be directed at the same end users. Furthermore, they may be produced by the same producers.

Contested goods in Class 18

The contested leather and imitations of leather; all the aforesaid goods included in class 18 include, as a broader category or overlap with, the opponent’s Chamois leather (other than for cleaning purposes). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested goods made therefrom (leather); all the aforesaid goods included in class 18 overlap with the opponent’s travel bags because they can be made of leather. Consequently, these goods are identical.

The contested animal skins, hides include, as a broader category the opponent’s animal hides. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested trunks are identically mentioned in the opponent’s specification.

The contested travelling bags overlap with the opponent’s travel bags, luggage. Therefore, these goods are considered identical.

The contested umbrellas are identically mentioned in the opponent’s specification.

The contested parasols, sunshades are similar to the opponent’s umbrellas. These goods coincide in the nature, purpose and distribution channels. Furthermore, they are directed at the same end user and may be produced by the same manufacturer.

The contested walking sticks; whips; saddlery, harnesses are dissimilar to all the goods of the opponent in Classes 14, 18, 25 and 28. These goods serve a distinct purpose, i.e. walking or riding animals. The goods do not coincide with the opponent’s goods made of precious metals, bags, wallets, clothing, footwear, headgear, sporting articles in distribution channels, sales outlets, producers or method of use. They are neither complementary nor in competition. A fortiori, they are dissimilar to the opponent’s services in Class 35. The opponent’s services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale.Therefore, these goods and services have nothing relevant in common; apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Furthermore their purpose differs as to their producers, consumers and distribution channels.

Contested goods in Class 25

The contested outerclothing and underwear for women; men; children and infants, including sportswear; stockings; hosiery; gloves; heated clothing are different items of clothing and, therefore, they are included in the broad category of the opponent’s clothing. These goods are identical.

The contested footwear is identically protected under the earlier mark.

The contested headgear for wear and the opponent’s headgear are identical.

The contested collar protectors are similar to the opponent’s clothing. They are goods that are manufactured to cloth/protect certain part of the human body. Therefore, they can easily coincide in end consumers and can all be manufactured by the same undertakings. All the goods at issue can be found in the same shops or in closely connected sections of department stores.

The contested belts belong to clothing accessories and, therefore, they can be sold in combination with the main product (the items of clothing); these products are normally sold in the same shops or sections of department stores. Furthermore, in the market sector in question, it is common that accessories are also produced by the manufacturer of the main product. Consequently the consumer may expect that the main product and the accessories are produced under the control of the same entity, especially when they are distributed through the same channels of trade, as in the present case. Therefore, these goods are considered to be similar.

Contested goods in Class 28

The contested gymnastic and sports articles; In class 28 overlap with the opponent’s sporting goods, parts, fittings and accessories for the aforegoing goods. Therefore, they are considered identical.

The remaining contested games; toys are dissimilar to the opponent’s sporting goods, parts, fittings and accessories for the aforegoing goods (04/06/2013, T-514/11, Betwin, EU:T:2013:291, § 36-39). Although certain sporting articles can be used for games and certain toys can also be sporting articles such an assumption does not call in question the fact that the intended purpose of those two categories of goods is essentially different. Even if, by their nature, those two categories of goods are meant to entertain the public, they also serve other purposes. Gymnastic and sporting articles are intended to train the body through physical exercise, whereas toys, including inflatable bop bags and inflatable toys, games, playthings and novelties are intended first and foremost to entertain their users. With respect to whether or not these goods have the same distribution channels, the judgment states that, like all types of other goods, all the goods at issue can now be found in large retail stores. However, in such sales points, the opponent’s gymnastic and sporting articles and the contested toys, games, playthings and novelties are sold in specialised sections which, despite possibly being close to each other, are nonetheless separate.

They are also dissimilar to the opponent’s goods in Classes 14, 18 and 25. These goods are of a different nature. Their purposes and methods of use are also different. They also differ in their end users, distribution channels and producers. Finally, they are neither in competition with each other nor complementary to each other.

Finally, they are also dissimilar to the opponent’s services in Class 35. The opponent’s services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale.Therefore, these goods and services have nothing relevant in common; apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Furthermore their purpose differs as to their producers, consumers and distribution channels.

