OPPOSITION DIVISION
OPPOSITION No B 2 818 881
Branded Stocks (Charlie) Limited, Unit 9 Hemmels Business Park, Laindon,
Basildon, Essex SS15 6ED, United Kingdom (opponent), represented by Bison
River Limited, Unit 9 Valley Court Offices Lower Road, Croydon Near Royston,
Cambridgeshire SG8 0HF, United Kingdom (professional representative)
a g a i n s t
Charlie Communications Limited, Ingles Manor, Castle Hill Avenue, Folkestone
Kent CT20 2RD, United Kingdom (applicant).
On 17/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 818 881 is upheld for all the contested goods, namely
Class 25: Clothing; footwear; headgear; swimwear; sportswear; leisurewear.
2. European Union trade mark application No 15 804 578 is rejected for all the
contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS
The opponent filed an opposition against some of the goods of European Union trade
mark application No 15 804 578 ‘CHARLIE’, namely against all the goods in
Class 25. The opposition is based on, inter alia, Benelux trade mark registration
No 201 418 for the word mark ‘CHARLIE’. The opponent invoked Article 8(1)(b)
EUTMR.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier
trade mark, the trade mark applied for will not be registered if it is identical to the
earlier trade mark and the goods or services for which registration is applied for are
identical to the goods or services for which the earlier trade mark is protected.
The opponent invoked Article 8(1)(b) EUTMR, which covers situations where there
may be a likelihood of confusion due to similarity between the signs and the
Decision on Opposition No B 2 818 881 page: 2 of 3
goods/services, or identity of only one of these two factors. However, Article 8(1)(a)
EUTMR covers situations where there is a so-called double identity, namely identity
of the signs and of the goods and services.
The specific conditions under these provisions are interconnected. Therefore, an
opposition based only on Article 8(1)(b) EUTMR that meets the requirements of
Article 8(1)(a) EUTMR will be dealt with under the latter provision, without any
examination under Article 8(1)(b) EUTMR.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 25: Clothing, footwear, headgear, scarves, gloves.
Class 35: The bringing together for the benefit of others of clothing, footwear,
headgear, sporting goods, enabling customers to conveniently view
and purchase those goods from a retail outlet and through a general
merchandise website.
The contested goods are the following:
Class 25: Clothing; footwear; headgear; swimwear; sportswear; leisurewear.
Clothing, footwear, headgear are identically contained in both lists of goods.
The contested swimwear; sportswear; leisurewear are included in the broad category
of the opponent’s clothing. Therefore, they are identical.
b) The signs
CHARLIE CHARLIE
Earlier trade mark Contested sign
The signs are identical.
c) Global assessment, other arguments and conclusion
The signs and the goods were found to be identical. Therefore, the opposition must
be upheld under Article 8(1)(a) EUTMR for all the contested goods.
As the earlier Benelux trade mark registration No 201 418 leads to the success of the
opposition and to the rejection of the contested trade mark for all the goods 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).
Decision on Opposition No B 2 818 881 page: 3 of 3
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Natascha GALPERIN Arkadiusz GORNY Claudia ATTINÁ
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.