OPPOSITION No B 2 593 864

MQ Retail AB, P.O. Box 119 19, 404 39 Göteborg, Sweden (opponent), represented by Magnusson Advokatbyrå AB, Stora Nygatan 29, 404 30 Göteborg, Sweden (professional representative)

a g a i n s t

aspire2excellence, Kalkvägen 10, 269 36 Båstad, Sweden (applicant), represented by K.O.B. N.V., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 593 864 is partially upheld, namely for the following contested services:

Class 35:         Sale of pre-recorded recordings, DVDs, musical recordings, instruction sheets, instruction cards, posters, manuals, exercise books, magazines, newsletters, fitness apparatus, accessories for exercise equipment, exercise mats, exercise apparatus, clothing and accessories for sports and exercise, including provided online.

2.        European Union trade mark application No 14 228 051 is rejected for all the above services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 228 051. The opposition is based on, inter alia, European Union trade mark registration No 5 609 128. The opponent invoked Article 8(1)(b) and 8(4) EUTMR.

PRELIMINARY REMARK

European Union trade mark application No 14 228 051 has been partially refused for services in Class 41 by a decision taken in opposition No B 2 593 807, which has now become final. The Office invited the opponent to confirm whether or not it maintained the opposition. The opponent informed the Office that it did maintain the opposition but restricted the scope of the opposition to services in Class 35 only.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 5 609 128.

1. The goods and services

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

Class 3:        Cosmetics; perfumery; hair-dyeing preparations; permanent waving liquids; soap; deodorants for personal use; essential oils.

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery; precious stones; horological and chronometric instruments.

Class 18:        Leather and imitations of leather and goods made of these materials and not included in other classes trunks; umbrellas; suitcases; handbags; pocket wallets.

Class 25: Clothing, footwear, headgear.

Class 35:        Retail services in respect of soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, precious metals and their alloys, goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather, goods made of leather and imitations thereof, trunks and travelling bags, umbrellas, parasols, walking sticks, clothing, footwear and headgear.

The contested services are the following:

Class 35: Promotion relating to instruction, providing of training, providing of facilities and equipment, advice and consultancy in relation to sport, exercise, remedial exercise techniques and rehabilitation; Sale of pre-recorded recordings, DVDs, musical recordings, instruction sheets, instruction cards, posters, manuals, exercise books, magazines, newsletters, fitness apparatus, accessories for exercise equipment, exercise mats, exercise apparatus, clothing and accessories for sports and exercise, including provided online.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 services in Class 35

Clothing for sports and exercise is included in the broader category of clothing; therefore, these goods are identical.

As a result, the applicant’s sale of clothing for sports and exercise, including provided online is identical to the opponent’s retail services in respect of clothing.

The contested sale of pre-recorded recordings, DVDs, musical recordings, instruction sheets, instruction cards, posters, manuals, exercise books, magazines, newsletters, fitness apparatus, accessories for exercise equipment, exercise mats, exercise apparatus, accessories for sports and exercise, including provided online is considered similar to the opponent’s retail services in respect of soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, precious metals and their alloys, goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, leather and imitations of leather, goods made of leather and imitations thereof, trunks and travelling bags, umbrellas, parasols, walking sticks, clothing, footwear and headgear.

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

The contested services of promotion relating to instruction, providing of training, providing of facilities and equipment, advice and consultancy in relation to sport, exercise, remedial exercise techniques and rehabilitation are aimed at supporting or helping other individuals or companies to conduct or improve their businesses through advertising and marketing, including various promotional activities. In principle, the contested promotion services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by specialised companies, such as advertising agencies, which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, web sites, videos, the internet, etc.

The opponent’s retail services in respect of different goods are defined as ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’.

Retail services allow consumers to satisfy different shopping needs at one stop and usually target the general consumer. They can take place in a fixed location, such as a department store, supermarket, boutique or kiosk, or in the form of non-shop retailing, that is, over the internet or by catalogue or mail order.

