OPPOSITION No B 2 589 433

Tennman Brands, LLC, c/o Maynard Cooper, 1901 Sixth Avenue North, Suite 2400, Birmingham, Alabama 35203, United States of America (opponent), represented by Bear & Wolf IP LLP, Third Floor, 57 Farringdon Road, London EC1M 3JB, United Kingdom (professional representative)

a g a i n s t

United Fashion Brands Ltd, 25/F Nina Tower, 8 Yeung Uk Road, Tseun Wan 00000, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Rospatt Osten Pross Intellectual Property Rechtsanwälte Partnerschaftsgesellschaft mbB, Kaiser-Friedrich-Ring 56, 40547 Düsseldorf, Germany (professional representative).

On 11/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 589 433 is partially upheld, namely for the following contested goods:

Class 18:         Bags, wallets and other carriers; shoulder belts; leather straps; leather laces; straps for soldiers’ equipment; straps made of imitation leather.

Class 25:         Clothing; millinery; footwear.

2.        European Union trade mark application No 14 420 913 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 all the goods of European Union trade mark application No 14 420 913. The opposition is based on European Union trade mark registration No 12 174 645. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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

Class 9: Musical sound recordings; audio-visual recordings, namely, compact discs, tape cassettes, audio cassettes, audio tapes, audio discs, phonograph records, CD-ROMs, video tapes, video cassettes, video discs, DVDs, digital audio tapes (DATs), downloadable MP3 files, and laser discs, all featuring sound tracks, television programs, webisodes and motion pictures featuring music, entertainment, the arts, fashion, lifestyles, popular culture, and technology; downloadable films and television programs featuring music, entertainment, the arts, fashion, lifestyles, popular culture, and technology, provided via a video-on-demand service; downloadable webisodes, motion pictures and television shows featuring music, entertainment, the arts, fashion, lifestyles, popular culture, and technology; motion picture films and films for television featuring music, entertainment, the arts, fashion, lifestyles, popular culture, and technology; musical sound recordings; downloadable musical sound recordings; downloadable video recordings featuring music; downloadable electronic publications in the nature of books, magazines, journals, brochures, leaflets, pamphlets and newsletters, all in the field of music, entertainment, the arts, fashion, lifestyles, popular culture, and technology; electronic publications, namely, books, booklets, magazines, journals, manuals, brochures, leaflets, pamphlets and newsletters, all in the field of music, entertainment, the arts, fashion, lifestyles, popular culture, and technology, recorded on CD-ROMs, diskettes, floppy disks, video cassettes, and magnetic tapes; decorative magnets; refrigerator magnets; novelty magnets; mouse pads; eyewear; eyeglasses and eyeglass frames; sunglasses and sunglass frames; eyeglass and sunglass cases; compact disc cases and covers; face plates for cell phones; cell phone covers; carrying cases for cell phones; jackets for video cassettes, tapes and discs; fitted cases for storage and transportation, namely, cases for compact discs, audio cassettes, video cassettes, CD-ROMs, home video games, computers, cameras, camcorders and portable phones; computer carrying cases; protective covers and cases for tablet computers; downloadable music, ring tones, graphics, and electronic games via the Internet and wireless devices; downloadable wireless entertainment via the internet and wireless devices, namely, ring tones, screen savers and images, and wallpaper; downloadable wireless game software; computer game cartridges, discs, cassettes, tapes, joysticks, programs and software; video game cartridges, video game discs, video game tape cassettes, video game software and video game programs; interactive multimedia computer game program; interactive video game programs; interactive audio game discs containing action games and role playing games; interactive video games of virtual reality comprised of computer hardware and software; virtual reality game software; multi-media software recorded on CD-ROM featuring music, entertainment, and games; computer software for use in the design, development and execution of wireless game and entertainment programs and applications.

