OPPOSITION No B 2 610 866

KappAhl Sverige AB, Idrottsvägen 14, 431 24 Mölndal, Sweden (opponent), represented by Awapatent AB, Södra Hamngatan 37-41, 404 28 Göteborg, Sweden (professional representative)

a g a i n s t

Kickz AG, Landwehrstr. 60, 80336 Munich, Germany (applicant), represented by BPM Legal, Steindorfstr. 13, 80538 Munich, Germany (professional representative).

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 610 866 is partially upheld, namely for the following contested goods:

Class 25: Clothing; tee-shirts; shirts; trousers; shorts; crewneck tops; long-sleeved tops; socks; boxer shorts; gloves [clothing]; jackets [clothing].

2.        European Union trade mark application No 14 419 204 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 419 204, namely against all the goods in Classes 9, 18 and 25. The opposition is based on European Union trade mark registration No 4 208 302. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark No 4 208 302.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 21/08/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 21/08/2010 to 20/08/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 25: Lingerie for women.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 05/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 10/11/2016 to submit evidence of use of the earlier trade mark. On 03/11/2016, the opponent requested an extension of the time limit of two months. On 10/11/2016, an extension until 10/01/2017 was granted. On 22/12/2016, within the time limit, the opponent submitted evidence of use.

On 27/04/2017, after the expiry of the time limit, the opponent submitted additional evidence in order to clarify the translations of some documents.

In the present case the issue of whether or not the Office may exercise the discretion conferred on it by Article 76(2) EUTMR to take into account the additional evidence submitted on 22/12/2016 can remain open, as the evidence submitted within the time limit is sufficient to prove the required genuine use of the earlier trade mark.

Therefore, the evidence to be taken into account is the following:

• Auditor’s certificate issued by Ernst & Young, confirming sales in Sweden, Finland, Poland and the Czech Republic under the ‘CREEM’ trade mark. According to this document, more than 300 000 units of underwear and bras were sold in Sweden, Finland, Poland and the Czech Republic each year from 2010 to 2015. In this period, annual turnover fluctuated between about SEK 27 000 000 (EUR 2 800 000) and about SEK 39 500 000 (EUR 4 000 000).
• Photos of bras and briefs bearing the mark ‘creem’.
• Excerpts from the opponent’s magazine (Swedish, Finnish and Polish editions), dated 2013.
• Leaflet dated 2012 showing bras and briefs bearing the mark ‘creem’.
• Printouts from the opponent’s website, dated between 08/07/2011 and 2015, in which the ‘creem’ brand is described as being used for a ‘lingerie collection suitable for many feminine forms and needs’.
• Excerpts from third party websites and blogs, dated 28/06/2011, 10/09/2011, 08/11/2011, 30/11/2011, 27/04/2012, 28/06/2012, 14/09/2012, 3/04/2013, 06/2013 and 28/02/2015. The articles are in either Swedish or Polish.
• Four invoices regarding goods shipped to the Swedish market, four invoices regarding goods shipped to the Polish market and two invoices regarding goods shipped to the Finnish market, all dated 2010, 2011 or 2012. The brand ‘creem’ is displayed on all the invoices. These invoices demonstrate sales of bras.

Place of use

The auditor’s certificate, the invoices and the excerpts from third party websites show that the places of use are Sweden, Poland, Finland and the Czech Republic. This can be inferred from the country code top-level domains of the websites and the addresses displayed on the invoices. Therefore, the evidence relates to the relevant territory.

Time of use

All of the evidence is dated within the relevant period.

Extent of use

In assessing the extent of the use of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

Moreover, it should be noted that the purpose of the proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 36-38, and the case-law cited therein.)

The documents listed above, in particular the invoices, the auditor’s certificate and the printouts from various websites (the opponent’s website as well as third party websites) provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use. The invoices demonstrate sales of about SEK 583 719 (EUR 60 749) and they furthermore were issued during a continuous period of five years. The invoices refer to sales in three different Member States. The independent report by Ernst & Young indicates that the products are also sold to a fourth country within the European Union, namely the Czech Republic.

Therefore, even if the volume of sales demonstrated by the invoices is not particularly high, it is offset by the other documents and by the continuous use during the period.

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the earlier sign was used in such a way as to establish a clear link between the goods (lingerie for women) and the opponent, as on all of the invoices submitted the opponent’s name is clearly indicated, as is the mark under which the lingerie for women is invoiced. In the photos submitted, the sign  is clearly visible on what appear to be bras. The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Use of the mark as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 57(2) and (3) EUTMR, Article 15 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of Article 15(1), second subparagraph, point (a), ‘is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade’ (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

A finding of an alteration of the distinctive character of the mark as registered, taking the above into account, requires an assessment of the distinctive and dominant character of the added and/or omitted elements, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the different elements within the arrangement of the trade mark (10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 31 and the case-law cited).

In the present case, the earlier mark is clearly depicted as registered on the invoices submitted. The magazines and blogs include the mark in its registered form. On the products, the mark seems to be depicted as . In this depiction, the earlier mark is clearly recognisable. It is, furthermore, noted that the protection which results from registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 42). Therefore, the depiction of the mark in lower case and in a slightly stylised typeface in the photographs is an acceptable variation.