While promotion services may boost retail services, it is nevertheless a fact that these activities are not equivalent. Indeed, they are provided by different undertakings, namely advertising agencies as regards promotion services and traders as regards retail services. Moreover, these services target different publics. Promotion services target traders or companies seeking assistance in the sale of their goods and services while retail services target the general consumer who wants to acquire goods or services for money. Their purposes are also different. Promotion services are aimed at promoting the launch and/or sale of goods or services, or reinforcing the position of clients on the market, while retail services are aimed at satisfying and encouraging the general consumer’s different shopping needs.

In the present case, the subject matter of the opponent’s retail services are products for personal care, jewellery, leather goods, clothing and retail services of all these goods. The applicant’s promotion services relate to a totally different field of activity, namely the provision of training, entertainment, facilities and equipment, advice and consultancy in relation to sport, exercise, remedial exercise techniques and rehabilitation.

The Opposition Division finds that even though promotion and retail of goods/services may be interdependent, in the present case, the field of activity of the conflicting marks is too remote for a finding of similarity. Therefore, the conflicting services are found to be dissimilar.

This finding also applies to all of the opponent’s goods in Classes 3, 14, 18 and 25. Indeed, retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary. Therefore, these goods and services are found to be dissimilar.

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 services found to be identical and similar are directed at the public at large. The degree of attention is considered average.

3. The signs

	MQ
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 figurative mark depicting a black rectangle, inside which are the letters ‘M’ and ‘Q’. The letter ‘M’ is an upper case letter formed of small white squares slightly hatched by black, while the letter ‘Q’ is a stylised white upper case letter. The letter ‘M’ is placed on the left side of the black rectangle, while the letter ‘Q’ is in its centre.

The contested sign is a word mark consisting of a combination of the two letters ‘M’ and ‘Q’. It has no elements that could be considered more distinctive than others.

As regards the earlier sign, it is composed of a combination of letters, ‘MQ’, identical to that of the contested sign and of less distinctive figurative elements. Indeed, the black rectangle and the depiction of the letter ‘M’ are of a purely decorative nature. Therefore, the letters ‘MQ’ are more distinctive than the figurative elements.

Neither mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The combination of letters ‘MQ’ may be understood as an abbreviation for various words or expressions in the relevant parts of the European Union; for instance, it is an abbreviation for the overseas region and department of France Martinique (ISO country code, top-level domain), for the ‘Museumsquartier’ (which is French for ‘Museum Quarter’ and is used to refer to the Centre for the Arts in Vienna, Austria) and for the expression ‘Minimum Qualification’. ‘MQ’ is also used to refer to several online games.

None of these meanings has any relevance with regard to the services in question. Therefore, the distinctiveness of this combination of letters is deemed to be average.

Visually, the signs coincide in the letters ‘MQ’, which are found to be a combination of letters of average distinctiveness. However, they differ in the figurative elements of the earlier mark, which have no counterparts in the contested mark. These figurative elements are the black rectangle and the stylisation of the letter ‘M’, which are of a decorative nature. Therefore, they are considered less distinctive than the letters ‘MQ’.

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

Therefore, the signs are visually highly similar.

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 distinctive letters ‛MQ’, present identically in both signs.

Conceptually, both marks clearly refer to two identical letters, ‘MQ’. Notwithstanding the meanings that this abbreviation may have in the different parts of the relevant territory, it refers to the identical concept of the two letters ‘MQ’ or the abbreviation ‘MQ’. As both signs will be perceived as referring to the same concept, they are considered conceptually identical.

As the signs have been found identical or highly similar in the three aspects of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

According to the opponent, the earlier mark enjoys an enhanced distinctiveness in relation to clothing and fashion in Sweden due to its continuous use for 30 years. 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

A likelihood of confusion (including a likelihood of association) 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.

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

Moreover, the Court has set out the essential principle that 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 the 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 goods and services are partly identical or similar and partly dissimilar. The signs are visually similar to a high degree and aurally and conceptually identical.