Class 16: Posters; calendars; temporary tattoos; stickers; decals; bumper stickers; iron-on and plastic transfers; blank cards; gift and greeting cards; motivational cards; occasion and note cards; place, record, score and trading cards; postcards; scrapbooks; stationery; paper; note pads; paper note tablets; writing tablets; note books; folders; bookmarks; paper pennants; binders; writing paper; envelopes; address and appointment books; time planners; autograph books; guest books; ledger books; log books; desk pads; paper tags; passport cases, passport covers and passport holders; desk top and personal organizers; organizers for stationery use; stationery-type portfolios; paper flags; mounts for stamps; rubber stamps; stamp albums; stamp pad inks; stamp pads; paper clips; book markers of precious metal; money clips; sleeves for holding and protecting stamps; paper banners; holders for desk accessories; document holders; letter clips; letter openers, racks and trays; pen and pencil cups; pens; pencils; extensions and attachments for pencils; glue and glue sticks for stationery and household use; glue for the office; markers; marker caddies; pen and pencil sets; crayons; highlighting pens and markers; erasers; drafting and drawing rulers; pencil sharpeners; bookends; book covers and holders; checkbook covers; checkbook holders; coin and photograph albums; brag books; leather book covers; bulletin boards; photographic, picture or art mounts; photographic prints; collages; photographs; lithographs; illustrations; decorative paper centerpieces and pencil-top ornaments; picture books; globes; paperweights; coasters made of paper; paper clip and sign holders; printed paper signs; clip boards; paper party favors; paper emblems; printed emblems; printed awards; paper identification tags; printed holograms; paper name badges; paper illustration boards; paper display boxes; paper flower pot covers; paper cloths for polishing and cleaning; paper handkerchiefs; hat boxes of cardboard; hat boxes of paper; tour books; printed concert programs; event programs and albums; books, magazines, leaflets, journals, newsletters, booklets, pamphlets and brochures, all of the aforesaid featuring music, entertainment, television, film, the arts, fashion, lifestyles, culture and politics.

Class 25: Clothing, namely, shirts, long-sleeved shirts, T-shirts, under shirts, night shirts, rugby shirts, polo shirts, cardigans, jerseys, scrubs not for medical purposes, smocks, pants, jeans, cargo pants, stretch pants, denim jeans, shorts, boxer shorts, tops, stretch tops, crop tops, tank tops, tankinis, sweat shirts, hooded sweat shirts, sweat jackets, sweat shorts, sweat pants, warm-up suits, track suits, sweaters, vests, fleece vests, pullovers, jackets, reversible jackets, wind-resistant jackets, shell jackets, sports jackets, jean jackets, coats, turtlenecks, swimwear, beachwear, tennis wear, layettes, infantwear, infants sleepers, booties, caps, hats, visors, headbands, wrist bands, sweat bands, headwear, ear muffs, aprons, scarves, bandanas, belts, neckwear, underwear, socks, loungewear, robes, underclothes, pajamas, sleepwear, hosiery, gloves, mittens, rain slickers, rainwear, footwear, sneakers, shoes, sandals, flip-flops, and slippers.

Class 41: Entertainment in the nature of a live musical performer; entertainment in the nature of live performances by a musical artist, musical group or musical band; entertainment, namely, live music concerts; entertainment in the nature of visual and audio performances by a musical artist, musical group and musical band; live performances featuring pre-recorded vocal and instrumental performances viewed on a big screen; record production; music production; audio recording and production; videotape production; motion picture song production; production of video discs for others; recording studios; entertainment services, namely, production and distribution of musical audio and video programs; production and distribution of musical audio and video recordings for broadcast; music composition and transcription for others; song writing services; music publishing services; entertainment, namely, personal appearances by a musician or entertainer; entertainment, namely, personal appearances by a television star, movie star, comedian or radio personality; entertainment services namely live, televised and movie appearances by a professional entertainer; entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, and photographs; entertainment services, namely, providing pre-recorded music, information in the field of music, commentary and articles about music, all online via a global computer network; entertainment in the nature of live traveling tours by a professional entertainer featuring music; entertainment services, namely, presenting non-downloadable ringtones, pre-recorded music, video and graphics to mobile communications devices via a global computer network and wireless networks; production of television and radio programs; television show production; cable television show production; production of radio entertainment programs; motion picture film production; film editing; special effects animation services for film and video; entertainment in the nature of on-going television, cable television and radio programs featuring music, comedy, dramatic acts, spoken word, cartoons, animation and educational subject matters for children and young adults; television and cable television programs featuring music, drama, spoken word, comedy, cartoons, animation and educational subject matters for children and young adults; providing a variety show distributed over television, cable television, radio, satellite, audio and video media; entertainment, namely, a continuing variety, news, comedy, dramatic and musical show broadcast over television, satellite, audio and video media; theatre productions; educational and entertainment services, namely, providing motivational and educational speakers; distribution of television programs and radio programs for others; television program syndication; programming on a global computer network; distribution of television programming to cable television systems; cable television programming; television and radio programming; television scheduling; entertainment services, namely, providing an on-line computer game; providing an online computer game that may be accessed network-wide by network users; providing information online relating to computer games; entertainment services provided via computer, namely, providing online movie and music reviews; entertainment services, namely, providing on-going webisodes featuring music, entertainment, the arts, fashion, lifestyles, popular culture, and technology via a global computer network; fan clubs; providing a web site featuring fan club information.

