OPPOSITION No B 1 917 239

Jack Wolfskin Ausrüstung für Draussen GmbH & Co. KGaA, Jack Wolfskin Kreisel 1, 65510 Idstein/Taunus, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Rory Carr, 104-310 East Kent Avenue South, Vancouver, British Colombia V5X 4N6, Canada (applicant), represented by Dehns, St Bride’s House, 10 Salisbury Square, London EC4Y 8JD, United Kingdom (professional representative).

On 13/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 917 239 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 of European Union trade mark application No 9 964 099, in Classes 9, 18 and 28. The opposition is based on European Union trade mark registration No 9 274 648 and German registered trade mark No 302 009 052 219. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

Earlier trade marks	Contested sign

The relevant territory is the European Union and Germany.

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 marks are figurative marks and consist of a depiction of a black paw print with sharp claws, which is leaning to the right.

The contested sign is a figurative mark containing the verbal elements ‘CANINE’ and ‘FRIENDLY’. Under the verbal elements, there is a figurative element depicting a black paw print aligned vertically with the depiction of a heart within the pad. All these elements are on a grey label-shaped background.

The figurative elements in all the signs depict an animal’s paw print, which is often used in the field of pet accessories and will be perceived as a mere indication that the relevant goods are for animals. Therefore, it is considered that this element is weak for all the contested goods, which are pet-related articles in Classes 9, 18 and 28, and for those goods and services of the earlier marks that may be animal related. The distinctiveness of the earlier marks is normal for the rest of the goods and services. Moreover, the depiction of the heart will be understood to mean love, so it will be perceived as a laudatory element. Therefore, this element is weak for all the goods.

The verbal element ‘CANINE’ relates to dogs, and ‘FRIENDLY’ is an adjective that means to behave in a pleasant, kind way and to like being with other people. Bearing in mind that the relevant goods are articles and various accessories for pets, it is considered that the element ‘CANINE’ is descriptive and the element ‘FRIENDLY’ is weak. Moreover, the part of the public that understands these elements will perceive ‘CANINE FRIENDLY’ as a meaningful expression, indicating that pets are welcome; therefore, the expression, as whole, is weak for goods related to pets.

The entire public will understand the meaning of the figurative elements. A part of the public will also understand the meaning of the abovementioned verbal elements, either both elements (e.g. the English-speaking part or the part of the German-speaking public that has a good knowledge of English) or at least the verbal element CANINE (such as the French-speaking part, which has a similar word in its language, CANIN). Consequently, the impact of these elements will be limited when assessing the likelihood of confusion. However, a part of the public will not understand the verbal elements and will find the verbal elements distinctive. Consequently, this part of the public will not pay as much attention to the weak figurative element as to the other, more distinctive, elements of the mark.

The earlier marks have no element which could be considered more distinctive than other elements. However, it should also be borne in mind in the comparison of the signs that the depiction of the paw print has only limited distinctive character in respect of goods in the field of dog care, since it may be understood as a reference to the intended purpose. The distinctive character of the trade mark is based on the very specific configuration of the paw print.

Neither of the signs has any element which could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they all contain a depiction of a paw print. However, they differ in the verbal elements in the contested sign, ‘CANINE’ and ‘FRIENDLY’, which are, however, weak for animal-related goods for a part of the public, as explained above. Furthermore, the contested sign has the (non-distinctive) depiction of a heart within the paw print. In addition, the paw prints differ in their depictions. In the earlier marks, the paw print is leaning to the right, whereas in the contested sign it is vertical. The claws are depicted separately in the earlier marks, whereas they are integrated in the fingers of the paw print in the contested sign. The shape of the paw prints also differs. Therefore, taking into account the limited visual commonalities between the signs and the distinctiveness of their elements for different parts of the public, the signs are visually similar to a low degree.

Purely figurative signs are not subject to a phonetic assessment. As some of the signs are purely figurative, namely the earlier marks, it is not possible to compare them aurally.

Conceptually, both signs will be perceived as paw prints. For a part of the public, the contested sign will be associated with additional concepts insofar as at least the English-speaking public and the part of German-speaking public that has a good knowledge of English will understand the expression ‘CANINE FRIENDLY’ and the element ‘CANINE’ will be understood by a part of public, such as the French-speaking part of public. In the contested sign, the depiction of the heart will be perceived by all of the relevant public. Therefore, taking into account the limited degree of distinctiveness of the figurative elements for animal-related goods for the whole relevant public and weak distinctive character of the differing elements for the part of the public that will understand them, the signs are conceptually similar to a low degree.

2. Reputation of the earlier trade marks

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

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

In the present case, the contested trade mark was filed on 12/05/2011 and has a priority date of 09/03/2011. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Germany and the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

European Union trade mark registration No 9 274 648

Class 1:        Impregnating chemicals, in particular for clothing, footwear, tents, textiles and textile goods.

Class 3:        Bleaching preparations and other substances for laundry use, washing preparations for weatherproof clothing; Soaps; Perfumery products, ethereal oils; Cosmetics; Hair lotions; Dentifrices; Waxes for leather; Shoe cream.

Class 6:        Ironmongery and small items of metal hardware, goods of common metal, included in Class 6; Tent pegs of metal; Locks [other than electric] of metal.

