JIM THOMPSON | Decision 2467440 – Jeans Fritz Handelsgesellschaft für Mode mbh v. The Thai Silk Company Limited

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OPPOSITION No B 2 467 440

Jeans Fritz Handelsgesellschaft Für Mode MbH, Tengerner Str. 143, 32609 Hüllhorst, Germany (opponent), represented by Skw Schwarz Rechtsanwälte, Mörfelder Landstr. 117, 60598 Frankfurt am Main, Germany (professional representative)

a g a i n s t

The Thai Silk Company Limited, 9 Surawong Road, Suriyawong Sub-District Bangrak, Bangkok 10500  GPO Box906, Thailand (applicant), represented by Petersona Patents, 2 Ausekla Street, Suite 2, Riga, 1010, Latvia (professional representative).

On 29/11/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 467 440 is partially upheld, namely for the following contested services:

Class 35:         The bringing together, for the benefit of others, of a variety of clothing, shoes, bags, scarves, and neck ties and home furnishings and home decorative items enabling customers to conveniently view and purchase those goods in a department store, retail store, trade showroom, or from a general merchandise Internet website.

2.        European Union trade mark application No 13 312 822 is rejected for all the above services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 312 822, ‘JIM THOMPSON’. The opposition is based on German trade mark registration No 754 224, ‘Tom Tompson’, European Union trade mark registration No 13 010 178 Image representing the Mark and international trade mark registration No 616 110 ‘Tom Tompson’ designating Austria and France. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

International trade mark registration No 616 110 ‘Tom Tompson’ designating Austria and France

According to Article 76(1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(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 submitted 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 (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit 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 (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence 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 that is not a European Union trade mark, the opposing party must submit 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 (in the version in force at the time of commencement of the adversarial part).

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.

On 12/02/2015 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 17/06/2015.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), 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 opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

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 13 010 178.

  1. The goods and services

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

Class 18:         Alpenstocks; Hiking poles; Rattan canes; Walking stick handles; Leather and imitation leather; Hides; Trunks and travelling bags; Umbrellas; Parasols and walking sticks; Whips; Harness and saddlery; Wallets; Casual bags; Rucksacks; Fanny packs; Briefcases; Satchels; school bags for sport; Beach bags; Card holders; All-purpose carrying bags; Holdalls; Messenger bags; Overnight bags; Baggage; Shoulder bags; Sling bags; Tote bags; Hand bags; Multi-purpose purses; Clutch bags; Shoulder-bags.

Class 25:         Clothing; Footwear; Headgear; Waist belts; high-top shoes; Sandals; Sports shoes; Bath sandals; Skateboard shoes; footwear for surfing; Deck shoes; Clothing for men, women and children, namely shirts; Tee-shirts, Tank tops, Pullovers, Sweat shirts, Hoodies, Fleece tops, Fleece pullovers, Fleece bottoms, Jackets [clothing], Pants (Am.), Pants (Am.), Denims [clothing], Leggings, Shorts, Board shorts, Skirts, Gowns, Articles of swimwear, Socks; Knitted caps; Boxer shorts; Mukluks; Slippers; Scarves; Gloves; Mittens; Nightwear.

Class 35:         Advertising; Business management; Business administration; Office functions; Online retailing and retailing in shops in relation to precious metals and their alloys; Jewellery; Jewellery; Precious stones; Horological and chronometric instruments; Rings; Bracelets; chains; Trailers; necklaces; tie pins; Cufflinks; Earrings; Decorative key rings; pins (ornamental-); Clocks; Watchstraps; Chronometers; Chronographs; Chronometric instruments for sporting events; Timing installations; Devices and boards for displaying time; Watch bands; Dials; Boxes; etuis; Gift boxes for watches and jewellery; Leather and imitations of leather; Animal skins; Skin dressing; Trunks and travelling bags; Of umbrellas; Parasols and walking sticks; Whips; Harness and saddlery; Wallets; Bags; Backpacks; Bumbags; Document files; Satchels; Key rings; card holders; Waist bags; Footwear; slippery; Tank tops; sweatshirts; hoodies; Dresses; swim wear; Denim clothing; Trousers; Sweatshirts; Headgear; Belts; Socks; beanies; boxer shorts; Mukluks; Slippers; Scarves; Gloves; Mittens.