The contested goods are the following:

Class 14: Gemstones, pearls and precious metals, and imitations thereof; Jewellery boxes and watch boxes; Time instruments; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Charms of precious metals; Decorative boxes made of precious metal; Decorative articles [trinkets or jewellery] for personal use; Key fobs of precious metals; Identification bracelets [jewelry]; Boxes of precious metal; Objet d’art of enamelled gold; Objet d’art of enamelled silver; Key charms coated with precious metals; Trinkets coated with precious metal; Fancy keyrings of precious metals; Key rings [trinkets or fobs]; Key fobs [rings] coated with precious metal; Leather key fobs; Key fobs of imitation leather; Metal key fobs; Key fobs of common metal; Key fobs, not of metal.

Class 18: Luggage, bags, wallets and other carriers; Sausage skins and imitations thereof; Umbrellas and parasols; Saddlery, whips and animal apparel; Sheets of imitation leather for use in manufacture; Worked or semi-worked hides and other leather; Kid; Boxes of leather or leather board; Curried skins; Cattle skins; Chin straps, of leather; Faux fur; Leather cloth; Leather for shoes; Leather and imitation leather; Leather, unworked or semi-worked; Boxes made of leather; Sheets of leather for use in manufacture; Leather thread; Girths of leather; Imitation leather; Studs of leather; Leather straps; Leather laces; Straps for soldiers’ equipment; Moleskin [imitation of leather]; Polyurethane leather; Straps made of imitation leather; Butts [parts of hides]; Shoulder belts; Semi-worked fur; Animal skins.

Class 25: Clothing; Millinery; Footwear.

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 opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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 14

The contested gemstones, pearls and precious metals, and imitations thereof; jewellery boxes and watch boxes; time instruments; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; charms of precious metals; decorative boxes made of precious metal; decorative articles [trinkets or jewellery] for personal use; key fobs of precious metals; identification bracelets [jewelry]; boxes of precious metal; objet d’art of enamelled gold; objet d’art of enamelled silver; key charms coated with precious metals; trinkets coated with precious metal; fancy keyrings of precious metals; key rings [trinkets or fobs]; key fobs [rings] coated with precious metal; leather key fobs; key fobs of imitation leather; metal key fobs; key fobs of common metal; key fobs, not of metal are various precious metals and their alloys and goods of precious metals or coated therewith; jewellery, precious stones; and horological and chronometric instruments. These goods are dissimilar to all the opponent’s goods and services in Classes 9, 16, 25 and 41. These goods and services have different natures, purposes and methods of use. They are not in competition or complementary to each other. Furthermore, they are not produced by the same undertakings.

Contested goods in Class 18

The opponent’s items of clothing, headgear and footwear (e.g. shirts, caps, sandals) in Class 25 are used to cover parts of the human body and protect them against the elements. They are also articles of fashion.

