OPPOSITION No B 2 287 608

A. Kohli and M. Kohli, c/o La Vision Ltd, 8 Cheerwood Road, Cheetham Hill, Manchester, M8 8AQ United Kingdom (opponent), represented by Wilson Gunn, 5th Floor Blackfriars House, The Parsonage, Manchester, M3 2JA United Kingdom (professional representative)

a g a i n s t

Mainpol GmbH, Daimlerstrasse 10, 73095 Albershausen, Germany (applicant), represented by Pfiz/Gauss Patentanwälte PartmbB, Tübinger Str. 26, 70178 Stuttgart, Germany (professional representative).

On 26/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 287 608 is partially upheld, namely for the following contested goods:

Class 18:        Goods made of these materials (leather and imitations of leather) and included in Class 18.

Class 25:        Clothing, in particular clothing for sports, clothing of leather; footwear, headgear.

2.        European Union trade mark application No 12 013 173 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 12 013 173, namely against all goods in Classes 18 and 25. The opposition is based on United Kingdom trade mark registration No 2 275 647 for which the opponent invoked Article 8(1)(b) EUTMR, and the United Kingdom non-registered trade mark ‘FREAKY’ (word mark) for which the opponent invoked Article 8(4) 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 states that the opposition should be rejected because the opponent did not prove that the United Kingdom trade mark registration No 2 275 647 on which it relied was in use.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade mark had been put to genuine use.

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

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

Class 25:         Clothing for men, ladies, children and babies including tops, skirts, blouses, shirts, sweatshirts, knitted articles of outer clothing; coats, jackets, waistcoats, blazers, suits, trousers, slacks, anoraks, parkas, windcheaters, articles of showerproof or rainproof clothing; boots, shoes, slippers and stockings; jeans, shorts, socks; articles of underclothing including briefs, vests, boxer shorts, brassieres; all included in Class 25.

The contested goods are the following:

Class 18:        Leather and imitations of leather, and goods made of these materials and included in Class 18; animal skins, hides; trunks and travelling bags.

Class 25:        Clothing, in particular clothing for sports, clothing of leather; footwear, headgear.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘including’ and ‘in particular’, used in both lists of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 18

The contested goods made of these materials (leather and imitations of leather) in Class 18 include goods such as bags, handbags, sports bags, briefcases, wallets, purses, key cases, etc. The opponent’s clothing, boots, shoes and slippers in Class 25 are used to cover parts of the human body and protect them against weather conditions. They are also articles of fashion. The contested goods are related to articles of clothing, boots, shoes and slippers in Class 25. This is because consumers are likely to consider the goods in Class 18 as accessories that complement articles of outer clothing and even boots, shoes and slippers as the former are closely co-ordinated with the latter. However, in the absence of an express limitation by the applicant in order to clarify its goods, it cannot be assumed that they coincide in other criteria. Therefore, these goods are considered similar to a low degree.

The contested leather and imitations of leather; animal skins and hides in Class 18 refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for boots or shoes) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s clothing, boots, shoes and slippers. Therefore, these goods are dissimilar.

The contested trunks are large packing cases or boxes that clasp shut, used as luggage or for storage. The nature of these goods is very different from that of clothing, boots, shoes and slippers in Class 25. They serve very different purposes (luggage or storage, versus covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.

The same reasoning applies to travelling bags. These goods are considered dissimilar to the opponent’s clothing, boots, shoes and slippers. Travelling bags are for carrying things when travelling and do not satisfy the same needs as clothing, boots, shoes and slippers. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods are neither in competition nor complementary.

Contested goods in Class 25

Considering what has been stated above regarding the terms ‘in particular’ and including’, clothing is identically contained in both lists of goods.

The contested footwear includes, as a broader category the opponent’s boots, shoes, slippers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested headgear and the opponent’s clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in, are often either the same or at least closely connected. Taking all these factors into account, the contested headgear and the opponent’s clothing are considered similar.

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 found to be identical or similar (to various degrees) are everyday consumer items directed at the public at large. The degree of attention is considered to be average.

3. The signs

FREAKY	FREAKY NATION EDGE
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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

Both signs are word marks. It has to be noted that, in the case of word marks, the word as such are protected regardless the way they are depicted.