Class 9:        Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Protective helmets; Electric apparatus and instruments (included in Class 9), namely, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Mechanical and electronic navigation instruments, compasses, altimeters; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images, magnetic, optical and digital data carriers (except unexposed films), including floppy discs, magnetic tapes, optical discs, CD-ROMs, CD-Is, DVDs, USB sticks; Magnetic data carriers, recording discs; Bags adapted for laptops; Bags and cases for electric apparatus (included in Class 9), in particular for computers, mobile telephones, CD players, MP3 players, MD players, cameras; Sunglasses, Spectacle cases, Anti-glare glasses.

Class 10:        Mats and mattresses for medical purposes.

Class 12:         Bags for bicycles.

Class 14:        Precious metals and their alloys and goods of precious metals or coated therewith (included in Class 14); Jewellery, precious stones; Key rings (of metal); Jewellery charms for mobile telephones.

Class 16:        Printed matter; Stationery; Typewriters; Plastic materials for packing (not included in other classes).

Class 18:         Leather and imitations of leather; Goods made from leather and imitations of leather (included in Class 18); Cases, in particular travelling bags; Bags, included in Class 18, briefcases, holdalls, sports bags, carrier bags and shoulder bags; Travel pouches, carrier bags and packs; Pouches of leather for packaging (included in Class 18); Waist pouches; Rucksacks and backpacks (for travel), daypacks (small rucksacks for day trips); Shopping bags; Handbags; Toilet bags and wash bags; Towel bags; Papooses; School bags; School bags; Neck pouches, including for passports; Document cases and holders; Purses, pocket wallets, key wallets; Parasols and umbrellas; Walking sticks, Alpenstocks, Trekking poles; Saddlery.

Class 20:         Sleeping bags for trekking and camping; mattresses, in particular air mattresses (not for medical purposes).

Class 22:         Ropes, straps for packaging, of textile material (included in Class 22), nets, tents, awnings, tarpaulins, sails, bags (envelopes, pouches) for packaging of textile material, sacks (included in Class 22).

Class 24:         Textiles and textile goods (included in Class 24); Cotton fabrics, woollen fabrics, linings, nonwovens; Bath linen (except clothing); Towels of textile; Blankets, namely travel blankets, woollen blankets, fleece blankets.

Class 25:         Clothing, footwear, headgear; Accessories for clothing (included in Class 25), braces (suspenders), belts (clothing); Belt pouches for documents; Inner soles, Soles for footwear, Sleeping masks.

Class 26:         Shoe laces; Key holders (lanyards); Ornaments novelty badges (buttons); Zippers and Zipper pulls.

Class 27:         Mats, in particular for gymnastics, sports, travelling, trekking and camping purposes.

Class 28:         Gymnastics and sports equipment; Gymnastic and sporting articles not included in other classes; Bags adapted for use with sporting equipment; Decorations for Christmas trees.

Class 35:         Consultancy with regard to advertising, and organisational consultancy and instruction for businesses with regard to the management and monitoring of shops; Arranging and concluding commercial transactions for others; Arranging contracts for the buying and selling of goods and services; Management and operating of shops, for others, in particular shops selling clothing, outdoor equipment and sporting articles, and franchising in connection therewith, namely the arranging and concluding of commercial transactions in the field of the aforesaid services, and arranging and concluding of contracts, in particular licence agreements; Providing of professional business, organisational and marketing consultancy to shop operators; Sales promotion and advertising for shop operators; Wholesaling and retailing in relation to the following goods, impregnating chemicals, in particular for clothing, footwear, awnings, textiles, textile goods, bleaching preparations and other substances for laundry use, washing preparations for weatherproof clothing, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, creams for leather, shoe cream, ironmongery, small items of metal hardware, goods of metal, tent pegs of metal, locks, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, protective helmets, electric apparatus and instruments, mechanical and electronic navigational instruments, directional compasses, altimeters, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic, optical and digital data carriers (other than unexposed films), including floppy disks, magnetic tapes, optical discs, CD-ROMs, CD-is, DVDs, USB flash drives, magnetic data carriers, recording discs, bags adapted for laptops, bags and cases for electric apparatus, including computers, mobile telephones, compact disc players, MP3 players, MD players, cameras, sunglasses, spectacle cases, anti-glare glasses and sleeping masks, mats and mattresses for medical purposes, bike bags, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, key rings, of metal, charms for mobile telephones, zipper pulls of metal, paper, cardboard and goods made from these materials, bookbinding material, photographs, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, printing blocks, leather and imitations of leather, goods of leather and imitations of leather, cases, in particular travelling bags, bags, briefcases, pouches, sacks, in particular trunks, sports bags, carrier bags and shoulder bags, travel pouches, carrying bags and packing bags, waist packs, backpacks and packsacks, daypacks, shopping bags, handbags, toilet cases and wash bags and pouches, towel bags and pouches, child carriers, school satchels, school bags, chest pouches, including for passports, document bags, briefcases and belt pouches for documents, purses, pocket wallets, key cases, parasols and umbrellas, walking sticks, mountaineering sticks, trekking poles, saddlery, sleeping bags, mattresses, in particular air mattresses, containers for transporting and conserving liquids and foodstuffs, drinking bottles and containers, insulated flasks and mugs, crockery of porcelain and earthenware, camping crockery, picnic crockery, ropes, straps of textile, nets, tents, awnings, tarpaulins, sails, bags (envelopes, pouches) of textile, for packaging, sacks and bags, textiles and textile goods, cotton fabrics, woollen fabrics, linings (textile), non-woven fabrics, bath linen, except clothing, towels of textile, blankets namely travelling rugs, woollen blankets, fleece blankets, clothing, footwear, headgear, clothing accessories, braces for clothing (suspenders), belts (clothing), insoles, shoe soles, shoelaces, key straps (lanyards), ornamental novelty badges (buttons), slide fasteners (zippers) and zipper pulls, mats, in particular for gymnastic, sporting, travel, trekking and camping purposes, games and playthings, other than for pets, gymnastic and sporting equipment, gymnastic and sporting articles, special bags for sporting equipment; Arranging contracts, for others, for the providing of transport services.