The contested bags, wallets and other carriers; shoulder belts; leather straps; leather laces; straps for soldiers’ equipment; straps made of imitation leather are related to articles of clothing, headgear and footwear in Class 25. This is because consumers are likely to consider the goods in Class 18 as accessories that complement articles of outer clothing, headgear and even footwear as the former are closely co-ordinated with the latter. Furthermore, they may be distributed by the same or linked manufacturers and it is not unusual for manufacturers of clothing, headgear and footwear to directly produce and market related goods made of leather and imitations of leather. Moreover, these goods can be found in the same retail outlets. Therefore, these goods are considered similar.

The contested sheets of imitation leather for use in manufacture; worked or semi-worked hides and other leather; kid; curried skins; cattle skins; faux fur; leather cloth; leather for shoes; leather and imitation leather; leather, unworked or semi-worked; sheets of leather for use in manufacture; leather thread; girths of leather; imitation leather; studs of leather; moleskin [imitation of leather]; polyurethane leather; butts [parts of hides]; semi-worked fur; animal skins; sausage skins and imitations thereof are 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 footwear) 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 clothing, headgear and footwear. Therefore, these goods are dissimilar.

The contested chin straps, of leather are dissimilar to items of clothing, headgear and footwear. These goods have different natures, purposes and methods of use. They are not complementary or in completion with each other. Furthermore, they are not produced by the same undertakings and do not have the same distribution channels.

Luggage refers to suitcases and bags that can be used when travelling; umbrellas are devices for protection from the weather consisting of a collapsible, usually circular, canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; whips are instruments used for driving animals; animal apparel is clothing for animals; and saddlery is equipment for horses, such as saddles and harnesses. The nature of these goods is very different from that of clothing, headgear and footwear articles in Class 25. They serve very different purposes (storage, protection from rain/sun, aid in the control and/or riding of animals, covering/protecting animals 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 to be dissimilar.

The same reasoning applies to boxes of leather or leather board; boxes made of leather. These goods are considered dissimilar to items of clothing, headgear and footwear. Boxes are for storing things and do not satisfy the same needs as items of clothing, headgear and footwear. 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.

The abovementioned contested goods found to be dissimilar to the opponent’s goods in Class 25 are also dissimilar to the opponent’s remaining goods and services in Classes 9, 16 and 41. These goods and services have different natures, purposes and methods of use. They are not in competition or complementary to each other. Furthermore, they are not produced by the same undertakings.

Contested goods in Class 25

The contested clothing includes, as a broader category, many of the opponent’s goods, such as shirts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Footwear is identically contained in both lists of goods.

The contested millinery is included in, or overlaps with, the broad category of the opponent’s hats. Therefore, they are identical.

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 and similar are directed at the public at large.

The degree of attention is average.

3. The signs

JT AND THE TENNESSEE KIDS	.
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 earlier mark is a word mark, ‘JT AND THE TENNESSEE KIDS’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof. Being a word mark, the mark has no elements which are more dominant (visually eye-catching) than other elements. The first verbal element, ‘JT’, will be perceived as meaningless by the entire relevant public and is therefore distinctive per se. The remaining words, ‘AND THE TENNESSEE KIDS’, will be perceived by the English-speaking part of the relevant public as ‘and children from the state of Tennessee in the United States of America’. The remaining part of the relevant public might understand only some of the words (basic English words or the name of the US state Tennessee) or none of them. In any case, those words are distinctive per se for the entire relevant public. Therefore, the earlier mark has no elements which are clearly more distinctive than other elements.

The contested sign is a figurative mark composed of the black bold upper case letters ‘JT’ and underneath them in smaller, lower case, letters the word ‘exclusive’. Due to their position and size, the letters ‘JT’ are clearly the dominant element of the sign, as they overshadow the smaller word ‘exclusive’. Moreover, the letters ‘JT’, which will be perceived as meaningless, are also the most distinctive element of the sign, as the word ‘exclusive’ will be widely understood as ‘select, fashionable, stylish, private’, since it is a basic English word and close to the equivalent words in many languages (e.g. ‘esclusivo’ in Italian, ‘exclusivo’ in Spanish, ‘exclusief’ in Dutch, ‘exklusiv’ in German, ‘exclusive’ in French). Bearing in mind the relevant goods in Classes 18 and 25, this word is laudatory and therefore non-distinctive.

