OPPOSITION No B 2 616 392

KS Warenhaus IPCo GmbH, Maximiliansplatz 12, 80333 München, Germany (opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)

a g a i n s t

Leoncio Gimenez Anton, C/ Alfafara 12, 03202 Elche, Spain (applicant), represented by Abril Abogados, C/Amador de los Ríos 1-1°, 28010 Madrid, Spain (professional representative).

On 18/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 616 392 is upheld for all the contested goods.

2.        European Union trade mark application No 14 507 024 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 of European Union trade mark application No 14 507 024 for the word mark ‘DESIRÉE SHOES TOTAL FLEX’. The opposition is based on German trade mark registration No 813 046 for the word mark ‘Desirée’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of earlier German trade mark registration No 813 046, on which the opposition is based. The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 31/08/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 31/08/2010 to 30/08/2015 inclusive.

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

Class 18: Umbrellas, sticks, leather goods.

Class 23: Yarns.

Class 24: Table- and bed-linen.

Class 25: Headgear, finery, footwear, hosiery, knitted and knitted pieces of clothing, clothing, underwear, corsets, ties, suspenders; gloves, fur products.

Class 26: Ribbons, border products, buttons, lace, embroidery.

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

On 27/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 02/09/2016 to submit evidence of use of the earlier trade mark. Following a request from the opponent, this period was extended until 02/11/2016. On the same day and thus within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Invoices: 22 copies of invoices covering 2012-2015 and addressed to various cities in Germany. The invoices are dated between 21/11/2012 and 24/02/2015. The sales transactions in the invoices were mainly for single items of underwear and sleepwear for women. The sales figures in relation to the items sold under the mark ‘Desirée’ in the invoices range between EUR 200 and EUR 400.

Turnover: figures covering 2010-2015 for hosiery, women’s underwear, sleepwear, beachwear and corsetry under the mark ‘Desirée’ in Germany, supported by extracts from an internal database of the opponent showing the figures for 2011, 2013 and January-August 2015. The totals are listed in euros as follows:

Year	Hosiery	Underwear women	Sleepwear	Beachwear	Corsetry
2010	5 219 000	63 000	942 000	2 274 000	5 207 000
2011	5 336 000	23 000	740 000	1 677 000	4 796 000
2012	5 188 000	10 000	105 000	1 318 000	4 235 000
2013	4 550 000	7 000	55 000	1 362 000	4 071 000
2014	5 041 000	6 000	101 000	1 452 000	3 559 000
01/08/2015	3 101 000	4 000	118 000	809 000	2 044 000

Affidavits: signed affidavits, dated 26/10/2016, by Mrs Jutta Demond and Mrs Sabine Stippick-Reis in their capacities of purchaser and category manager, respectively, of the opponent’s company, declaring that ‘Desirée’ has been used in Germany for underwear, sleepwear, beachwear, corsetry and hosiery, and listing sales figures for these articles between 2010 and 2015.

Advertisements: copies of several flyers and brochures covering 2010-2015 showing lingerie, swimwear and hosiery for women. They feature the word ‘Desirée’ as follows:

Packaging: some pictures of the packaging of hosiery products showing the following sign:

.

Inventory: a list of the stock of hosiery products under the mark ‘Desirée’ of the opponent’s department store in Leipzig, Germany, dated 12/08/2015, showing the total number of items, namely 79 000.

Place and time of use

The invoices described above show that the place of use is in Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros) and the cities in Germany to which the invoices are addressed. Therefore, the evidence relates to the relevant territory. All the evidence is dated within the relevant period.

The applicant argues that the advertising material submitted, such as the flyers and brochures, is undated. However, based on the opponent’s explanations, the Opposition Division can infer from the indications ‘1010’, ‘1110’ and ‘1111’ that these are a sequence and that the flyers are from October 2010, November 2010 and November 2011. The rest of the material shows clear indications, such as ‘Summertime ! 2012’, ‘Winter 2013’ and ‘Spring 2014’.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place and time of use.

Extent of use

Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that the commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, in particular the turnover figures, supported by the invoices, brochures, signed affidavits and other materials such as the inventory figures, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope and the duration and frequency of use.

The evidence submitted by the opponent to prove genuine use of the earlier trade mark relates to sales to clients situated in different locations throughout Germany. The turnover figures in relation to these goods range from several thousand euros to over EUR 5 million, depending on the type of the article. The turnover figures are supported by the affidavits and some of the invoices, which show actual sales.

The documents demonstrate sales totalling a substantial amount and provide sufficient information concerning the commercial volume of use.

It is clear from the evidence that the opponent distributed goods bearing the earlier mark in the relevant market. This gives the Opposition Division sufficient information regarding the opponent’s commercial activities in the relevant period. In any case, the documents prove that use of the mark has been more than mere token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use

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

The evidence of use filed by the opponent, as listed above, shows use of the sign ‘Desirée’ as a trade mark identifying the commercial origin of the goods sold by the opponent.

