OPPOSITION No B 2 643 271

Thierry Sebagh, 75 ter, Avenue de Wagram, 75017 Paris, France (opponent), represented by Regimbeau, 20, Rue de Chazelles, 75847 Paris Cédex 17, France (professional representative)

a g a i n s t

Fredrik Francis Holdings BV, Amsteldijk 143 HS, 1079LE Amsterdam, Netherlands (applicant), represented by IP Lawyers, Willemsparkweg 34, 1071 HG Amsterdam, Netherlands (professional representative).

On 08/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 643 271 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 667 901 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 667 901. The opposition is based on, inter alia, United Kingdom trade mark registration No 2 069 075. The opponent invoked Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s United Kingdom trade mark registration No 2 069 075.

1. The goods and services

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

Class 25:         Outer-clothing, footwear, headgear; all included in Class 25.

The contested goods and services are the following:

Class 25:         Clothing; Windproof clothing; Jackets [clothing]; Knitted clothing; Belts [clothing]; Gloves [clothing]; Knitwear [clothing]; Jerseys [clothing]; Waterproof clothing; Rainproof clothing; Beach clothing; Leather clothing; Athletic clothing; Leisure clothing; Denims [clothing]; Handwarmers [clothing]; Oilskins [clothing]; Mitts [clothing]; Weatherproof clothing; Tops [clothing]; Bottoms [clothing]; Sports clothing; Cashmere clothing; Woolen clothing; Gloves as clothing; Water-resistant clothing; Ear muffs [clothing]; Stuff jackets [clothing]; Jackets (Stuff -) [clothing]; Leather (Clothing of -); Clothing of leather; Clothing for cycling; Clothing for fishermen; Clothing for skiing; Jogging bottoms [clothing]; Jogging sets [clothing]; Quilted jackets [clothing]; Clothing for sports; Clothing for cyclists.

Class 35:         Retail services relating to clothing; Online retail store services relating to clothing. 

Class 42:         Design of clothing; Clothing design services; Design of protective clothing; Design for others in the field of clothing.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.

The applicant claims that the opponent sells low-end clothes for everyday use whereas the applicant designs and manufactures high-end outdoor clothing with high-end prices. It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T-568/12, Focus extreme, EU:T:2014:180, § 30 and the case-law cited therein). The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the argument raised by the applicant is irrelevant.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s outer-clothing. 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 windproof clothing; jackets [clothing]; knitted clothing; belts [clothing]; gloves [clothing]; knitwear [clothing]; jerseys [clothing]; waterproof clothing; rainproof clothing; beach clothing; leather clothing; athletic clothing; leisure clothing; denims [clothing]; handwarmers [clothing]; oilskins [clothing]; mitts [clothing]; weatherproof clothing; tops [clothing]; bottoms [clothing]; sports clothing; cashmere clothing; woolen clothing; gloves as clothing; water-resistant clothing; ear muffs [clothing]; stuff jackets [clothing]; jackets (stuff -) [clothing]; leather (clothing of -); clothing of leather; clothing for cycling; clothing for fishermen; clothing for skiing; jogging bottoms [clothing]; jogging sets [clothing]; quilted jackets [clothing]; clothing for sports; clothing for cyclists are included in the broad category of, or overlap with, the opponent’s outer-clothing. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, internet shopping, catalogue or mail order services in Class 35.

Therefore, the contested retail services relating to clothing; online retail store services relating to clothing are similar to a low degree to the opponent’s outer-clothing registered in Class 25.

Contested services in Class 42

The contested design of clothing; clothing design services; design of protective clothing; design for others in the field of clothing are similar to a low degree to the opponent’s outer-clothing registered in Class 25. They share the same relevant public and might coincide in the same usual origin (producer/provider), since fashion design is an earlier step in the clothing production process. Furthermore, they are in competition.

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 found to be identical or similar to a low degree are directed at the public at large. The degree of attention is considered average.

3. The signs

BEST MOUNTAIN	Black Mountain Clothing Company
Earlier trade mark	Contested sign

The relevant territory is United Kingdom.

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).

Both marks are word marks consisting of English words. 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 conflicting signs are depicted in upper or lower case or a combination thereof.

The expression ‘Clothing Company’ of the contested sign is a meaningful expression for the relevant English-speaking public as a whole and will be associated with a denomination describing the character of the company, namely as a company providing goods and services related to clothing. Bearing in mind that the relevant goods and services all relate to clothing, this expression that is a mere verbal reference to the business origin itself is considered non-distinctive.  

