OPPOSITION No B 2 678 954

Joe Browns Limited, Brown Lane East, Holbeck, Leeds  LS11 0BT, United Kingdom (opponent), represented by HGF Limited, 1 City Walk, Leeds, Leeds LS11 9DX, United Kingdom (professional representative)

a g a i n s t

Jose Carlos Castro Garcia, Rue St. Beuve nº 2., 1005 Lausanne, Switzerland (applicant), represented by Jose Julián Fuentes Palancar, Bravo Murillo 9 – 48, 28015 Madrid, Spain (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 678 954 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 802 847, namely against the goods in Classes 22, 25 and 28 and the services in Class 41. The opposition is based on European Union trade mark registration No 4 407 664, European Union trade mark registration No 2 914 265 as well as on United Kingdom non-registered trade mark. The opponent invoked Article 8(1)(b) and 8(4) EUTMR.

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

European Union trade mark registration No 4 407 664:

Class 14: Goods made wholly or principally of precious metals and their alloys or coated therewith; trophies, ornaments of precious metal, figurines of precious metal, name badges of precious metal, coffee-pots of precious metal, teapots of precious metal, goblets of precious metal, cups of precious metal, serving trays of precious metal, vases of precious metal, decorative and jewellery boxes of precious metal, watch cases, jewellery cases, cigarette cases of precious metal, household containers of precious metal, household utensils of precious metal, namely, whisks, spatulas, ladles; towel holders and napkin holders of precious metal; clocks, alarm clocks; watches; jewellery; necklaces, beads of precious metal, precious stones, namely, diamonds, rubies, sapphires; bracelets, jewellery chains, watch chains, non-monetary coins, medals, medallions, key rings of precious metal, tie clips, tie pins, cufflinks.

Class 18: Articles of leather or imitation leather; bags, brief cases, wrist mounted carryalls, rucksacks, all purpose sports bags, athlete bags, baby back packs, back packs, beach bags, book bags, diaper bags, duffel bags, gym bags, tote bags; boot bags for travel, satchels; wallets: coin purses; fanny packs, knapsacks; waist packs; umbrellas, parasols; bags for storing records.

Class 25: Clothing; footwear; headgear; belts; scarfs; articles of underclothing; shirts, sweatshirts, jackets, coats, raincoats, snowsuits, pants, trousers, shorts, tank tops, rainwear, cloth bibs, skirts, blouses, dresses, suspenders, sweaters, athletic uniforms, warm-up suits, jogging suits, shoes, boots, sneakers, sandals, booties, slipper socks, swimwear, scarves, dressing gowns, boxer shorts, socks, t-shirts; hats, caps, sunvisors, sleepwear, pyjamas, slippers, underwear, lingerie, wrist bands, head bands, ties, robes; masquerade and halloween costumes; foot wear and head wear for babies and toddlers; articles of clothing for babies and toddlers.

Class 35: Retail services; retail services, in particular the retail of general merchandise, clothing, headwear, footwear, jewellery, watches, accessories, bags, belts, sunglasses, soaps and perfumes, toys, tools, knives and adventure holidays and activities.

European Union trade mark registration No 2 914 265:

Class 25: Clothing including hats, and footwear.

Class 35: The bringing together, for the benefit of others, of a variety of goods and service providers, including clothing, jewellery and accessories, general merchandise, and adventure holidays and activities, enabling customers to conveniently view and purchase those goods and services from a general merchandise catalogue, by mail order or by means of telecommunications, or from an internet web site.

United Kingdom non-registered trade mark:

Clothing; footwear; headgear; retail of clothing, footwear and headgear

The contested goods and services are the following:

Class 22: Cordage, strings, nets, tents, tarpaulins, sacks and bags, padding and stuffing materials, raw fibrous textile materials.

Class 25: Gymnastic and sports clothing.

Class 28: Gymnastic and sporting articles, gloves for boxing and martial arts.

Class 41: Sporting activities, services provided by a gymnasium, education, providing of training, entertainment, cultural activities relating to sports and health.

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 registration No 4 407 664.