Therefore, the Opposition Division considers that the evidence shows use of the sign as a trade mark in the course of trade within the meaning of Article 15(1)(a) EUTMR.

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

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

It is appropriate to consider whether the mark as used differs from its registered form in a way that would affect its distinctive character or, in spite of some differences, the mark as used and its registered form are essentially the same.

The opponent’s earlier mark is the word mark ‘Desirée’. The evidence demonstrates use of the element ‘DESIRÉE’ in a standard typeface within a red or pink rectangle, as shown above.

The depiction of the word ‘DESIRÉE’ together with this banal shape, which is commonly used in commercial designations in the course of trade, constitutes an acceptable means of bringing the mark in question to the public’s attention and, consequently, does not materially affect the distinctiveness of the word mark ‘Desirée’.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1)(a) EUTMR in relation to hosiery, underwear and corsets.

Overall assessment

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

Taking into account the evidence in its entirety, it does reach the level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory in relation to hosiery, underwear and corsets.

However, no evidence was submitted in respect of any of the goods in Classes 18, 23, 24 or 26 or the remaining goods in Class 25, namely headgear, finery, footwear, knitted and knitted pieces of clothing, clothing, ties, suspenders; gloves, fur products. None of the items of evidence submitted mentions these goods or refers to them.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, as also observed by the applicant, the evidence proves use only for the coherent subcategories hosiery, underwear and corsets, but does not prove use for the broad category of clothing, on which the opposition is also based.

Consequently, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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.

1. The goods and services

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

Class 25: Hosiery, underwear, corsets.

The contested goods are the following:

Class 25: Footwear.

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 opponent’s hosiery is also referred to as legwear, namely garments worn directly on the feet and legs. The same goes for the contested footwear, which similarly refers to garments worn on the feet. Both goods have the purpose of covering the feet for protection against the elements, of easing locomotion, of preventing injuries and of being aesthetically complementary fashion articles. Consumers, when seeking to purchase footwear, can expect to find hosiery in the same department or shop and vice versa. Moreover, many manufacturers and designers of footwear will design and produce both items. Therefore, contrary to the applicant’s arguments, these goods are similar to each other.

The applicant 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 applicant are not relevant to the present proceedings because, in those cases, footwear was compared with underwear and not to hosiery on which the current opposition is also based.

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 varying degrees are directed at the public at large. The degree of attention is considered average.

3. The signs

Desirée	DESIRÉE SHOES FLEX TOTAL
Earlier trade mark	Contested sign

The relevant territory is 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).

Both signs are word marks.

The earlier mark, ‘Desirée’, and the first element of the contested sign, ‘DESIRÉE’, will immediately be identified by the relevant consumers as referring to a female given name of Latin origin. The other elements of the contested sign are descriptive of the nature of the goods. The element ‘SHOES’ is a basic English word that will be understood by the German consumer (as the applicant also correctly observes) as a description of the goods’ characteristics, and the words ‘FLEX TOTAL’ refer to the fact that the relevant goods are entirely (total in German) flexible (flexibel in German). Consequently, the element ‘DESIRÉE’ of the contested sign is the most distinctive element.

Visually, the signs coincide in the word ‘DESIRÉE’, which constitutes the earlier mark in its entirety and is reproduced at the beginning of the contested sign. However, the signs differ in the other elements of the contested sign, ‘SHOES FLEX TOTAL’. When marks are registered as word marks, their written form is immaterial. Therefore, the signs’ coinciding element is identical.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Moreover, the other elements of the contested sign are descriptive and therefore non-distinctive.

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

Aurally, the pronunciation of the marks coincides in the sound of the syllables ‘DE-SI-RÉE’, constituting the entire earlier mark and present as the first and most distinctive word of the contested sign. The pronunciation differs in the sound of the non-distinctive elements ‘SHOES FLEX TOTAL’ of the contested sign.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the additional elements of the contested sign have no impact, because they are non-distinctive for the relevant goods, as explained above, the marks are conceptually identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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

The goods are similar and the signs are visually and aurally similar to an average degree and conceptually identical. Taking into account all the above, and especially the fact that the signs have the word ‘DESIRÉE’ in common, it is considered that the additional elements ‘SHOES TOTAL FLEX’ of the contested sign, which have a mere qualifying role, cannot counteract the strong similarity between the signs and thus safely exclude a likelihood of confusion.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods and services covered are from the same or economically linked undertakings.

In addition, in the present case, it is highly conceivable that the relevant consumer will perceive the mark applied for as a sub-brand of the earlier mark configured in a different way according to the type of goods which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

Considering all the above, and based on the average degree of inherent distinctiveness of the earlier mark, the Opposition Division finds that there is a likelihood of confusion between the marks and therefore the opposition is well-founded on the basis of the opponent’s German trade mark registration No 813 046.

It follows that the contested trade mark must be rejected for all the contested 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 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

Ferenc GAZDA

Cynthia DEN DEKKER

Ioana MOISESCU

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.