The word ‘MOUNTAIN’ that the signs have in common will be understood by the relevant public as a very high area of land with steep sides. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

The word ‘BEST’ of the earlier mark will be understood by the relevant public as most excellent, suitable, advantageous or attractive; the word ‘Black’ of the contested sign corresponds to a colour. Both will be understood by the relevant public as adjectives that precede the noun ‘MOUNTAIN’ and thus, that qualify this word. As they are not descriptive, allusive or otherwise weak for the relevant goods and services, they are also distinctive.

Visually and aurally, the signs coincide in the sequence of letters and phonemes ‘B****_MOUNTAIN’. However, they differ in the sound of the remaining letters of their first elements, namely ‘-EST’ in the earlier mark and ‘-LACK’ in the contested sign. The signs differ further in the additional two elements of the contested sign, ‘Clothing Company’, which have no counterparts in the earlier mark, but are not likely to be pronounced by the relevant public since they are non-distinctive, as explained above, and they appear at the end of the contested sign.

The applicant emphasises the importance of the beginnings of conflicting signs for the consumer’s perception of the signs. Even though the applicant was correct in stating that there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52). In the present case, the first elements are the shortest components in each of the conflicting signs, namely a word of four letters and a word of five letters, respectively, and their first letter, ‘B’, coincides. Furthermore, these words are both adjectives qualifying the coinciding element ‘MOUNTAIN’. Consequently, all these factors have to be considered in the overall impression produced by the signs.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, namely an adjective qualifying the noun ‘MOUNTAIN’, the signs are conceptually similar to an average degree.

4. Distinctiveness of the earlier mark

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

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

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

5. Global assessment, other arguments and conclusion

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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods and services are partly identical and partly similar to a low degree to the opponent’s goods. The relevant public has an average degree of attention.

The signs are visually, aurally and conceptually similar to an average degree since they coincide in the sequence of letters ‘B****_MOUNTAIN’, which are nine letters out of a total of twelve that form the earlier mark. The differing first elements, ‘BEST’ in the earlier mark and ‘BLACK’ in the contested sign, are both adjectives qualifying the coinciding element ‘MOUNTAIN’. They are also the shortest elements of the conflicting signs. Furthermore, the additional expression, ‘Clothing Company’, of the contested sign is non-distinctive and likely not to be pronounced, as explained above.

Account should also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Bearing in mind the foregoing, 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. It is very common in the fashion sector to occasionally update the image of a brand by applying a variation of the same brand for another product line of the same brand. In the present case, the consumers may think, for instance, that the applicant’s trade mark refers to a different product line of the opponent’s goods. Thus, a consumer faced with goods and services under the trade mark applied for, ‘Black Mountain Clothing Company’, might associate it with the earlier trade mark, ‘BEST MOUNTAIN’. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). In other words, consumers may confuse the origins of the conflicting goods and services.

In its observations, the applicant argues that the element ‘MOUNTAIN’ is a ‘general word’ which should be available for other companies to use as well and that the opponent cannot monopolize this word. The applicant also adds that there are many trade marks registered in Class 25 that include the element ‘MOUNTAIN’, but has not provided any information or evidence as regards the registration and/or use of the referred trade marks.

First, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used.

Last, the Office also rejects the applicant’s argument that the opponent should not be allowed to monopolize the word ‘MOUNTAIN’ for the goods and services in dispute since this is not the case here. The earlier mark does not consist of this sole element but of a combination of the words ‘BEST MOUNTAIN’. As already mentioned above, this combination possesses an average degree of distinctiveness and will be seen by the relevant consumers as a meaningful expression. A significant part of this expression is duplicated in the contested sign and, therefore, the Office considers the signs similar overall.

Under these circumstances, the applicant’s claims must be set aside.

The applicant makes reference to the use of the colour black in the labelling, packaging and branding for the mark applied for ‘Black Mountain Clothing Company’ and submits some evidence as examples. However, this argument is also irrelevant in the present case where the conflicting signs are word marks.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s United Kingdom trade mark registration No 2 069 075. It follows that the contested sign must be rejected for the goods and services found to be identical or similar to a low degree to those of the opponent, since the Opposition Division considers that the marks are close enough to produce confusion in the mind of the consumers regarding the origin of the goods and services.

As the earlier United Kingdom trade mark registration No 2 069 075 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

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

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

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

The Opposition Division

Alexandra APOSTOLAKIS

Marta GARCÍA COLLADO

Richard BIANCHI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.