Visually, the signs coincide in the letters ‘JT’, which are the first verbal elements in both marks, as well as the dominant and most distinctive element in the contested sign. 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 and from top to bottom, which makes the part placed at the left or top of the sign (the initial part) the one that first catches the attention of the reader.

However, they differ in the remaining verbal elements, ‘AND THE TENNESSEE KIDS’, in the earlier mark and in the non-dominant and non-distinctive verbal element ‘exclusive’ in the contested sign.

Taking into account that the first verbal element of the earlier mark, which will attract the primary attention of the relevant public, is incorporated as the dominant and most distinctive element of the contested sign, the signs are visually similar at least to a low 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 /J/T/, which will be pronounced as two individual letters in both marks. The pronunciation differs in the sound of the remaining words, ‛AND THE TENNESSEE KIDS’, of the earlier mark and in the sound of the word ‘exclusive’ in the contested sign, which will probably not be pronounced due to its smaller size and non-distinctive character. Although the number of words differs in each mark, five in the earlier mark and two in the contested sign, the initial verbal element, ‘JT’, will be the one that consumers are most likely to use in their oral communication.

Therefore, the signs are aurally similar at least to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated by part of the relevant public with dissimilar meanings on account of the verbal elements ‘AND THE TENNESSEE KIDS’, the signs are not conceptually similar for this part of the public.

For the part of the relevant public that will grasp the meaning of only the word ‘exclusive’ in the contested sign, the conceptual comparison remains neutral, as this word is non-distinctive and incapable of indicating the commercial origin of the goods.

For the remaining part of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public either.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, 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).

Such a global assessment of 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 greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods and services.

The earlier mark has at least an average degree of distinctiveness. The relevant public is the public at large and the degree of attention is average.

The signs are visually and aurally similar at least to a low degree. For part of the relevant public, the marks are not conceptually similar, while for another part of the relevant public the lack of any conceptual content does not carry any weight in the comparison.

Taking into account the fact that the contested sign incorporates the first verbal element, ‘JT’, of the earlier mark as its dominant and most distinctive element, it follows that the element ‘JT’ significantly influences the overall impressions of the signs and is likely to be remembered by the relevant public. In this respect, it must be borne in mind that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, so the beginning and/or dominant component of a mark is of major importance.

Therefore, at least with respect to the part of the relevant public for which the conceptual comparison remains neutral, it is considered that, in the context of the interdependence of the factors taken into account, the low degree of similarity between the signs concerned is, in the present case, offset by the identity or similarity of the relevant goods.

Consequently, even if average consumers are capable of detecting certain differences between the two conflicting signs, the likelihood that they might associate the signs with each other is very real.

From the wording in Article 8(1)(b) EUTMR, ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’, it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, it is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand, a variation of the earlier mark configured in a different way according to the type of goods which it designates. It is therefore conceivable that the target public may regard the goods designated by the trade mark applied for as belonging to two ranges of goods coming, nonetheless, from the same undertaking.