The earlier mark consists of the word ‘FREAKY’. This element will be understood as ‘unusual, strange, unconventional or bizarre’ (Collins Dictionary) by the relevant public.

The applicant argues that this element is descriptive and non-distinctive for the goods in question as it describes the goods as ‘styled for a subculture such as hippies or punks or other groups that commonly use expressive terms like ‘freaky’ to describe a variety of goods and events’.

The Opposition Division considers that, in relation to clothing and other items of fashion it would be perceived, at most, as allusive to an unconventional style of clothing whilst non-specific. However, the mere fact that it alludes to a non-specific style of the goods might not materially affect its distinctiveness. Therefore, this element is distinctive.

As regards the contested sign, it is composed of the verbal elements ‘FREAKY NATION EDGE’. As regards the word ‘FREAKY’, the same applies as stated above for the earlier mark. The remaining elements ‘NATION’ and ‘EDGE’ are also English words. The public will understand the word ‘NATION’ as a reference to a country, including its territory, people and political structures. The word ‘EDGE’ will be understood as the outside limit of an object, area, or surface. Moreover, the combination ‘FREAKY NATION’ would be perceived as meaning ‘strange country’. These elements individually and as a whole are distinctive in relation to the goods in question.

Visually, the signs coincide in the word ‘FREAKY’, which is the only element of the earlier mark and is identically reproduced at the beginning of the contested sign. The signs differ in the words ‘NATION’ and ‘EDGE’ of the contested sign which have no counterparts in the earlier mark. The difference in length that these extra words create constitutes a further visual difference. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛FREA-KY’, present identically in both signs. The pronunciation differs in the syllables ‘NA-TION-EDGE’ of the contested sign, which have no counterparts in the earlier mark. The intonation and rhythm constitute a further point of aural difference. Therefore, the signs are, at least, similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the contested sign as a whole does not have any meaning for the public in the relevant territory, the element ‘FREAKY’, included in both signs, will be associated with the meaning explained above. To that extent, they signs will be conceptually similar from average to a low degree depending on whether or not the elements ‘FREAKY NATION’ would be perceived as a meaningful expression all by itself.

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 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

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). 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/services covered are from the same or economically linked undertakings.

In the present case, some of the goods at issue are identical and some are similar (to various degrees). The remaining contested goods are dissimilar to the goods covered by the earlier mark. They target the public at large, which has an average degree of attention.

The similarity between the signs, taking into account all the relevant factors, results from the different degrees of visual, aural and conceptual coincidences in the verbal elements of which the signs in conflict consist of.

Account is taken of the fact that, generally in clothes shops customers, can themselves either choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the fact that the contested sign fully includes the earlier mark at its beginning is particularly relevant when assessing the likelihood of confusion between them, taking into account that the relevant public reads from left to right.

Moreover, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, the differences that the additional elements of the contested sign create, will not overshadow the visual, aural and conceptual coincidences between the earlier mark and the contested sign, specially taking into account that the earlier mark is fully contained in the contested sign.

Indeed, it is highly conceivable that the relevant consumer will perceive the additional elements of the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, as some of the goods in question are identical or similar (to various degrees), a likelihood of confusion exists.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s United Kingdom trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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

The opponent also invoked Article 8(4) EUTMR in relation to its earlier non-registered trade mark ‘FREAKY’ (word mark) in the United Kingdom.

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

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

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

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

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

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

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

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

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

After an agreed extension of the ‘cooling-off’ period, on 24/02/2014 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 19/02/2016.

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

The proof of use submitted after the expiry of the substantiation period following an applicant’s non-admissible request of proof of use is not valid for the purposes of Article 8(4) EUTMR.

The mere fact that the sign is registered in accordance with the requirements of the respective national law is not in itself sufficient for the application of Article 8(4) EUTMR. As mentioned above, the use requirement in Article 8(4) EUTMR applies independently of whether national law allows prohibition of a subsequent trade mark on the basis of the registration of a business identifier alone, that is, without any requirement relating to use.

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

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Sigrid DICKMANNS

Octavio MONGE GONZALVO

Claudia MARTINI

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.