1. The signs

JOE BROWNS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a word mark consisting of the words ‘JOE BROWNS’. In word marks, it is the word or expression as such that is protected and not its written form. Therefore, it is irrelevant whether the contested sign is depicted in upper or lower case characters or a combination thereof.

The combination 'JOE BROWNS' is likely to be perceived as a first name and a family name by a significant part of the relevant public whereas it may be meaningless for the remaining part of the public. In any event, it is distinctive in relation to the goods and services covered by the earlier mark.

The contested sign is a figurative mark consisting of a black circular band filled with the expressions ‘BOXING EQUIPMENT’ on the top and ‘13th SOUTH HELL. NYC’ on the bottom, both, written in standard white bold upper case (except for the letters ‘th’ which appear behind the number 13 and are written in lower case letters). In the centre of the band, there is the black five-pointed star against a white background. Over the whole figurative element, which resembles a label, the expression ‘El Bronx’ appears in a capitalized stylized black typeface with a white outline.

The English expression 'BOXING EQUIPMENT' is likely to be understood by a significant part of the public given the existence of similar equivalents in several languages, for example ‘boksing’ in Norwegian, ‘boxning’ in Swedish, ‘boksning’ in Danish, ‘boxe’ in French, Italian and Portuguese, ‘box’ in Czech, Romanian and Slovak or ‘boks’ in Croatian, Polish and Slovenian, and ‘équipement’ in French, ‘equipamento’ in Portuguese, ‘echipament’ in Romanian or ‘equipamiento’ in Spanish. Therefore, the expression is considered non-distinctive in relation to the goods in Class 22 and 28 for the part of the relevant public that will understand the expression.

For the rest of the relevant public, for which this expression is meaningless, and for the remaining goods and services, it is considered distinctive.

The element ‘El Bronx’ will be perceived by a significant part of the relevant public as referring to a borough in New York City, in the United States of America. Similarly, the verbal element ‘13th SOUTH HELL. NYC’ will be perceived as an address, especially in connection with the previous indication ’El Bronx’. The distinctiveness of these elements is seen as normal, since they do not directly describe or allude to any characteristics of the relevant goods in a manner that could affect their distinctiveness in a material way. Therefore, they are both distinctive.

As regards the figurative elements of the contested sign, the star can be an indication of the quality of the goods and services. The black band resembling a label has a purely decorative character. Therefore, the figurative elements of the contested sign are weak.

Visually, the signs only coincide in that they both contain the string of the letters ‘BRO’. This verbal element is however contained in the contested sign with numerous other elements which show no similarities with the earlier mark. The signs further coincide in the letters ‘E’ and ‘N’. However, this coincidence is irrelevant as these letters form parts of different words and will not be perceptible as separate elements.

In the view of this, it is concluded that overall the signs are not visually similar. 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier sign is pronounced as ‘JOE BROWNS’, and it does not coincide aurally with any verbal element of the contested mark, that will be pronounced as ‘BOXING EQUIPMENT', 'El Bronx' and 13th SOUTH HELL. NYC’.

Therefore, it is concluded that the signs are not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. While the earlier mark will be perceived by part of the public, at least, as a combination of a first name and a family name, the contested sign refers to boxing equipment and to an address and a borough of New York City.  

Since the signs will be associated with a dissimilar meaning, the signs are not conceptually similar.

As the signs merely coincide in irrelevant aspects they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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

European Union trade mark registration No 2 914 265 for the figurative mark

.

This mark has the same verbal elements as the previously assessed European Union trade mark registration No 4 407 664 and the only difference between them lies in the stylization of the letters which is, however, different from the typeface in the contested sign. This is apparent already when comparing the coinciding string of the letters ‘BRO’ in both marks. The dissimilarity between the signs is all the more obvious taking into account the angle in which the contested mark is positioned. Therefore, the outcome of the comparison cannot be different.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

United Kingdom non-registered figurative trade mark:

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

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

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

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

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

In the present case the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 08/04/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended and expired on 21/08/2016.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

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

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

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

The Opposition Division

Justyna GBYL

Begoña URIARTE VALIENTE

Martina GALLE

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.