The contested decorations for Christmas trees serve to decorate an interior for special occasions. They have no points in common with the opponent’s sporting goods, parts, fittings and accessories for the aforegoing goods. The same applies for the opponent’s remaining goods in Classes 14, 18 and 25. The goods do not coincide with the opponent’s goods in distribution channels, sales outlets, producers or method of use. They are neither complementary nor in competition. A fortiori, they are also dissimilar to the opponent’s services in Class 35. The opponent’s services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale.Therefore, these goods and services have nothing relevant in common; apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Furthermore their purpose differs as to their producers, consumers and distribution channels.

Contested services in Class 35

Preliminary remarks

As far as the contested services in Class 35 are concerned an interpretation of the wording of this list of services is required to determine the scope of protection of these services. In the opinion of the Opposition Division the way, in which, these services appear in this Class is unclear. It should be recalled that the use of commas in the list of goods/services serves to separate items within the same or a similar category. The use of a semicolon means a separation between terms. The separation of terms by different punctuation can lead to changes in their meaning and may lead to a different assessment when comparing the goods/services. For more information on punctuation in lists of goods and services, see the Guidelines, Part B, Examination, Section 3, Classification. In the case at issue, regarding the contested Class 35, which exclusively consists of services, the services and the goods are separated from each other by semicolons. In this context, the Opposition Division will interpret the goods enumerated in the contested Class 35 as referring to all the services listed before them.

The contested promotional services and merchandising; camping articles; clothing; electronic articles; clocks and watches, jewellery; telecommunications articles; in particular mobile radio articles overlap with the opponent’s promoting the goods and services of others by means of offering discounts., Therefore, these services are identical.

The contested business administration; camping articles; clothing; electronic articles; clocks and watches, jewellery; telecommunications articles; in particular mobile radio articles is included in the broad category of the opponent’s business and office administration services. Therefore, they are considered identical.

The contested services, which consist of enabling customers to conveniently view and purchase those goods; camping articles; clothing; electronic articles; clocks and watches, jewellery; telecommunications articles; in particular mobile radio articles overlap with the opponent’s retailing of jewellery, apparatus for transmitting, reproducing or processing data, watches and clocks, bags including rucksacks, clothing as they both refer to the same final activity which is the sale. Therefore, they are considered identical.

The contested bringing together of a variety of goods, for advertising purposes; providing information to consumers and customers in relation to the price and quality of goods (consumer consultancy); radio advertising; television advertising; advertising; marketing; camping articles; clothing; electronic articles; clocks and watches, jewellery; telecommunications articles; in particular mobile radio articles and the opponent’s promoting the goods and services of others by means of offering discounts have many relevant points in common. These services can share the same general purpose and distribution channels, can be provided by the same undertakings and target the same users. Therefore, they are similar.

The contested arranging contracts, for others, regarding the use of charges for mobile telephone cards (prepaid) are business assistance services and as such they have some points in common with the opponent’s business management services. They have the same general purpose of contributing to the smooth running of a company. The same reasoning applies to the contested billing; payment procedures for telephone cards and the opponent’s business management services. These services may be provided by the same consultant companies and the end users of the services are also the same. Therefore, all these services are considered similar.

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 found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attention may vary from average to high, depending on the price, sophistication/specialised nature, or terms and conditions of the purchased goods and services.

The signs

EUTM No 4 474 268 and No 4 497 202

BILLABONG

Billa

Earlier trade marks

Contested sign

The relevant territory is the European Union.

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

The signs under dispute are word marks, ‘BILLABONG’ in case of the earlier marks and ‘Billa’ in case of the contested sign. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper or lower case characters.

The signs as a whole are meaningless for the relevant public in the relevant territory and therefore, their inherent distinctiveness in relation to the goods and services in question is normal.

Since the signs under dispute are word marks, they have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘BILLA-’, which constitutes their beginning and this fact will have an important impact on the relevant public. The consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The differences between the signs are limited to the remaining final letters ‘-BONG’ of the earlier marks that have no counterpart in the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the initial letters ‛BILLA’, present identically in both signs. The pronunciation differs in the sound of the remaining final letters of the earlier marks ’BONG’. Consequently, as the signs coincide in two out of three syllables, they are considered aurally similar to an average degree.

Conceptually, neither of the words contained in the signs has a meaning for the relevant public, and, therefore, 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.

Distinctiveness of the earlier marks

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

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C–342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C–251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods and services are partly identical, partly similar and partly dissimilar to the goods and services for which the earlier marks are registered.