Contrary to what the applicant argues, the presence of the additional words ‘AND THE TENNESSEE KIDS’ in the earlier mark is not sufficient to prevent a likelihood of confusion. As explained above, the presence of those words does not rule out the possibility that the consumer might consider that the trade mark applied for constitutes a mere variant of the earlier mark, on account of the presence of the element ‘JT’ in both.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 28/07/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 9:         Musical sound recordings; audio-visual recordings, namely, compact discs, tape cassettes, audio cassettes, audio tapes, audio discs, phonograph records, CD-ROMs, video tapes, video cassettes, video discs, DVDs, digital audio tapes (DATs), downloadable MP3 files, and laser discs, all featuring sound tracks, television programs, webisodes and motion pictures featuring music, entertainment, the arts, fashion, lifestyles, popular culture, and technology; downloadable films and television programs featuring music, entertainment, the arts, fashion, lifestyles, popular culture, and technology, provided via a video-on-demand service; downloadable webisodes, motion pictures and television shows featuring music, entertainment, the arts, fashion, lifestyles, popular culture, and technology; motion picture films and films for television featuring music, entertainment, the arts, fashion, lifestyles, popular culture, and technology; musical sound recordings; downloadable musical sound recordings; downloadable video recordings featuring music; downloadable electronic publications in the nature of books, magazines, journals, brochures, leaflets, pamphlets and newsletters, all in the field of music, entertainment, the arts, fashion, lifestyles, popular culture, and technology; electronic publications, namely, books, booklets, magazines, journals, manuals, brochures, leaflets, pamphlets and newsletters, all in the field of music, entertainment, the arts, fashion, lifestyles, popular culture, and technology, recorded on CD-ROMs, diskettes, floppy disks, video cassettes, and magnetic tapes; decorative magnets; refrigerator magnets; novelty magnets; mouse pads; eyewear; eyeglasses and eyeglass frames; sunglasses and sunglass frames; eyeglass and sunglass cases; compact disc cases and covers; face plates for cell phones; cell phone covers; carrying cases for cell phones; jackets for video cassettes, tapes and discs; fitted cases for storage and transportation, namely, cases for compact discs, audio cassettes, video cassettes, CD-ROMs, home video games, computers, cameras, camcorders and portable phones; computer carrying cases; protective covers and cases for tablet computers; downloadable music, ring tones, graphics, and electronic games via the Internet and wireless devices; downloadable wireless entertainment via the internet and wireless devices, namely, ring tones, screen savers and images, and wallpaper; downloadable wireless game software; computer game cartridges, discs, cassettes, tapes, joysticks, programs and software; video game cartridges, video game discs, video game tape cassettes, video game software and video game programs; interactive multimedia computer game program; interactive video game programs; interactive audio game discs containing action games and role playing games; interactive video games of virtual reality comprised of computer hardware and software; virtual reality game software; multi-media software recorded on CD-ROM featuring music, entertainment, and games; computer software for use in the design, development and execution of wireless game and entertainment programs and applications.        

Class 16:        Posters; calendars; temporary tattoos; stickers; decals; bumper stickers; iron-on and plastic transfers; blank cards; gift and greeting cards; motivational cards; occasion and note cards; place, record, score and trading cards; postcards; scrapbooks; stationery; paper; note pads; paper note tablets; writing tablets; note books; folders; bookmarks; paper pennants; binders; writing paper; envelopes; address and appointment books; time planners; autograph books; guest books; ledger books; log books; desk pads; paper tags; passport cases, passport covers and passport holders; desk top and personal organizers; organizers for stationery use; stationery-type portfolios; paper flags; mounts for stamps; rubber stamps; stamp albums; stamp pad inks; stamp pads; paper clips; book markers of precious metal; money clips; sleeves for holding and protecting stamps; paper banners; holders for desk accessories; document holders; letter clips; letter openers, racks and trays; pen and pencil cups; pens; pencils; extensions and attachments for pencils; glue and glue sticks for stationery and household use; glue for the office; markers; marker caddies; pen and pencil sets; crayons; highlighting pens and markers; erasers; drafting and drawing rulers; pencil sharpeners; bookends; book covers and holders; checkbook covers; checkbook holders; coin and photograph albums; brag books; leather book covers; bulletin boards; photographic, picture or art mounts; photographic prints; collages; photographs; lithographs; illustrations; decorative paper centerpieces and pencil-top ornaments; picture books; globes; paperweights; coasters made of paper; paper clip and sign holders; printed paper signs; clip boards; paper party favors; paper emblems; printed emblems; printed awards; paper identification tags; printed holograms; paper name badges; paper illustration boards; paper display boxes; paper flower pot covers; paper cloths for polishing and cleaning; paper handkerchiefs; hat boxes of cardboard; hat boxes of paper; tour books; printed concert programs; event programs and albums; books, magazines, leaflets, journals, newsletters, booklets, pamphlets and brochures, all of the aforesaid featuring music, entertainment, television, film, the arts, fashion, lifestyles, culture and politics.

