of the Fourth Board of Appeal
of 12 January 2017
In Case R 1206/2016-4
M & K SRL
Via Tiziano, 7
59100 Prato Po
Applicant / Appellant
represented by DOTT. FRANCO CICOGNA & C.SRL, Via Visconti di Modrone, 14/A, 20122 Milano, Italy
554 Montee de Liesse
Montreal, Québec H4T 1P1
Opponent / Respondent
represented by HOFSTETTER, SCHURACK & PARTNERPATENT- UND RECHTSANWALTKANZLEI, PARTG MBB, Balanstrasse 57, 81541 München, Germany
APPEAL relating to Opposition Proceedings No B 2 425 984 (European Union trade mark application No 13 233 391)
THE FOURTH BOARD OF APPEAL
composed of D. Schennen (Chairperson), S. Martin (Rapporteur) and C. Bartos (Member)
Registrar: H. Dijkema
gives the following
Summary of the facts
- By an application filed on 5 September 2014, the appellant sought to register the word mark
for the following goods in Classes 14, 18 and 25:
Class 14 ‒ Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Time instruments; Jewellery boxes and watch boxes;
Class 18 ‒ Saddlery, whips and animal apparel; Walking sticks; Sausage skins and imitations thereof; Umbrellas and parasols; Luggage, bags, wallets and other carriers;
Class 25 ‒ Clothing; Headgear; Footwear.
- On 28 October 2014, the respondent filed an opposition against the registration of the trade mark application for parts of the goods covered by the application, namely:
Class 25 ‒ Clothing; headgear; footwear.
- The grounds of opposition were those laid down in Article 8(1)(b) EUTMR. The opposition was based on the earlier European Union trade mark No 439 588 (‘the earlier mark’)
filed on 27 December 1996, registered on 21 January 1999, and renewed until 27 December 2016 for goods in Class 25, i.e. ‘footwear; boots; shoes; overshoes; parts and fittings for all the aforesaid goods’
- By decision of 4 May 2016 (‘the contested decision’), the Opposition Division upheld the opposition for all the contested goods, reasoning that the respondent had proven the genuine use of the earlier mark for the goods,
Class 25 ‒ Footwear.
and that likelihood of confusion existed for all the contested goods due to the visual and aural similarity of the conflicting signs and the similarity of the goods.
Submissions and arguments of the parties
- On 30 June 2016, the appellant filed an appeal against the contested decision, along with the statement of grounds. The appellant requests that the decision be annulled and the opposition rejected in its entirety on the ground that the genuine use of the earlier mark was not proven. The invoices provided by the respondent refer only to shoes and must be considered as indicating only a token use because it is impossible to understand the market share, the respondent’s position on the market and how many consumers bought the respondents products. In addition, the respondent does not use its word mark as registered but as a figurative mark including a graphical element which alters the distinctive character of the mark. Furthermore, the conflicting signs are not visually and phonetically similar. Conceptually, the contested mark refers to the Italian word ‘CHIMICA’ whereas the earlier mark is the name of a specific type of traditional boots used by natives of Arctic places. Finally, the conflicting goods are not similar because the boots of the respondent are not sold in the same shops as the clothing of the appellant. Therefore, the Opposition Division was wrong in finding a likelihood of confusion between the conflicting marks.
- In reply, the respondent endorses the Opposition Division’s analysis, requests that the appeal be dismissed and the appellant ordered to bear the costs.
- The appeal is not well founded. Proof of use has been provided in respect of the earlier trade mark, and there is a likelihood of confusion on the part of the public pursuant to Article 8(1)(b) EUTMR.
On the proof of use
- Article 42(2) and (3) EUTMR provides that the applicant of a European Union trade mark application may request proof that the earlier mark on which an opposition is based has been put to genuine use in the European Union or in the relevant Member State during the five-year period preceding the date of publication of the European Union trade mark application by the Office, provided that the earlier mark has, at that date, been registered for more than five years. Pursuant to Rule 22(3) CTMIR, proof of use must cover the place, time, extent and nature of the use made of the earlier trade mark.
- In the context of Rule 22(3) CTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods for which it is registered, i.e. ‘footwear; boots; shoes; overshoes; parts and fittings for all the aforesaid goods’.
- There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether there is real commercial exploitation of the mark in the course of trade, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating market share for the goods or services protected by the mark, the nature of those goods and services, the characteristics of the market and the scale and frequency of use of the mark (19/12/2012, C149/11, Onel / Omel, EU:C:2012:816, § 29)
- The contested application was published on 19 September 2014. Upon invitation by the Opposition Division pursuant to Rule 22(2) CTMIR, the respondent therefore had to prove use of the earlier mark within the period of five years from 19 September 2009 until 18 September 2014.