The signs are visually similar to a low degree and aurally similar to an average degree. They coincide in their initial letters/sounds ‘BILLA’, which constitute their respective beginnings and which will catch the attention of the public. The additional differentiating letters present in the signs refer to the ending of the earlier marks ‘BONG’, which, however, is not sufficient to differentiate the signs effectively.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54). Consequently, the consumers will focus their attention on the letters ‘BILLA’, due to their leading role within the signs in question.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registrations No 4 474 268 and No 4 497 202.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those covered by the earlier trade marks.

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

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods/services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

Spanish trade mark registration No 1 211 570 for the word mark ‘BILLABONG’ and covering goods in Class 25.

United Kingdom trade mark registration No 1 309 987 for the word mark ‘BILLABONG’ and covering the goods in Class 25.

United Kingdom trade mark registration No 1 390 085 for the word mark ‘BILLABONG’ and covering the goods in Class 25.

Since these marks are identical to the ones which have been compared and the opponent provided the same evidence of use in relation to these trade marks as in the case of the earlier European Union trade mark registration No 4 474 268 analysed above under the chapter ‘Proof of use’ of the present decision, the outcome cannot be different in relation to the above-mentioned earlier rights, as regards the remaining contested goods which are dissimilar.

The Opposition Division will now continue with the examination on the ground of Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

As mentioned above, the Opposition Division will now examine the opposition in relation to earlier EUTM registrations No 4 474 268, No 4 497 202, Spanish trade mark registration No 1 211 570 and United Kingdom trade mark registrations No 1 309 987 and No 1 390 085 for which the opponent claimed repute respectively in the European Union, Spain and in the United Kingdom.

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 above mentioned 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.

The signs

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

Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union, Spain and in the United Kingdom.

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 21/02/2013. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in in the European Union, Spain and in the United Kingdom 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:

EUTM 4 474 268

EUTM 4 497 202

Spanish trade mark registration No 1 211 570

Class 25: Clothing; footwear; headgear.

United Kingdom registration No 1 309 987

Class 25: T-shirts and sweat shirts; articles of outer clothing; articles of sports clothing; beachwear; swimwear and wet-suits; footwear and headgear.

United Kingdom registration No 1 390 085

Class 25: Shorts, shirts, T-shirts, blouses, skirts, trousers, tracksuits, jackets and dresses; headgear and footwear.

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.

In the present case, the evidence provided by the opponent has been entirely enumerated, under the chapter ‘Proof of use’ of the present decision and shows that the opponent’s trade marks have been genuinely used for clothing, footwear, headgear in Class 25 and for sporting goods, parts, fittings and accessories for the aforegoing goods in Class 28.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence of reputation only in the most general terms without divulging any such data. The evidence consists of the documents enumerated above when analysing the genuine use of the opponent’s earlier marks.

Having examined the material filed by the opponent with the purpose of proving the reputation for its earlier rights, the Opposition Division concludes that the earlier trade marks have been subject to long-standing and intensive use and are generally known in the relevant market, where they enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources (excerpts of the magazines and the survey conducted in 2012 by an independent body of the opponent- EuroSIMA Association). The sales figures mentioned in the affidavit, financial reports are confirmed in examples of invoices, marketing and advertising expenditures and various references to the magazines. This material unequivocally shows and reaffirms that the opponent’s trade marks enjoy a high degree of recognition among the relevant public for the above mentioned goods, namely clothing, footwear, headgear in Class 25 and for sporting goods, parts, fittings and accessories for the aforegoing goods in Class 28.

As far as the remaining opponent’s goods and services are concerned, the Operation Division notes that despite showing some use of the earlier trade marks in relation to them, the evidence does not provide any real information on the extent of the public recognition of the earlier mark in relation to which the opponent invoked Article 8(5) EUTMR. Therefore, it has not been established that the earlier trade marks enjoy a reputation in relation to these goods and services.

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 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.)

As mentioned above, the signs are visually similar to a low degree and aurally similar to an average degree. Since the signs are meaningless, the conceptual aspect does not affect the assessment of their similarities. They coincide in their first five letters ‘BILLA’, which will catch the attention of the public. The additional, differentiating element ‘BONG’ of the earlier mark refers to its final part and is not able by itself safely distinguish the signs.

The earlier trade marks ‘BILLABONG’ have a reputation for clothing, footwear, headgear in Class 25 and for sporting goods, parts, fittings and accessories for the aforegoing goods in Class 28, whereas the contested goods for which the opposition is unsuccessful under Article 8(1)(b) EUTMR are the following:

Class 18: Walking sticks; whips; saddlery, harnesses.

Class 28 Games; toys: decorations for Christmas trees.