Class 39:         Transport; Transport of travellers, in particular by motor vehicle, rail vehicle, ship and aeroplane; Arranging, booking and arrangement of travel, excursions and cruises; Organising, booking and arrangement of tours, excursions and sightseeing; Travel consultancy and personal chaperoning of travellers; Rental and booking of aeroplanes; Rental, booking of ships, in particular rowing boats and motorboats, sailing ships and canoes; Rental, booking of motor vehicles, bicycles and diving equipment; Consultancy with regard to, and booking of, travel, travel information services; Online information, reservation and booking services in the field of tourist travel (online travel agencies).

Class 41:         Education; Providing of training; Entertainment; Sporting and cultural activities; Arranging and conducting of festivals and events (entertainment); Reservation services (included in this class), for sporting, scientific, political and cultural events.

Class 42:         Design consultancy and technical consultancy with regard to operating shops, in particular for clothing, outdoor equipment and sporting articles; Design consultancy (included in Class 42) and technical consultancy with regard to shopfitting, in particular for clothing, outdoor equipment and sporting articles; Technical consultancy and design consultancy (included in Class 42) with regard to the planning, establishing, fitting, construction and building of shops, in particular for clothing, outdoor equipment and sporting articles.

Class 45:         Licensing of industrial property rights, in particular trademarks.

After a partial surrender, German trade mark registration No 302 009 052 219

Class 1:         Impregnating chemicals, in particular for clothing, footwear, tents, textiles and textile goods.

Class 3:         Bleaching preparations and other substances for laundry use, washing preparations for weatherproof clothing; soaps; perfumery products, ethereal oils: articles for body and beauty-care; hair lotions; dentifrices: waxes for leather; shoe polish and creams.

Class 6:         Ironmongery and small Items of metal hardware, goods of common metal (included in Class 6); tent pegs of metal; locks [other than electric] of metal.

Class 9:         Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments: protective helmets; electric apparatus and instruments (included in Class 9), namely, apparatus and instruments for conducting, switching, transforming, accumulating regulating or controlling electricity: mechanical and electronic navigation instruments compasses, altimeters; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission and reproduction of sound and images, magnetic, optical and digital data carriers (except unexposed films), including floppy discs, magnetic tapes, optical discs, CD-ROMs CD-Is, DVDs, USB sticks: magnetic data carriers, recording discs; laptop bags: bags and cases for electric apparatus (included in Class 9), in particular for computers, mobile telephones, CD players, MP3 players, MD players, cameras; sunglasses, spectacle cases, anti-glare glasses.

Class 10:         Mats and mattresses for medical purposes.

Class 12:         Bike bags.

Class 14:         Precious metals and their alloys and goods of precious metals or coated therewith (included in Class 14); jewelry precious stones; key rings (of metal); jewelry charms for mobile telephones.

Class 16:         Typewriters; plastic materials for packaging (not included in other classes).

Class 18:         Leather and imitations of leather; goods made from leather and imitations of leather (included in Class 18); cases in particular travelling bags; bags (included in Class 18), briefcases holdalls, sports bags, carrier bags and shoulder bags; travel pouches, carrier bags and packs; pouches of leather for packaging (included in Class 18); waist pouches; rucksacks and backpacks (for travel), daypacks (small rucksacks for day trips); tote bags; handbags; toilet bags and wash bags; towel bags; child carriers; bags for school; school bags; neck pouches, including for passports; document cases and holders; purses, pocket wallets, key wallets; parasols and umbrellas: walking sticks, mountaineering sticks, trekking poles; saddlery.

Class 20:        Sleeping bags for trekking and camping; mattresses, in particular air mattresses (not for medical purposes).

Class 22:         Ropes, straps for packaging, of textile material (included in Class 22), nets, tents, tarpaulins, sails, bags (envelopes, Pouches) for packaging, of textile material, sacks (included in Class 22).

Class 24:         Textiles and textile goods (included in Class 24); cotton fabrics, woollen fabrics, linings, nonwovens; bath linen (except clothing); towels of textile: blankets, namely travel blankets, woollen blankets, fleece blankets.

Class 25:         Clothing, footwear, headgear; accessories for clothing (included in Class 25), suspenders, belts (clothing); belt pouches for documents; inner soles, soles for footwear, sleeping masks.

Class 26:         Laces for footwear; key holders (lanyards); ornamental novelty badges (buttons); zips and zip pulls.

Class 27:         Mats, in particular for gymnastics, sports, travelling, trekking and camping purposes.

Class 28:        Gymnastic and sporting equipment; gymnastic and sporting articles (included in Class 28); bags adapted for use with sporting equipment.