The contested goods and services are the following:

Class 11:        Indoor and outdoor lighting apparatus, namely lamps and light bulbs, chandeliers, lanterns, lamp casings, hanging lamp support and pedestals, lamp glasses.

Class 27:         Wallpaper, carpets, rugs, mats.

Class 35:         The bringing together, for the benefit of others, of a variety of clothing, shoes, bags, scarves, and neck ties and home furnishings and home decorative items enabling customers to conveniently view and purchase those goods in a department store, retail store, trade showroom, or from a general merchandise Internet website.

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 ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 11

The contested indoor and outdoor lighting apparatus, namely lamps and light bulbs, chandeliers, lanterns, lamp casings, hanging lamp support and pedestals, lamp glasses are all lighting apparatus and their peripherals. The opponent’s goods are bags of all types, leather and imitations thereof, clothing, footwear and headgear items and the services include advertising, business management, business administration and retail services of goods such as clothing, bags or watches. These contested goods have a different nature, purpose, methods of use compared to all the goods and services of the opponent. They do not coincide in manufacturers or providers with the opponent’s goods and services. The contested goods are dissimilar to all the goods and services of the opponent.

Contested goods in Class 27

The contested wallpaper, carpets, rugs, mats are wall and floor covering items. The opponent’s goods are bags of all types, leather and imitations thereof, clothing, footwear and headgear items and the services include advertising, business management, business administration and retail services of goods such as clothing, bags, watches, etc. These contested goods have a different nature, purpose, methods of use compared to the goods and services of the opponent. They do not coincide in manufacturers or providers with the opponent’s goods and services. The contested goods are dissimilar to all the goods and services of the opponent.

Contested services in Class 35

The contested the bringing together, for the benefit of others, of a variety of clothing, shoes, bags, scarves, and neck ties and home furnishings and home decorative items enabling customers to conveniently view and purchase those goods in a department store, retail store, trade showroom, or from a general merchandise Internet website are retail services and are considered similar to the opponent’s online retailing and retailing in shops in relation to precious metals and their alloys; jewellery; jewellery; precious stones; horological and chronometric instruments; rings; bracelets; chains; trailers; necklaces; tie pins; cufflinks; earrings; decorative key rings; pins (ornamental-); clocks; watchstraps; chronometers; chronographs; chronometric instruments for sporting events; timing installations; devices and boards for displaying time; watch bands; dials; boxes; etuis; gift boxes for watches and jewellery; leather and imitations of leather; animal skins; skin dressing; trunks and travelling bags; of umbrellas; parasols and walking sticks; whips; harness and saddlery; wallets; bags; backpacks; bumbags; document files; satchels; key rings; card holders; waist bags; footwear; slippery; tank tops; sweatshirts; hoodies; dresses; swim wear; denim clothing; trousers; sweatshirts; headgear; belts; socks; beanies; boxer shorts; mukluks; slippers; scarves; gloves; mittens.

The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

  1. 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 services found to be similar are directed at the public at large. The degree of attention is considered to be average due to the nature of the services at issue.

  1. The signs

Image representing the Mark

JIM THOMPSON

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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the Finnish-speaking part of the public, for which the verbal element ‘T(H)OMPSON’ is not a common surname.

The element ‘DENIM’ of the earlier mark is a very basic and commonly used English word, which will be understood as referring to cotton twill fabric used for jeans and other clothing and/or the clothing made of such fabric. Bearing in mind that the relevant services are ‘retail services of various types of goods, this element is weak for part of these services, namely for online retailing and retailing in shops in relation to; bags; backpacks; bumbags; document files; satchels; card holders; waist bags; footwear; slippery; tank tops; sweatshirts; hoodies; dresses; swim wear; denim clothing; trousers; sweatshirts; headgear; belts; beanies; boxer shorts; mukluks; slippers; scarves; gloves; mittens.

The elements ‘TOM TOMPSON’ of the earlier sign will be perceived as person’s name and surname (of a foreign, English, origin), so their meaning is not associated with the services at issue and they can therefore be considered to be distinctive. The earlier mark has no element that could be considered clearly more dominant than other elements.

