OPPOSITION No B 2 566 423

Kunert Fashion GmbH, Julius-Kunert-Straße 49, 87509 Immenstadt, Germany (opponent), represented by Rüger, Barthelt & Abel, Webergasse 3, 73728 Esslingen, Germany (professional representative)

a g a i n s t

Oleksandr Leonovych Lehovitskyi, vul. Iskrynska, 33, kv. 4, Kharkiv  61050, Ucraine, Andriy Myhaylovych Danylov, vul. Druzhby Narodiv, 236-A, kv. 38, Kharkiv  61000, Ucraine, Oleg Mykolayovych Rozumovskyi, vul. Sergiivska, 3-B, kv. 16, Kharkiv  61000, Ucraine, Oleg Volodymyrovych Bundalet, pr. Traktorobudivnykiv, 142, kv. 21, Kharkiv  61121, Ucraine, Mykyta Viktorovych Bilozertsev, village Kivsharivka, 12, kv. 24, Kupyanskyi region, Kharkivska obl.  63734, Ucraine, Sergiy Yuriyovych Biletskyi, vul. Kalinina, 3, kv. 122, Svitlovodsk, Kirovogradska obl. 27500, Ucraine (applicants), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 566 423 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 921 234. The opposition is based on, inter alia, European Union trade mark registration No 8 511 537. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF INTERNATIONAL REGISTRATIONS NO 153 866, 304 889, 787 493 AND GERMAN TRADE MARK REGISTRATIONS NO 302 050 353, 605 334

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 is 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 particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

On 02/09/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 07/01/2016.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opponent did not submit any evidence concerning the substantiation of the earlier international Registration No 304 889 “Hudson” (word mark) designating Bulgaria, Hungary and Slovenia.

Regarding international registrations No 153 866 “Hudson” (word mark) designating Austria, Benelux, Czech Republic, Germany, Spain, France, Hungary, Italy, Portugal, Romania, Slovakia and No 787 493  designating Austria, Bulgaria, Benelux, Czech Republic, Denmark, Spain, Finland, France, Greece, Croatia, Hungary, Ireland, Italy, Lithuania, Latvia, Poland, Portugal, Romania, Sweden, Slovenia and German trade mark registrations No 302 050 353  and No 605 334 “Hudson (word mark) the opponent filed printouts containing information about these marks. However, the issuing authority is not indicated on the documents. Therefore they cannot prove the existence, validity and scope of protection of these marks.

Consequently, the opposition has to be rejected as unfounded as far as it is based on international registrations No 304 889, No 153 866 and No 787 493 and German trade mark registrations No 302 050 353 and No 605 33.

The examination of the opposition will proceed based on the remaining earlier rights, namely European Union trade mark registration No 8 511 537, European Union trade mark registration No 345 975, European Union trademark application No 12 993 218 and European Union trademark application No 12 993 309.

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 European Union trade mark registration No 8 511 537.

In the present case the contested trade mark was published on 26/05/2015. .

The earlier European Union trade mark No 8 511 537 was registered on 28/02/2014.

Therefore, the request for proof of use is inadmissible in respect of European Union trade mark registration No 8 511 537.

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 trade mark registration No 8 511 537

1. The goods and services

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

Class 25         Clothing, in particular outerwear, legwear and hosiery; footwear; headgear.

The contested goods and services are the following:

Class 25         Bandanas [neckerchiefs]; berets; hats; hat frames [skeletons]; caps [headwear]; visors [headwear]; cap peaks; miters [hats]; mittens; ear muffs [clothing]; headbands [clothing]; headgear for wear; gloves [clothing]; ski gloves; knitwear [clothing]; skull caps; turbans; scarfs; fur stoles; top hats; shawls; sashes for wear. 

 

Class 35         Administrative processing of purchase orders; auctioneering; marketing studies; invoicing; payroll preparation; demonstration of goods; import-export agencies; computerized file management; marketing; marketing research; provision of an on-line marketplace for buyers and sellers of goods and services; rental of advertising time on communication media; writing of publicity texts; updating of advertising material; updating and maintenance of data in computer databases; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; rental of advertising space; shop window dressing; layout services for advertising purposes; procurement services for others [purchasing goods and services for other businesses]; modelling for advertising or sales promotion; sponsorship search; search engine optimisation; presentation of goods on communication media, for retail purposes; rental of billboards [advertising boards]; publicity material rental; rental of sales stands; direct mail advertising; publication of publicity texts; radio advertising; advertising; pay per click advertising; bill-posting; outdoor advertising; advertising by mail order; on-line advertising on a computer network; wholesale and retail services relating to bandanas [neckerchiefs], berets, hats, hat frames [skeletons], caps [headwear], visors [headwear], cap peaks, miters [hats], mittens, ear muffs [clothing], headbands [clothing], headgear for wear, gloves [clothing], ski gloves, knitwear [clothing], skull caps, turbans, scarfs, fur stoles, top hats, shawls, sashes for wear; distribution of samples; dissemination of advertising matter; design of advertising materials; sales promotion for others; production of advertising films; transcription of communications [office functions]; television advertising; telemarketing services; all the above-mentioned services connected with putting into civil circulation of bandanas [neckerchiefs], berets, hats, hat frames [skeletons], caps [headwear], visors [headwear], cap peaks, miters [hats], mittens, ear muffs [clothing], headbands [clothing], headgear for wear, gloves [clothing], ski gloves, knitwear [clothing], skull caps, turbans, scarfs, fur stoles, top hats, shawls, sashes for wear.  