The contested toys refer to various products starting from inflatable toys, inflatable bop bags, playthings and finishing with more sophisticated roller skates, mini scooters or electric roller boards. They can be addressed to children, teenagers or even adults. The applicant’s games include an activity or sports usually involving skill, knowledge or chance, in which one follows fixed rules and try to win against an opponent. Therefore, the Opposition Division concludes that the goods at issue concern related market sectors, in particular in case of the opponent’s sporting goods, parts, fittings and accessories for the aforegoing goods in Class 28. Although, no direct connection can be established between the goods covered by the signs at hand, an association with the earlier marks remains possible, especially when taking into account the degree of similarity between the signs and, especially, the considerable strength of the reputation of the earlier marks and, therefore, it is likely that the contested sign will bring the earlier marks into the mind of the relevant consumers.

Furthermore, it should be noticed that the relevant section of the public is the same, given that the goods for which a reputation has been proven aimed at general public and the goods in dispute are also directed to the same public.

However, in case of the applicant’s walking sticks; whips; saddlery, harnesses in Class 18 and decorations for Christmas trees in Class 28, the Opposition Division is of the opinion that while the relevant section of the public for the goods covered by the conflicting marks overlaps to some extent, those goods are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. In particular, the nature of the contested walking sticks; whips: saddlery, harnesses is different and they serve a distinct purpose than in the case of the above mentioned opponent’s goods. They either serve to help to walk the people with a limited mobility or are used when riding horses. Likewise, the nature and the intended purpose of the applicant’s decorations for Christmas trees’ are different from the ones of the opponent’s goods. The contested decorations for Christmas trees are intended to decorate an interior for special occasions. The nature of the above mentioned goods and their daily applications are fundamentally different from those of the opponent’s clothing, footwear, headgear in Class 25 and sporting goods, parts, fittings and accessories for the aforegoing goods in Class 28. The opponent’s in Class 25 clothing, footwear, headgear are of an identical or very similar nature and serve to cover or protect various parts of the human body against the elements. The nature of the opponent’s sporting goods, parts, fittings and accessories in Class 28 is distinct from the abovementioned contested goods as they refer to articles and apparatus for all types of sports and they are intended to train the body through physical exercise.

Taking into account the aforementioned, the Opposition Division is of the opinion that it is not plausible that the public would be reminded of the earlier marks when purchasing the contested goods bearing the contested mark. In this regard the Court has stressed that one factor when considering a link must be ‘the nature of the goods or services for which the conflicting marks were registered, including, inter alia, the degree of dissimilarity between those goods or services’ (‘Intel’, paragraph 42).

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 in relation to the above mentioned goods, 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.

Consequently, the Opposition Division will now analyse whether there is a risk of injury under Article 8(5) EUTMR taking into account the applicant’s games; toys in Class 28.

Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙ it is detrimental to the repute of the earlier mark;

∙ it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent’s claims inter alia that ‘there is a serious risk that the power of attraction of the BILLABONG mark would be transferred by consumers to the EUTM application. The applicant would benefit from the association with the famous BILLABONG mark. The transfer of the positive image the BILLABONG mark has for consumers would help the applicant in marketing its own goods and services and would boost in his sales, without him having to make any marketing efforts of his own.’

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against games; toys in Class 28.

As seen above, the earlier trade mark was found to have a reputation for clothing, footwear, headgear in Class 25 and for sporting goods, parts, fittings and accessories for the aforegoing goods in Class 28.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

As seen above, the opponent bases its claim, in part, on the allegation that the contested sign will free-ride on the coat-tails of the trade mark, which has a reputation, so that the contested sign will unfairly enjoy some of the recognition that attaches to the earlier mark, and, in this way, benefit from the years of effort and investment that the opponent has expended on advertising and building up the reputation of its earlier mark.

In view of the link with the earlier reputed mark and the association that it will produce in the minds of consumers in the relevant territory, the contested sign will receive an unfair ‘boost’, because the marketing of the applicant’s goods would be made easier, as they will benefit from the repute of the earlier trade mark. Due to the reputation of the earlier mark and to the aforementioned similarities between the signs the Opposition Division is of the view that the use of the applicant’s mark applied for could encourage the public to buy the contested goods by reason of the association they would be likely to make with the earlier mark and the commercial value attached to its repute and the distinctive character.

Consequently, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

Conclusion

Considering all the above, the opposition is partially well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be also rejected for the contested games; toys in Class 28.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Gueorgui IVANOV

Monika CISZEWSKA

Ewelina ŚLIWIŃSKA

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.

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