Class 35:         Consultancy with regard to advertising and organisational consultancy and instruction for businesses with regard to the management and monitoring of shops; arranging and concluding commercial transactions for others; arranging contracts for buying and selling goods and services; management and operating of shops, for others, in particular shops selling clothing, outdoor equipment and sporting articles, and franchising in connection therewith namely the arranging and concluding of commercial transactions in the field of the aforesaid services, and arranging and concluding of contracts, in particular licence agreements; providing of professional business, organisational and marketing consultancy to shop operators; sales promotion and advertising for shop operators; wholesale and retail services in relation to impregnating chemicals, in particular for clothing, footwear, tents, textiles, textile goods, bleaching preparations and other substances for laundry use, washing preparations for weatherproof clothing, soaps, perfumery, essential oils, cosmetic, hair lotions, dentifrices, creams for leather, shoe creams, ironmongery and small items of metal hardware, goods of common metal (included in Class 6), tent pegs of metal, locks, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, protective helmets, electric apparatus and instruments (included in Class 9), mechanical and electronic navigation instruments, compasses, altimeters, apparatus and instruments for conducting, switching transforming, accumulating, regulating and controlling electricity, apparatus for recording, transmission and reproduction of sound and images, magnetic, optical and digital data carriers (except unexposed films), including floppy discs, magnetic tapes, optical discs, CD-ROMs, CD-Is, DVDs, USB sticks, magnetic data carriers, phonograph records, laptop bags, bags and cases for electric apparatus, in particular for computers, mobile telephones, CD players, MP3 players, MD players, cameras, sunglasses, spectacle cases, anti-glare glasses and sleeping masks, mats and mattresses for medical purposes, bicycle bags, precious metals and their alloys and goods made of precious metals or coated therewith (included in Class 14) jewelry, ornaments precious stones, horological and chronometrical instruments, key rings (of metal), jewelry charms for mobile telephones, zip pulls of metal, paper, cardboard and goods made from these materials (included in Class 16), book binding material, photographs, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging (not included in other classes), print types, printing blocks, leather and imitations of leather, and goods made of leather and imitations of leather (included in Class 18), cases, in particular trunks, bags (included in Class 18), briefcases, pouches, sacks, in particular holdalls, sports bags, carrier bags and shoulder bags, travel pouches, carrier bags and packs, waste pouches, rucksacks and backpacks, daypacks, shopping bags, handbags, toilet bags and wash bags, towel bags, child carriers, school bags, school satchels, neck pouches, including for passports, document cases and holders and belt pouches for documents purses, wallets, key cases, parasols and umbrellas, walking sticks, mountaineering sticks, trekking poles, saddlery, sleeping bags, mattresses, in particular air mattresses, containers for transporting and preserving liquids and foodstuffs (included in Class 21), drinking bottles and containers, insulating jugs and beakers, tableware of porcelain and earthenware (included in Class 21), camping utensils (crockery), picnic ware, ropes, straps of textile material, nets, tents, tarpaulins, sails, bags (envelopes, pouches) for packaging, of textile material, sacks (included in Class 22), textiles and textile goods (included in Class 24), cotton fabrics, woollen cloth, linings, fleece fabrics, bath linen, except clothing, towels of textile, blankets, namely travel blankets, woollen blankets, fleece blankets, clothing, footwear, headgear, accessories for clothing, suspenders, belts (clothing), inner soles, soles for footwear, shoe laces, key straps (lanyards), ornamental novelty badges (buttons), zips and zip pulls, mats, in particular for gymnastic, sporting, travel, trekking and camping purposes, games, toys, gymnastic and sports equipment, gymnastic and sporting articles (included In Class 28), special bags for sports equipment; arranging contracts for others for the provision of transport services.

Class 39:         Transport; transport of travellers, in particular by motor vehicle, rail vehicle, ship and aeroplane; arranging, booking and arrangement of travel, excursions and cruises; organising, booking and arrangement of tours, excursions and sightseeing; travel consultancy and personal chaperoning of travellers; rental, booking of aeroplanes; rental, booking of ships, in particular rowing boats and motorboats, sailing ships and canoes; rental, booking of motor vehicles, bicycles and diving equipment; consultancy with regard to, and booking of, travel, travel information services; online information, reservation and booking services in the field of tourist travel (online travel agencies).

Class 41: Education; providing of training; entertainment; sporting and cultural activities; arranging and conducting of festivals and events (entertainment); reservation services (included in this class), for sporting, scientific, political and cultural events.

Class 42:         Design consultancy and technical consultancy with regard to operating shops, in particular for clothing, outdoor equipment and sporting articles: design consultancy (included in Class 42) and technical consultancy with regard to shopfitting, in particular for clothing, outdoor equipment and sporting articles; technical consultancy and design consultancy (included in Class 42) with regard to the planning, establishing, fitting, construction and building of shops, in particular for clothing, outdoor equipment and sporting articles.

Class 45:         Licensing of industrial property rights, in particular trademarks.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 10/01/2013, the opponent submitted the following evidence:

• Witness statement from an employee of the opponent, Mr Markus Bötsch (Chief Sales Officer), dated 10/10/2014, describing the history of the Jack Wolfskin business since 1981 for outdoor activities and since 1999 for footwear. Turnover figures are provided for several years (from 1999 to 2012); in recent years, the opponent has had a very high turnover in Germany. The statement also provides amounts spent on advertising worldwide. The statement indicates that one of the most important ways in which the opponent promotes its goods is by sponsoring athletes, teams and sporting events, especially in football and winter sport events. The statement gives examples of famous athletes and successful football teams that use sports clothing and footwear with the three-stripe marks and of major sporting events of which the opponent is the official supplier (such as the Four Hills Tournament (4 Schanzen Tournee)) and includes undated pictures of sports events. The opponent also submitted undated picture of labels, hangtags, zip pullers and stoppers and of the opponent’s products, such as trousers, backpacks, shoes and hats, where the paw print device, alone or with the additional verbal element ‘Jack Wolfskin’, appears. In addition, undated pictures of retail stores are submitted (Exhibit 1).
• Excerpts from catalogues, dated 1988, 1990, 1994, 1996, 1997, 1998, 1999, 2000, 2001, 2002 and 2003, showing several outdoor products, such as rucksacks, clothing and shoes, depicting the paw print device, on its own or with the additional verbal element ‘Jack Wolfskin’. These documents are in German. Copies of the opponent’s catalogue of summer 2011 were also submitted, showing outdoor products and equipment, such as tents, sleeping bags, rucksack, backpacks, clothing for men, women and children, shoes and boots (Exhibits 2 and 3).
• Overview of marketing spending in 2009; according to the data, 1 813 900 copies of the spring/summer catalogue were printed in German, English, Flemish and Finnish. The opponent advertised in several magazines, inter alia the magazines Spiegel and GEO in Germany, and magazines in Belgium, Finland, Italy, Poland, the United Kingdom and Austria, as well as on television. The opponent sponsored several football clubs (Exhibits 4 and 5).
• Sponsorship of events from 2003 to 2008, such as football events or winter sports events (such as sponsorship of the International Four Hills Tournament or the Ski Flying World Championships in Oberstdorf, Germany) (Exhibit 6).
• GfK consumer study in 2006 on awareness of the opponent’s mark, carried out in Germany in connection with products intended for use in outdoor or sport activities. Of a total of 1 016 interviewees, 607 stated that they buy or use products that are intended for use in outdoor or sport activities. The questions were not formulated in a suggestive way. According to the study, 50% of all interviewees and 65% of the interviewees from the narrower group of consumers had seen the ‘Jack Wolfskin paw’ at least once in connection with products intended for use in outdoor or sports activities. In addition, 34% of all interviewees and 47% of the interviewees from the narrower group of consumers believed that the opponent’s mark identifies one specific company (Exhibit 7).
• GfK consumer study in 2012 on awareness of the opponent’s mark, carried out in Germany in connection with products intended for use in outdoor or sport activities. The interviews were conducted from 30/03/2012 to 10/04/2012. The following products were mentioned: apparel, shoes, backpacks and other pieces of equipment, especially for outdoor activities. Of a total of 1 003 interviewees, 764 stated that they buy or use products that are intended for use in outdoor or sport activities. According to the study, 77.7% of all interviewees and 84.9% of the interviewees from the narrower group of consumer had already seen the opponent’s mark (Exhibit 8).
• Study entitled ‘Imagery 7’ carried out by the journal GEO, conducted by TNS Infratest Media Research between 08/05/2008 and 13/06/2008. According to the study, 97% of the interviewees knew the mark ‘Jack Wolfskin’ (Exhibit 9).
• Press reports by independent sources referring to the opponent’s history (articles in German accompanied by translations into English). For example, the article dated 17/04/2008 displays the opponent’s mark. The article dated 21/01/2011 mentions that ‘the manufacturer of anoraks, functional jackets, boots and rucksacks into an ubiquitous brand recognisable by its paw print logo. […] Jack Wolfskin is the market leader in Germany in clothing and equipment for mountaineering and outdoor activities’. The article dated 15/07/2009 mentions ‘Wolf paws all over the place’ (Exhibit 10).
• Decision of the Board of Appeal of 27/10/2010, R 1354/2009-2, DAWGS (FIG. MARK) / Paw print (FIG. MARK).

The catalogues confirm that the opponent is selling outdoor products. The two GfK market surveys confirm that the earlier marks are known in the market. The two studies are credible, since they were conducted by an independent recognised research institute. The number of interviewees was sufficient and the questions were not suggestive.

The abovementioned evidence indicates that the earlier trade marks have been used for a substantial period of time. The sale figures, survey and marketing efforts suggest that the trade marks have a consolidated position in the market. The two GfK studies show that the reputation increased between 2006 and 2012. The levels of awareness in both studies were high.

It is clear that the opponent’s sales and advertising under its marks are substantial and spread across the European Union with concentrated use in Germany. The surveys submitted show that the marks are widely recognised by the relevant public in Germany and that the public recognises the Jack Wolfskin paw print as indicative of a very specific enterprise. The marks enjoy a consolidated position among the leading brands, as has been attested by independent and diverse sources. The various references to their success in the press show unequivocally that the marks enjoy a high degree of recognition among the relevant public.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier marks enjoy a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade marks enjoy some degree of reputation.

Furthermore, the use of the earlier figurative marks in combination with the word mark ‘Jack Wolfskin’ does not alter the distinctive character of the earlier marks. The Opposition Division notes that it is quite common in some market areas that the goods and services 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.

However, the evidence does not succeed in establishing that the trade marks have a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to outdoor products, such as cases, in particular travelling bag; bags, included in Class 18; sports bags, carrier bags and shoulder bags; carrier bags and packs; rucksacks and backpacks (for travel), daypacks (small rucksacks for day trip) in Class 18; sleeping bags for trekking and camping; mattresses, in particular air mattresses (not for medical purposes) in Class 20; tents in Class 22; clothing, footwear, headgear; accessories for clothing (included in Class 25) in Class 25; mats, in particular for gymnastics, sports, travelling, trekking and camping purposes in Class 27; and bags adapted for use with sporting equipment in Class 28.