The signs differ only in the less distinctive figurative elements of the earlier mark, namely the black rectangle and the stylisation of the letter ‘M’. However, as stated previously, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component.

Account should also been taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Based on all the foregoing, it is considered that, due to the obvious coincidences between the signs and the identity or similarity between the services, it is likely that the relevant consumers will believe that the conflicting services are a new line of services coming from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the European public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 609 128.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

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

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

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

• European Union trade mark registration No 13 080 874 for the figurative mark  for goods and services in Classes 3, 14, 18, 25 and 35.

• European Union trade mark registration No 13 055 901 for the figurative mark  for goods and services in Classes 3, 14, 18, 25 and 35.

Since these marks cover a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

As regards the grounds under Article 8(4) EUTMR, the opposition is based on an earlier non-registered trade mark, namely the Swedish trade name ‘MQ Retail AB’ used in the course of trade in Sweden in relation to consulting services related to business management and organisation, directly and directly through ownership of shares operate retail services in respect of clothing, market products mainly in the textile and clothing industry, provision of education, owning, managing and financing retail stores and other immovable and movable property within the industry, as well as operating other associated activities, all in order to create shareholder value.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide the EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

The opponent submitted the following evidence:

• An extract from the NASDAQ OMX Stockholm report, dated 21/04/2016, where MQ Holding AB is listed as the sole shareholder of MQ Retail AB.

• A registration certificate for the company name ‘MQ Retail AB’ No 556 699-0262, dated 12/07/2006, issued by the Swedish Companies Registration Office, together with a translation into English (Appendix 1).

• An extract from the internet encyclopaedia Wikipedia on the current status of the opponent’s MQ company (Appendix 2).

• A document headed ‘Trademark Act (SFS 2010:1877)’, dated 16/06/2015, referring specifically to Section 8 of the Swedish Trademark Act, which states that ‘any party possessing a trade name or other business mark shall have an exclusive right to the mark as a trademark. Where a business mark is protected in only part of the country, the exclusive right shall apply only within such region.

Any party using its name as a trademark shall have an exclusive right to the mark as a trademark where the name has distinctive character for the goods or services for which it is used. Where the name is used only in part of the country, the exclusive right shall apply only within such region.’

In its explanation of grounds, the opponent also stated that its earlier Swedish trade name ‘MQ Retail AB’ is protected by the Swedish Company Name Act (1974:156) (Firmalagen) and that Chapter 1, Section 8, of the Swedish Trademark Act (2010:1877) stipulates that any party possessing a trade name or other business mark has an exclusive right to the mark as a trade mark.

As previously stated, as regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of this legal provision. As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation (emphasis added).

The opponent did not submit a complete reference to the legal text in Swedish together with a translation into English of this document.

Indeed, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by it, namely a trade name. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under Swedish law. The opponent’s reference to Section 8 of the Swedish Trademark Act (SFS 2010:1877), out of context, is too vague.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

The opponent refers to a previous national opposition decision taken by the Swedish Trade Mark Office against the same European Union trade mark application, No 14 228 051 ‘MQ’ but based on the Swedish trade mark ‘Brand Market by MQ’ to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous national decision referred to by the opponent is not relevant to the present proceedings because the earlier Swedish mark ‘Brand Market by MQ’ has not been claimed as a basis of the present opposition. Moreover, the conditions for assessing a likelihood of confusion in Sweden may be different from those of the Office, and other, internal, circumstances, not known to the Opposition Division, may justify the different finding. In any case, according to the Office’s practice, retail services of goods/services are not similar to education; providing of training; entertainment; arranging, promoting and conducting of sporting and cultural events in Class 41.

Therefore, the reference to the opposition decision taken by the Swedish Trade Mark Office and based on a different earlier right is not relevant.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Anna BAKALARZ

Sonia MEHANNEK

Steve HAUSER

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.