Class 25:         Clothing, namely, shirts, long-sleeved shirts, T-shirts, under shirts, night shirts, rugby shirts, polo shirts, cardigans, jerseys, scrubs not for medical purposes, smocks, pants, jeans, cargo pants, stretch pants, denim jeans, shorts, boxer shorts, tops, stretch tops, crop tops, tank tops, tankinis, sweat shirts, hooded sweat shirts, sweat jackets, sweat shorts, sweat pants, warm-up suits, track suits, sweaters, vests, fleece vests, pullovers, jackets, reversible jackets, wind-resistant jackets, shell jackets, sports jackets, jean jackets, coats, turtlenecks, swimwear, beachwear, tennis wear, layettes, infantwear, infants sleepers, booties, caps, hats, visors, headbands, wrist bands, sweat bands, headwear, ear muffs, aprons, scarves, bandanas, belts, neckwear, underwear, socks, loungewear, robes, underclothes, pajamas, sleepwear, hosiery, gloves, mittens, rain slickers, rainwear, footwear, sneakers, shoes, sandals, flip-flops, and slippers.

Class 41:        Entertainment in the nature of a live musical performer; entertainment in the nature of live performances by a musical artist, musical group or musical band; entertainment, namely, live music concerts; entertainment in the nature of visual and audio performances by a musical artist, musical group and musical band; live performances featuring pre-recorded vocal and instrumental performances viewed on a big screen; record production; music production; audio recording and production; videotape production; motion picture song production; production of video discs for others; recording studios; entertainment services, namely, production and distribution of musical audio and video programs; production and distribution of musical audio and video recordings for broadcast; music composition and transcription for others; song writing services; music publishing services; entertainment, namely, personal appearances by a musician or entertainer; entertainment, namely, personal appearances by a television star, movie star, comedian or radio personality; entertainment services namely live, televised and movie appearances by a professional entertainer; entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, and photographs; entertainment services, namely, providing pre-recorded music, information in the field of music, commentary and articles about music, all online via a global computer network; entertainment in the nature of live traveling tours by a professional entertainer featuring music; entertainment services, namely, presenting non-downloadable ringtones, pre-recorded music, video and graphics to mobile communications devices via a global computer network and wireless networks; production of television and radio programs; television show production; cable television show production; production of radio entertainment programs; motion picture film production; film editing; special effects animation services for film and video; entertainment in the nature of on-going television, cable television and radio programs featuring music, comedy, dramatic acts, spoken word, cartoons, animation and educational subject matters for children and young adults; television and cable television programs featuring music, drama, spoken word, comedy, cartoons, animation and educational subject matters for children and young adults; providing a variety show distributed over television, cable television, radio, satellite, audio and video media; entertainment, namely, a continuing variety, news, comedy, dramatic and musical show broadcast over television, satellite, audio and video media; theatre productions; educational and entertainment services, namely, providing motivational and educational speakers; distribution of television programs and radio programs for others; television program syndication; programming on a global computer network; distribution of television programming to cable television systems; cable television programming; television and radio programming; television scheduling; entertainment services, namely, providing an on-line computer game; providing an online computer game that may be accessed network-wide by network users; providing information online relating to computer games; entertainment services provided via computer, namely, providing online movie and music reviews; entertainment services, namely, providing on-going webisodes featuring music, entertainment, the arts, fashion, lifestyles, popular culture, and technology via a global computer network; fan clubs; providing a web site featuring fan club information.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 16/05/2016, the opponent submitted a witness statement, dated 13/05/2015, by Mr Michael S. Dreyer (Vice-President of the opponent), containing the following exhibits:

• An extract from Wikipedia, dated 13/05/2016, containing information on the musical artist Justin Timberlake. The document mentions, inter alia, that ‘in 2013, Timberlake introduced his big-band orchestra called the Tennessee Kids for Legends of the Summer and The 20/20 Experience World Tour which includes guitarists, dancers, background singers, drummers, bassists, keyboardists, trumpeters, a music coordinator, a percussionist, a saxophonist, among other musicians’.

• Information on the hits of Justin Timberlake from 2002 to 2013.

• Information on accolades and awards received by Justin Timberlake from 2004 to 2014.