However, there is no or little reference to the remaining goods and services.

On the basis of the above the Opposition Division concludes that the earlier trade marks have a reputation in Germany for the abovementioned goods. Since the European Union trade mark is reputed at least in Germany, given the size of the German market, this is sufficient to include a substantial part of the European Union as relevant territory.

3. The ‘link’ between the signs

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

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

∙        the degree of similarity between the signs;

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

∙        the strength of the earlier mark’s reputation;

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

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

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

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

In the present case, the goods of the earlier rights for which the reputation has been proven are the following:

Class 18:        Cases, in particular travelling bag; bags, included in Class 18; sports bags, carrier bags and shoulder bags; carrier bags and packs; rucksacks and backpacks (for travel), daypacks (small rucksacks for day trip).

Class 20:        Sleeping bags for trekking and camping; mattresses, in particular air mattresses (not for medical purposes).

Class 22:        Tents.

Class 25:        Clothing, footwear, headgear; accessories for clothing (included in Class 25).

Class 27:        Mats, in particular for gymnastics, sports, travelling, trekking and camping purposes.

Class 28:        Bags adapted for use with sporting equipment.

The contested goods are the following:

Class 9:         Safety lights for pets.

Class 18:         Pet collars; leashes for pets, adjustable leash couplers for pet leashes; halters; harnesses for pets; portable pet food bags; pet clothing including coats, waterproof jackets, visibility vests; life jackets for pets; backpacks for pets.

Class 28:         Pet toys.

Regarding the applicant’s goods in Class 18 and the opponent’s goods in Classes 18 and 25, for which reputation has been proven, these goods belong to different sectors that are not directly linked and are considered dissimilar. Although all these goods belong to the group of clothing and clothing accessories (e.g. bags, backpacks, etc.), the categories for clothing for pets, on the one hand, and those for human beings, on the other hand, are very different. It cannot be suggested that it is a trade habit or common on the market for the producers of pets’ clothing to also produce clothing for human beings. Although the opponent submitted, in this respect, printouts from websites that sell clothing for both humans and animals, they are insufficient to prove that such a trade habit exists. A brand extension from human clothing to pet clothing is not common practice under normal market conditions. Furthermore, it is not uncommon for department stores or websites of retailers, such as the ones referred to by the opponent, to sell a wide variety of goods. For example, on ‘Amazon’ the consumer can find books and mobile phones; this, however, does not mean that there is a link between these goods.

The absence of a link is even more evident in the case of the applicant’s goods in Class 18 and the opponent’s goods in Classes 20, 22, 27 and 28, for which reputation has also been proven.

The same reasoning is applied for the contested goods in Classes 9 and 28, which are very different from the goods for which the earlier marks are reputed.

Moreover, in the present case, the signs are similar to some extent. This does not mean that the relevant public is likely to establish a link between them. When consideration is given to the goods in question, it is clear that the similarities between the signs in dispute relate to elements which are not particularly distinctive in the contested sign. This is because the depiction of an animal’s paw print, often used in the field of pet accessories, will be perceived as a mere indication that the relevant goods are for animals. Therefore, it is considered that this element is weak for all the contested goods that are pet-related articles in Classes 9, 18 and 28. Therefore, in view of the weak distinctive character of the element in question, the similarities between the contested trade mark and the earlier trade marks are unlikely to bring the earlier trade marks to the mind of the average consumer when the contested goods are purchased.

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

The Opposition Division now proceeds to examine the opposition as far as it is based under 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 European Union trade mark registration No 9 274 648.

4. The goods and services

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

European Union trade mark registration No 9 274 648

Class 1:         Impregnating chemicals, in particular for clothing, footwear, tents, textiles and textile goods.

Class 3:         Bleaching preparations and other substances for laundry use, washing preparations for weatherproof clothing; soaps; perfumery products, ethereal oils; cosmetics ; hair lotions; dentifrices; waxes for leather; shoe creams.

Class 6:         Ironmongery and small items of metal hardware, goods of common metal, included in Class 6; tent pegs of metal; locks [other than electric] of metal.

Class 9:         Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; protective helmets; electric apparatus and instruments (included in Class 9), namely, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; mechanical and electronic navigation instruments, compasses, altimeters; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images, magnetic, optical and digital data carriers (except unexposed films), including floppy discs, magnetic tapes, optical discs, CD-ROMs, CD-Is, DVDs, USB sticks; magnetic data carriers, recording discs; bags adopted for laptops; bags and cases for electric apparatus (included in Class 9), in particular for computers, mobile telephones, CD players, MP3 players, MD players, cameras; sunglasses, spectacle cases, anti-glare glasses.

Class 10:         Mats and mattresses for medical purposes.

Class 12:        Bags for bicycles.

Class 14:         Precious metals and their alloys and goods of precious metals or coated therewith (included in Class 14); jewellery, precious stones; key rings (of metal); jewellery charms for mobile telephones.

Class 16:         Printed matter; stationery; typewriters; plastic materials for packaging (not included in other classes).

Class 18:         Leather and imitations of leather; goods made from leather and imitations of leather (included in Class 18); cases, in particular travelling bags; bags, included in Class 18, briefcases, holdalls, sports bags, carrier bags and shoulder bags; travel pouches, carrier bags and packs; pouches of leather for packaging (included in Class 18); waist pouches; rucksacks and backpacks (for travel), daypacks (small rucksacks for day trips); shopping bags; handbags; toilet bags and wash bags; towel bags; papooses; school bags; school bags; neck pouches, including for passports; document cases and holders; purses, pocket wallets, key wallets; parasols and umbrellas; walking sticks, alpenstocks, trekking poles; saddlery.