In the contested mark, the elements ‘JIM THOMPSON’ is perceived as a combination of a person’s first and surname (of a foreign, English, origin) again, without any relation to the services at issue, and consequently there are in principle no elements which are more distinctive than others.

However, in that connection, it is noted that family names have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who have nothing in common, whereas the presence of the same surname could imply the existence of some link between them (01/03/2005, T-185/03, Enzo Fusco, EU:T:2005:73, § 52). However, the perception of signs made up of personal names may vary from country to country within the European Union (13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 67, 24/06/2010, C-51/09 P, Barbara Becker, EU:C:2010:368, § 36).

Account has to be taken in particular, of the fact that the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on that distinctive character (16/05/2013, C-379/12 P, H.Eich, EU:C:2013:317, § 44).

In the present case the surnames TOMPSON/THOMPSON are uncommon and therefore more distinctive in the relevant territory.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the third letter ‘M’ of their first word and in the letter sequence ‘T_OMPSON’ of their second word. However, they differ in the first letters ‘TO’/’JI’ of their first word and in the additional letter ‘H’ of the second word (in the contested sign), as well as in the element ‘DENIM’ (found weak for some of the services) and the stylisation of the earlier mark.

Therefore, the signs are visually 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 produced when pronouncing the letters ‘_ _M’ and ‘TOMP-SON’ (the letter ‘H’ in the contested sign being silent). The pronunciation differs in the sound of the letters ‘TO’ of the earlier mark versus ‘JI’ of the contested sign, and in the element ‘DENIM’ of the earlier mark (the distinctiveness of which has been discussed above).

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

Conceptually, the signs are conceptually similar to an average degree to the extent that they coincide in the surname  ‘T(h)ompson’ but differ in the weak element ‘DENIM’ as well as in the first names ‘JIM’ and ‘TOM’ .

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

  1. 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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, despite the presence of a less distinctive element in the mark, as stated above in section c) of this decision.

  1. Global assessment, other arguments and conclusion

The goods and services are partly similar and partly dissimilar.

The marks have visual and aural similarities in respect of the third letters M  and the letter sequence ‘T_OMPSON’, present in the marks. Notwithstanding the visual differences in the presentation of these elements in the earlier mark, it is considered that the element ‘T(h)ompson’ of the marks could be pronounced in a similar way by some Finnish speakers. The element ‘DENIM’ of the earlier sign will be omitted as this has been considered to have less distinctiveness for the relevant public. In the present case the confusingly similar uncommon foreign family names TOMPSON/THOMPSON have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names as already mentioned.

Account is taken of the fact that 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).

In the present case, the established similarities between the signs are sufficient to cause at least part of the public in the relevant territory to believe that part of the conflicting goods and services, which have been found similar, come from the same undertaking or from economically linked undertakings.

In its observations, the applicant argues that it owns one registration for the figurative mark ‘JIM THOMPSON’ in the European Union which coexists with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (judgment of 03/09/2009, C-498/07P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (judgment of 11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant also argues that its EUTM has reputation and filed some items of evidence to substantiate this claim.

The right to a EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

The applicant also 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Finnish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 010 178.

It follows from the above that the contested trade mark must be rejected for the services found to be similar 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.

The opponent has also based its opposition on the earlier German trade mark registration No 754 224 for the word ‘Tom Tompson’, covering the following goods:

Class 24         Table and bed linen, all goods from English-speaking countries.

Class 25         Clothing (including knitted and crocheted), underwear, corsets, corselettes, belts, bras, lingerie and suspenders, ties, braces, gloves, all goods from English-speaking countries.

This mark is similar to the one which has been compared. It covers goods such as table and bed linen and various types of clothing, which are all clearly different to those applied for in the contested trade mark, since they have different natures, purposes and methods of use. The goods have also different manufacturers, are neither complementary nor in competition. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods. In respect of this earlier mark, given that the opposition is not well founded under Article 8(1) EUTMR due to the dissimilarity of the goods, it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

José Antonio GARRIDO OTAOLA

Erkki Münter

Marine DARTEYRE

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.

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