• Various press articles on Justin Timberlake, for example an extract from Buzzfeed entitled ‘Justin Timberlake is a luxury brand’; an extract from the Daily Star entitled ‘Sir Paul McCartney and Madonna join Justin Timberlake for SNL skit’; and an extract from Billboard entitled ‘Justin Timberlake feeling No 1 on the Billboard + Twitter trending 140 chart’. From this evidence, it also appears that Justin Timberlake was ranked by Forbes as number 19 among the world’s highest-paid celebrities. Despite the fact that on some occasions the name of Justin Timberlake is abbreviated as ‘JT’, there is no reference at all to the earlier mark, ‘JT AND THE TENNESSEE KIDS’.

• Information on high-value and famous deals between Justin Timberlake and well-known household brands, such as McDonald’s, MySpace, Callaway Golf Company, Tom Ford, William Rast, Apple, Sauza 901 and Sony. The earlier mark, ‘JT AND THE TENNESSEE KIDS’, is not mentioned.

• Information on the number of Facebook followers of Justin Timberlake in the United Kingdom, France and Spain.

• References in press articles (Vogue, the BBC, MTV, Laineygossip.com, Sound of Aarhus, countryweekly.com, Amazon, Entertainment Weekly, Digital Spy, The Huffington Post) to ‘JT’ as an abbreviation of the name Justin Timberlake.

• Evidence that the albums of Justin Timberlake are also marketed under the name ‘JT’, and have those letters on the cover (but with no reference to the remaining words of the earlier mark, ‘AND THE TENNESSEE KIDS’).

• An extract from the website www.justintimberlake.com showing the members of the band ‘JT AND THE TENNESSEE KIDS’.

• An image of a performance by the band ‘JT AND THE TENNESSEE KIDS’ from YouTube, showing a performance on The Tonight Show in 2014.

• An overview of the 2013-2014 world tour ‘20/20 Experience’ and other performances in EU countries (e.g. the United Kingdom, the Netherlands, Germany, Belgium and France) and the number of tickets sold (concerts in 23 locations throughout the EU, with the number of tickets sold varying between 9 826 and 39 234). Some of the press articles contain images of the tour in which the words ‘JT AND THE TENNESSEE KIDS’ can be seen on stage on music stands, and one article states ‘Justin is strutting to a whole new beat: The Tennessee Kid refuses to play safe’.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

First, the majority of the evidence refers to ‘Justin Timberlake’ and not to the earlier mark ‘JT AND THE TENNESSEE KIDS’. It is clear from the evidence that Justin Timberlake is a very famous and successful music artist. This can be inferred from the Wikipedia extracts, the information on his hits, accolades and awards, and the information on the deals with well-known trade mark owners he has made and the number of Facebook followers he has. However, this does not prove the reputation of the earlier mark ‘JT AND THE TENNESSEE KIDS’.

Although in some of the press articles and on some of the music albums the name ‘Justin Timberlake’ is abbreviated to ‘JT’, this abbreviation is not used together with the remaining distinctive words, ‘AND THE TENNESSEE KIDS’, of the earlier mark and even less so in connection with any specific goods or the majority of the services for which the earlier trade mark is registered.

The information on the band ‘JT AND THE TENNESSEE KIDS’ and on the 2013-2014 world tour ‘20/20 Experience’ and other performances in EU countries (e.g. the United Kingdom, the Netherlands, Germany, Belgium and France) demonstrate that the earlier mark, ‘JT AND THE TENNESSEE KIDS’, was used for some services in Class 41, namely entertainment in the form of live music performances. It is clear from the evidence that the earlier mark appeared on music stands on stage during the concerts in 23 locations throughout the EU, with between 9 826 and 39 234 tickets sold per concert. However, the mere fact that the mark was displayed at a number of concerts is not sufficient to show that the earlier mark has acquired a reputation, as it is not clear what degree of attention was paid to it by the relevant public. Furthermore, the evidence does not indicate the extent to which the trade mark has been promoted.

As a result, the evidence as a whole fails to show the trade mark in conjunction with many of the goods and services for which the opponent claimed reputation and in any case does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must 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. 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

Alexandra APOSTOLAKIS

Saida CRABBE

Ric WASLEY

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.