Class 20:         Sleeping bags for trekking and camping; mattresses, in particular air mattresses (not for medical purposes).

Class 22:         Ropes, straps for packaging, of textile material (included in Class 22), nets, tents, awnings, tarpaulins, sails, bags (envelopes, pouches) for packaging of textile material, sacks (included in Class 22).

Class 24:         Textiles and textile goods (included in Class 24); cotton fabrics, woollen fabrics, linings, nonwovens; bath linen (except clothing); towels of textile; blankets, namely travel blankets, woollen blankets, fleece blankets.

Class 25:         Clothing, footwear, headgear; accessories for clothing (included in Class 25), braces (suspenders), belts (clothing); belt pouches for documents; inner soles, soles for footwear, sleeping masks.

Class 26:         Shoes laces; key holders (lanyards); ornaments novelty badges (buttons); zippers and zipper pulls.

Class 27:         Mats, in particular for gymnastics, sports, travelling, trekking and camping purposes.

Class 28:         Gymnastic and sporting equipment; gymnastic and sporting articles not included in other classes; bags adapted for use with sporting equipment; decorations for Christmas trees.

Class 35:         Consultancy with regard to advertising, and organisational consultancy and instruction for businesses with regard to the management and monitoring of shops; Arranging and concluding commercial transactions for others; Arranging contracts for the buying and selling of goods and services; Management and operating of shops, for others, in particular shops selling clothing, outdoor equipment and sporting articles, and franchising in connection therewith, namely the arranging and concluding of commercial transactions in the field of the aforesaid services, and arranging and concluding of contracts, in particular licence agreements; Providing of professional business, organisational and marketing consultancy to shop operators; Sales promotion and advertising for shop operators; Wholesaling and retailing in relation to the following goods, impregnating chemicals, in particular for clothing, footwear, awnings, textiles, textile goods, bleaching preparations and other substances for laundry use, washing preparations for weatherproof clothing, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, creams for leather, shoe cream, ironmongery, small items of metal hardware, goods of metal, tent pegs of metal, locks, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, protective helmets, electric apparatus and instruments, mechanical and electronic navigational instruments, directional compasses, altimeters, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic, optical and digital data carriers (other than unexposed films), including floppy disks, magnetic tapes, optical discs, CD-ROMs, CD-is, DVDs, USB flash drives, magnetic data carriers, recording discs, bags adapted for laptops, bags and cases for electric apparatus, including computers, mobile telephones, compact disc players, MP3 players, MD players, cameras, sunglasses, spectacle cases, anti-glare glasses and sleeping masks, mats and mattresses for medical purposes, bike bags, precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, key rings, of metal, charms for mobile telephones, zipper pulls of metal, paper, cardboard and goods made from these materials, bookbinding material, photographs, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, printing blocks, leather and imitations of leather, goods of leather and imitations of leather, cases, in particular travelling bags, bags, briefcases, pouches, sacks, in particular trunks, sports bags, carrier bags and shoulder bags, travel pouches, carrying bags and packing bags, waist packs, backpacks and packsacks, daypacks, shopping bags, handbags, toilet cases and wash bags and pouches, towel bags and pouches, child carriers, school satchels, school bags, chest pouches, including for passports, document bags, briefcases and belt pouches for documents, purses, pocket wallets, key cases, parasols and umbrellas, walking sticks, mountaineering sticks, trekking poles, saddlery, sleeping bags, mattresses, in particular air mattresses, containers for transporting and conserving liquids and foodstuffs, drinking bottles and containers, insulated flasks and mugs, crockery of porcelain and earthenware, camping crockery, picnic crockery, ropes, straps of textile, nets, tents, awnings, tarpaulins, sails, bags (envelopes, pouches) of textile, for packaging, sacks and bags, textiles and textile goods, cotton fabrics, woollen fabrics, linings (textile), non-woven fabrics, bath linen, except clothing, towels of textile, blankets namely travelling rugs, woollen blankets, fleece blankets, clothing, footwear, headgear, clothing accessories, braces for clothing (suspenders), belts (clothing), insoles, shoe soles, shoelaces, key straps (lanyards), ornamental novelty badges (buttons), slide fasteners (zippers) and zipper pulls, mats, in particular for gymnastic, sporting, travel, trekking and camping purposes, games and playthings, other than for pets, gymnastic and sporting equipment, gymnastic and sporting articles, special bags for sporting equipment; Arranging contracts, for others, for the providing of transport services.

Class 39:         Transport; transport of travellers, in particular by motor vehicle, rail vehicle, ship and aeroplane; arranging, booking and arrangement of travel, excursions and cruises; organising, booking and arrangement of tours, excursions and sightseeing; travel consultancy and personal chaperoning of travellers; rental and booking of aeroplanes; rental, booking of ships, in particular rowing boats and motorboats, sailing ships and canoes; rental, booking of motor vehicles, bicycles and diving equipment; consultancy with regard to, and booking of, travel, travel information services; online information, reservation and booking services in the field of tourist travel (online travel agencies).

Class 41:         Education; providing of training; entertainment; sporting and cultural activities; arranging and conducting of festivals and events (entertainment); reservation services (included in this class), for sporting, scientific, political and cultural events.