The respondent submitted inter alia 19 invoices dated between 9 February 2010 and 17 September 2014, at least three for every year, showing sales of footwear in Germany, Denmark and Sweden for a total amount of around EUR 500 000 and around 20 000 pairs of shoes. The earlier mark appears in the header of the invoices as follows:
- The Board endorses the assessment of the Opposition Division according to which the use of the earlier mark as shown in the header of the invoices does not alter the distinctive character of the earlier mark within the meaning of Article 15(1)(a) CTMR since the slight stylisation of the letters of the word ‘kamik’ and the appearance of the graphical element on the right hand side of the word are minor variations of the mark as registered. The mark was registered as a word mark and hence the nature of use of the word in the form of slightly stylized letters is use as registered. Furthermore, nothing prevents a trade mark owner from using concurrently and side by side two different trade marks as in the present case. (18/04/2013, C-12/12, Colloseum Holding, EU:C:2013:253, § 32)
- As for the extent of use of the earlier mark, it suffices to note that there exists no quantitative threshold which must be overcome in order to qualify as genuine use (11/05/2006, C416/04 P, Vitafruit, EU:C:2006:310, § 72). It moreover appears from the invoices that there have been continuous sales throughout the entire relevant period. It follows from the very wording of Article 42(2) EUTMR that proof of use ‘during the period of five years’ is sufficient and that the respondent is under no obligation to demonstrate a certain market share.
- Considered as a whole, the documents submitted by the respondent show genuine use of the earlier mark for ‘footwear’ in Germany, Denmark and Sweden. The evidence clearly demonstrates sales that cannot be considered as ‘token use’. Such evidence constitutes proof of genuine use within the European Union (see for example judgment of (19/12/2012, C149/11, Onel / Omel, EU:C:2012:816, § 57).
- According to Article 42(2), 3rd sentence EUTMR, for the purposes of the opposition proceedings the earlier trade mark is deemed to be registered for ‘footwear’ in Class 25.
Article 8(1)(b) EUTMR
- The relevant public for ‘footwear’ is the public at large having an average level of attention. Since the earlier mark is a European Union trade mark the relevant territory for the assessment of likelihood of confusion is the European Union.
Similarity between the goods
- With regard to the comparison of the goods, the Board confirms the reasoning and conclusions of the Opposition Division in this respect. The contested ‘footwear’ is identically included in the list of goods of the earlier mark. The contested ‘clothing’ and ‘headgear’ in Class 25 are similar at least to an average degree to the ‘footwear’ of the earlier mark of the same Class 25. The conflicting goods are all used to cover and protect parts of the human body. They constitute articles of fashion and they are regularly found in the same retail outlets. Footwear as well as clothing and headgear are often designed and produced by the same enterprise.
Similarity between the signs
- The assessment of the visual, phonetic or conceptual similarities 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, C251/95, Sabèl, EU:C:1997:528, § 23; 06/10/2005, C120/04, Thomson Life, EU:C:2005:594, § 28).
- The following signs are to be compared:
- Both signs are word marks consisting of a single word. They coincide in the letters ‘K’ and ‘MIK’, which are located at the same positions within the words. Moreover, both marks contain the letter ‘A’, however in different positions in the marks. The contested mark contains the additional letter ‘I’. The signs have a similar length (six vs five letters).
- Visually, the signs are similar to an average degree due to their identical initial letter ‘K’, their identical letter sequence ‘MIK’ at the same positions within the marks and their similar length.
- Aurally, the earlier mark will be pronounced in two syllables ‘KA / MIK’ whereas the contested mark in three syllables ‘KI / MI / KA’. Furthermore, the sequence of vowels is inverse, namely ‘A – I’ in the earlier mark, and ‘I – I – A’ in the contested mark. However, due to the coincidences in the letters ‘K’ and ‘MIK’ and the presence of the same vowels ‘I’ and ‘A’, albeit in different positions, the signs are aurally similar at least to an average degree.
- Conceptually, none of the signs has a meaning and hence a conceptual comparison is not possible. The appellant’s assertion that the contested mark refers to the Italian word ‘CHIMICA’ is of no relevance for consumers not speaking Italian. Likewise, the understanding of the earlier mark by the Inuit’s living in Canada and Siberia lies outside the perception for a significant part of the European Union public.
Global assessment of a likelihood of confusion
- According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR 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 (29/09/1998, C39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).
- The degree of inherent distinctive character of the earlier mark is average. Increased distinctive character has not been claimed.
- Considering the similarity of the conflicting goods at least to an average degree, the average visual similarity of the conflicting signs, and the average level of attention of a part of the public, the Board agrees with the Opposition Division that a likelihood of confusion exists on that part of the relevant public for all the contested goods.
- The appeal is dismissed.
- As the appellant is the losing party in the opposition and appeal proceedings within the meaning of Article 85(1) EUTMR, it must be ordered to bear the corresponding costs incurred by the respondent.
Fixing of costs
- Pursuant to Article 85(6) EUTMR in conjunction with Rule 94(3) CTMIR, the decision of the Board shall, where applicable, include the fixing of the amount of the costs to be paid by the losing party. In agreement with Rule 94(7)(d) CTMIR, the amount of representation costs of the appeal proceedings to be paid by the appellant to the respondent shall be fixed at the standard rate of EUR 550, the costs for the opposition proceedings at EUR 300. The opposition fee amounts to EUR 350. The total amount is EUR 1 200.
On those grounds,
- Dismisses the appeal;
- Orders the appellant to bear the costs of the opposition and the appeal proceedings;
- Fixes the total amount of fees and costs to be paid by the appellant to the respondent with respect to the opposition and the appeal proceedings at EUR 1 200.
12/01/2017, R 1206/2016-4, KIMIKA / KAMIK