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

The term ‘in particular’ used in the opponent’s list of goods indicates 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).

Some of the contested goods and services are identical to goods on which the opposition is based. Some of the contested services are lowly similar to goods on which the opposition is based. Because goods and services are principally different by nature, no identity or similarity to an average or even high degree can exist between the contested services in Class 35 and the goods of the earlier mark in Class 25. They can at most be similar to a low degree.

For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods were identical and all the contested services were at most similar to a low degree to those of the earlier mark, which is the best case scenario under which the opponent´s case can be considered here.

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 a low degree are directed at the public at large as well as at professional customers. They may vary in price and complexity. Therefore, the degree of attention will vary from average to high.

3. The signs

HUDSON	HATTSON
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

Part of the public will not associate the signs with any meaning. For English speakers however, both signs can be understood as English surnames, albeit different ones. Part of the public might also associate the earlier mark with the “Hudson” river, a river that flows through New York in the United States. In any case the signs have no meaning in relation to the goods and services in question and are, therefore, distinctive.  

Visually, the signs coincide in their first letter “H” and their last three letters “SON”.

They differ in their middle part, namely the letters “UD” in case of the earlier mark versus the letters “ATT” in case of the contested sign. The string of letters “UD” is visually clearly distinct from the string of letters “ATT”.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SON, present identically in both signs. For part of the public, e.g. English-speakers, the respective first syllables `HUD` and `HATT` may be pronounced very similar. For another part of the public, e.g. German-speakers, the pronunciation of the respective first syllable will differ more clearly, as the letters ’U’ and ’A’ are pronounced quite differently.

Therefore, the signs are aurally at most similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The mere fact that for part of the public the two words “Hudson” and “Hattson” can be grouped under the common generic term of ‘surnames’  does not constitute conceptual similarity. This is because the public is not likely to make a conceptual link between the two words, as they are clearly different surnames. Therefore, for the part of the public that will associate them with different surnames, the signs are conceptually dissimilar. The same holds true for the part of the public that will associate the earlier mark with the “Hudson” river and the contested sign with a surname.

For the part of the public for which the signs are meaningless a conceptual comparison is not possible and, therefore, does not influence the comparison of the signs.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

The signs have been found to be visually at most similar to an average degree and aurally at most similar to a high degree. For a part of the public they are conceptually dissimilar, for another part of the public the conceptual aspect does not have an impact. The contested goods have been found to be identical and the contested services to be at most lowly similar to the goods of the earlier mark. The distinctiveness of the earlier mark is normal and the attention of the relevant consumer will vary between average and high.

Regarding the contested goods in Class 25 it has to be noted 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).

The Opposition Division considers that in the present case the visual differences between the signs as set out above under section c) of this decision outweigh their similarities, enabling the public to safely distinguish them, even for the part of the public that might perceive a high aural similarity between the signs. In that respect it also has to be noted that e.g. English-speakers, who may perceive the sings as aurally highly similar, however will associate them with different concepts, as set out above. Therefore, no likelihood of confusion exists regarding the goods in Class 25.

Regarding the contested services in Class 35 the Opposition Division considers that, taking into account the nature of these services, they are not likely to be ordered exclusively on an oral basis, but will typically also allow the relevant public to perceive the signs visually before taking a purchasing decision, thus enabling the public to perceive their visual differences which in the present case sufficiently separate them from each other. Taking further into account that the services are at most lowly similar to the goods in question, no likelihood of confusion exists in respect of the services in Class 35.

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

• European Union trade mark registration No 345 975 “Hudson” (word mark), registered for

Class 25         Articles of clothing.

• European Union trademark application No 12 993 218 “Hudson” (word mark), applied for

Class 18         Leather cloth; Leather and imitation leather; Leather, unworked or semi-worked; Leather thread; Imitation leather; Straps (Leather -); Leather thongs; Laces (Leather -); Straps for soldiers' equipment; Straps (Leather -); Studs of leather. 

Class 25         Clothing; Footless tights; Stockings; Stockings (Sweat-absorbent -); Hosiery; Socks and stockings; Tights; Outerclothing; Footwear; Headgear; Garters; Stockings (Sweat-absorbent -); Suspender belts for women.

• European Union trademark application No 12 993 309 , applied for

Class 18         Leather cloth; Leather and imitation leather; Leather, unworked or semi-worked; Leather thread; Imitation leather; Straps (Leather -); Leather thongs; Laces (Leather -); Straps for soldiers' equipment; Straps (Leather -); Studs of leather. 

Class 25         Clothing; Footless tights; Stockings; Stockings (Sweat-absorbent -); Hosiery; Socks and stockings; Tights; Outerclothing; Footwear; Headgear; Garters; Stockings (Sweat-absorbent -); Suspender belts for women.

Since these marks are either identical or less similar and cover the same or less similar goods than the mark already compared, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

Therefore, the opposition has to be rejected.

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

Lars HELBERT

Tobias KLEE

Martin EBERL

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.