Class 42:         Design consultancy and technical consultancy with regard to operating shops, in particular for clothing, outdoor equipment and sporting articles; design consultancy (included in Class 42) and technical consultancy with regard to shop fitting, in particular for clothing, outdoor equipment and sporting articles; technical consultancy and design consultancy (included in Class 42) with regard to the planning, establishing, fitting, construction and building of shops, in particular for clothing, outdoor equipment and sporting articles.

Class 45:         Licensing of industrial property rights, in particular trademarks.

The contested goods are the following:

Class 9:         Safety lights for pets.

Class 18:         Pet collars; leashes for pets, adjustable leash couplers for pet leashes; halters; harnesses for pets; portable pet food bags; pet clothing including coats, waterproof jackets, visibility vests; life jackets for pets; backpacks for pets.

Class 28:         Pet toys.

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.

Contested goods in Class 9

The contested safety lights for pets are included in the opponent’s signalling apparatus and instruments. Therefore, they are identical.

Contested goods in Class 18

The contested pet collars; leashes for pets, adjustable leash couplers for pet leashes; halters; portable pet food bags; backpacks for pets; harnesses for pets; pet clothing including coats, waterproof jackets, visibility vests; life jackets for pets are similar to a low degree to the opponent’s goods made from leather and imitation of leather (included in Class 18) in Class 18, to the extent that they are goods made of leather. Their purpose may also be the same, in that they are for carrying, holding or storing different possessions for use with animals.

Contested goods in Class 28

The contested pet toys are objects for pets to play with and have no link with any of the opponent’s goods and services. They do not have the same distribution channels or points of sale (the contested goods being for pets, their distribution channels are different from those of goods and services for human beings, as explained above). Therefore, they are not similar.

5. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is considered average.

6. The signs

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

Taking into account the abovementioned visual and conceptual coincidences, it is considered that the signs under comparison are similar to a low degree.

7. Distinctiveness of the earlier mark

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

According to the opponent, the earlier trade marks have a reputation in Germany and the European Union in connection with all the goods and services for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been listed and examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

Having examined the material listed above under the grounds of Article 8(5) EUTMR, the Opposition Division has concluded that the earlier trade marks have reputation on the relevant market.

The evidence, however, has not succeeded in establishing a high degree of distinctiveness of the trade marks in connection with all the goods and services on which the opposition is based. Reputation has been proven only for cases, in particular travelling bag; bags, included in Class 18; sports bags, carrier bags and shoulder bags; carrier bags and packs; rucksacks and backpacks (for travel), daypacks (small rucksacks for day trip) in Class 18; sleeping bags for trekking and camping; mattresses, in particular air mattresses (not for medical purposes) in Class 20; tents in Class 22; clothing, footwear, headgear; accessories for clothing (included in Class 25) in Class 25; mats, in particular for gymnastics, sports, travelling, trekking and camping purposes in Class 27; and bags adapted for use with sporting equipment in Class 28. However, the abovementioned goods have not been found to have any link to the contested goods (see section c) of this decision).

In relation to the opponent’s clothing for animals; leather goods for animals (included in Class 18), in particular leashes and collars; harness for animals; collars for animals in Class 18, which are identical to the contested goods, the opponent has failed to prove that its earlier marks enjoy a high degree of distinctiveness. Consequently, the assessment of the distinctiveness of the earlier European Union trade mark as regards these goods will rest on its distinctiveness per se. Considering what has been stated above in section a) of this decision, the degree of distinctiveness of the earlier marks must be seen as low, at least for the goods in Class 18 related to animals that are identical or similar to the contested goods.

8. Global assessment, other arguments and conclusion

The contested goods are partly identical or similar to the opponent’s goods and services, and partly dissimilar. The signs are visually similar to a low degree, while there is no aural similarity, as the earlier signs, being purely figurative, cannot be pronounced. The signs are conceptually similar to the extent that all signs will be associated with the concept of an animal’s paw print, which is nevertheless weak for the contested goods.

The Court of Justice has established the principle that it is not possible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character, either per se or because of the recognition it possesses on the market, enjoy a broader protection that marks with a less distinctive character (29/09/1998, C-02/95, Puma/Sabel, § 24-26).

The depiction of a paw print, as such, is considered an element suggesting that the goods for which registration is sought are for animals. Therefore, the coinciding aspects of the marks concern an element that is not particularly distinctive. Furthermore, the contested sign contains the equally prominent verbal element ‘CANINE FRIENDLY’. It is easier for the public to refer to a mark by its verbal elements rather than by describing some figurative elements. Although the figurative element depicting a paw print plays an individually independent role within the contested sign, the sign will rather be perceived and remembered as ‘CANINE FRIENDLY’, even though this element has a low degree of distinctiveness for a part of the public.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, because the signs in question are not comparable to the present case. The opponent also refers to a case from the General Court, where the Court compared signs that are also different from the present case.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected under Article 8(1)(b) EUTMR.

The opponent has also based its opposition on German trade mark registration No 302 009 052 219 for the figurative mark .

Since this mark is identical to the one on the basis of which the opposition has been rejected under Article 8(1)(b), covers the same goods and services that have been found identical or similar to the contested goods and its reputation has been proven for the same goods as those of earlier EUTM registration No 9 274 648, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the 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

Zuzanna STOJKOWICZ

Julie GOUTARD

Marianna KONDAS

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.