It follows that the use of the sign shown above constitutes use of the mark as registered or in a form essentially the same as that registered and, therefore, constitutes use of the mark under Article 15 EUTMR.

Use in relation to the registered goods

The Court of Justice has held that there is ‘genuine use’ of a mark where it 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. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence mainly proves use for bras, belonging to the following category in the specification: lingerie for women. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and because there is also some evidence (in particular the leaflet and the printouts from the opponent’s website) suggesting that briefs are also sold under the mark, the Opposition Division considers that the evidence shows genuine use of the trade mark for lingerie for women.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of earlier European Union trade mark No 4 208 302 during the relevant period in the relevant territory.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 25: Lingerie for women.

The contested goods are the following:

Class 9: Spectacles [optics]; sunglasses; spectacle frames; spectacle frames; spectacle cases.

Class 18: Casual bags; handbags; holdalls; satchels; backpacks; wallets; credit-card holders.

Class 25: Clothing; tee-shirts; shirts; trousers; shorts; crewneck tops; long-sleeved tops; socks; boxer shorts; hats; gloves [clothing]; footwear; boots; jackets [clothing].

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 9

The contested spectacles [optics]; sunglasses; spectacle frames; spectacle frames; spectacle cases in Class 9 are dissimilar to the opponent’s lingerie for women in Class 25. Their natures and main purposes are different. The main purpose of lingerie is to dress the human body, whereas glasses are for improving eyesight and spectacle cases are for protecting glasses. They do not have the same distribution channels and are neither in competition nor complementary. Contrary to the opponent’s arguments, even though some fashion designers nowadays also sell sunglasses under their marks, this is not the market rule; it tends to apply only to (commercially) successful designers.

Contested goods in Class 18

The contested casual bags; handbags; holdalls; satchels; backpacks; wallets; credit-card holders are deemed to be dissimilar to the opponent’s lingerie for women in Class 25. They do not have the same nature, purpose and method of use. This dissimilarity also results from the fact that the opponent’s goods are not complemented by fashion accessories. Although all these goods may be found in the same stores, they are usually sold in different parts of those stores. Finally, it is unlikely that these goods would be manufactured by the same undertaking.

Contested goods in Class 25

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

The contested boxer shorts are included in the broad category of, or overlap with, the opponent’s lingerie for women. Therefore, they are identical.

The contested tee-shirts; shirts; trousers; shorts; crewneck tops; long-sleeved tops; socks; gloves [clothing]; jackets [clothing] are similar to the opponent’s lingerie for women. These goods have the same nature and method of use. They also have the same distribution channels and producers, and their relevant public is likely to be the same.

The contested hats; footwear; boots are dissimilar to the opponent’s lingerie for women. They have different natures. Furthermore, they have different distribution channels and commercial origins, and they are neither complementary nor in competition.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large.

The degree of attention will be average.

3. The signs

CREEM
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 sequences of letters ‘CR’ and ‘KR’ will be pronounced the same way in some languages, including in Italian and Spanish. Moreover, in those two languages, the marks are meaningless. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking parts of the public.

The earlier mark is the single-word mark ‘CREEM’. This word is meaningless for the relevant public for the analysis. It has a normal degree of distinctiveness.

The contested sign is a figurative mark consisting of the word ‘Kream’, written in black on a white background. The letter ‘K’ is in upper case while the rest of the letters are in lower case. The word ‘Kream’ is slightly stylised.

The word ‘Kream’ is meaningless in relation to the goods at issue. Therefore, it has a normal degree of distinctiveness.

Where a mark contains verbal and figurative elements, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Neither of the marks at issue has an element that could be considered dominant.

Visually, the signs coincide in three out of five letters, namely the letters ‘*RE*M’. The verbal element of the contested mark and that of the earlier mark are of the same length. They differ in their first and fourth letters (‘C’ versus ‘K’ and ‘E’ versus ‘A’) and in the graphic elements and stylisation of the contested sign.

Therefore, the signs are visually similar to a low degree.

Aurally, for the relevant public for the analysis, the pronunciation of the signs coincides in the sound of the letters ‘C/KRE*M’. The pronunciation differs in the sound of the signs’ fourth letters, namely ‘A’ in the contested sign and ‘E’ in the earlier mark.

The signs are of the same length and have the same rhythm.

Therefore, they are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the relevant public for the analysis. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the conflicting signs are visually similar to a low degree and aurally similar to a high degree, and the conceptual aspect does not influence the assessment. The contested goods are partly identical, partly similar and partly dissimilar to the opponent’s goods.

Even considering that, in respect of the identical or similar goods covered by the marks in question in Class 25, the visual aspect is more important at the time that those goods are purchased, the fact remains that the phonetic aspect is also still relevant to the assessment of the likelihood of confusion. The importance of certain visual dissimilarities may be diminished by the fact that the average consumers only rarely have the chance to make a direct comparison between the different marks at issue and must rely on their imperfect recollection of them. The consumers, in addition, may be prompted to choose goods from the categories in question in response to a television advertisement, for example, or having heard them being spoken about.  In those circumstances, the consumers might retain the phonetic impression of the mark in question as well as the visual aspect (04/06/2013, T-514/11, Betwin, EU:T:2013:291, § 74).

Considering all the above, and in particular the high degree of aural similarity between the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian- and Spanish-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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.

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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Sandra KASPERIŪNAITĖ

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.