OPPOSITION No B 1 965 410

 

Jam Importação e Exportação, Lda., Rua António Enes, 288, 4250-049 Porto, Portugal (opponent), represented by Raul César Ferreira (Herd.), S.A., Rua do Patrocínio, 94, 1399-019 Lisboa, Portugal (professional representative)

 

a g a i n s t

 

Naffta Sport, S.L., Parque Tecnológico y Logístico de Vigo, Calle C. Area TexVigo, Nave C-14, 36315 Vigo (Pontevedra), Spain (applicant), represented by Abril Abogados, C/Amador de los Ríos 1-1°, 28010 Madrid, Spain (professional representative).

 

On 25/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 1 965 410 is partially upheld, namely for the following contested goods and services:

 

Class 25:        Clothing, footwear, headgear.

 

Class 28:        Gymnastic and sporting articles not included in other classes.

 

Class 35:        Wholesaling and retailing in shops and via global telematic networks (the Internet) of all kinds of clothing.

 

2.        European Union trade mark application No 10 286 482 is rejected for all the above goods and 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 10 286 482. The opposition is based on Portuguese trade mark registration No 280 674. 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 the trade mark on which the opposition is based.

 

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 09/11/2011. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Portugal from 09/11/2006 to 08/11/2011 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:        Clothing, shoes and belts.

 

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 29/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 03/09/2016 to submit evidence of use of the earlier trade mark. This deadline was then extended in accordance with Rule 71 EUTMIR until 03/11/2016. On 03/11/2016, within the time limit, the opponent submitted evidence of use.

 

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

 

• Exhibits 1-17: Declarations from the opponent company, suppliers as well as third parties attesting, inter alia, use of the mark in conjunction.
• Exhibit 18: two invoices and one delivery note showing the sale of ‘Nafta’ paper bags, dated 2008.
• Exhibits 19-23: About 380 invoices referring to the trade mark ‘Nafta’ for clothing, such as T-shirts, shirts, dresses, tunics, trousers, shorts, cardigans, coats, raincoats or tops, dated 2007-2011.
• Exhibits 24-26: About 60 purchase orders for clothing, such as dresses, coats, shorts, tops, tunics, trousers or shirts, dated 2008-2010.
• Exhibit 27: Pricing table, including reference, item name and translation, from 2007 to 2011.
• Exhibit 28: Ledger account for years 2007-2011 displaying neither the name of the company nor the trade mark.
• Exhibit 29: Evidence link table for years 2008-2011, including reference, item, name, invoice number and date.
• Exhibit 30: Catalogues for years 2007, 2010 and 2011, containing the product reference.
• Exhibit 31: Photographs of merchandising containing the trade mark ‘Nafta’.
• Exhibit 32: Photographs of clothing in warehouses and stores showing labels and tags with the trade mark ‘Nafta’.

 

The documentation as a whole and more particularly, the invoices (Exhibits 19-23) and purchase orders (Exhibits 24-26) show that the place of use is Portugal. This can be inferred from the language of the documents (Portuguese) and most of the addresses in Portugal. Therefore, the evidence relates to the relevant territory.

 

Most of the evidence is dated within the relevant period. According to settled case-law, evidence referring to use made outside the relevant timeframe can be taken into account if it contains conclusive indirect proof that the mark must have been put to genuine use also during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C 259/02, Laboratoire de la mer, EU:C:2004:50). In the present case, some of the declarations relate to use after the period (for example Exhibits 12, 13 and 16). However, these merely confirm the use of the opponent’s mark within the relevant period, since the use that they demonstrate is quite close in time to the relevant period and shows continued use when considered in connection with the other exhibits.

 

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency. It has been demonstrated that ‘NAFTA’ clothing was sold from 2007 to 2011 (invoices submitted as Exhibits 19-23) which was confirmed by purchase orders (Exhibits 24-26), a pricing table (Exhibit 27) and catalogues (Exhibit 30). The evidence submitted provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use of the earlier mark, and it can be clearly seen that that the owner has seriously tried to acquire a commercial position in the relevant market by using its mark for ‘NAFTA’ clothing within the relevant period. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark in Portugal.

 

In the context of Rule 22(3) EUTMIR, 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 and services for which it is registered.

 

The evidence submitted as Exhibits 19-26 shows that the earlier sign was used in such a way as to establish a clear link between the goods and the undertaking responsible for their marketing.

 

In view of the above, the Opposition Division considers that the evidence shows use of the sign as a trade mark.

 

The evidence submitted by the opponent shows that the mark ‘NAFTA’ has been used as a trade mark for clothing in the form in which it is registered, namely as a word mark (Exhibits 19-27), and as a figurative mark, such as  and  (tags and labels from Exhibits 31 and 32). Some figurative marks are accompanied by the registered sign symbol ®, as an informative indication. Moreover, some figurative marks contain additional figurative elements and a different word stylisation, such as the depiction of a sun or the coloured typeface, which are of a rather decorative nature. Consequently, the Opposition Division considers that differences in these elements do not alter the distinctive character of the mark in the form in which it was registered.

 

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

 

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).

 

When looking at the evidence it is clear that the opponent has successfully proven use for clothing. Indeed, the invoices and catalogues for example refer to a variety of different articles (T-shirts, shirts, dresses, tunics, trousers, shorts, cardigans, coats, raincoats or tops) that constitute the category of ‘clothing’.

 

However, the evidence filed by the opponent does not show genuine use of the trade mark for the remaining goods covered by the earlier trade mark namely shoes and belts. There is no information whatsoever in relation to shoes, particularly in the evidence with higher probative value: invoices, purchase orders, pricing table, catalogues or photographs. As to belts, the evidence of use shows that the mark has been used for belts as part of the garment and not as an independent item, for example in coats with belt (references *611, *6656, /437) fabric jacket with belt (reference /70585), leather coat and belt (reference /TRENCH) or ribbed coat with belt (reference /10000). There is no proof that the item is sold separately, it is not offered commercially with the intention of creating an outlet, as mentioned in the case-law above. In the light of the above, it is obvious from the evidence submitted that the opponent has not used the trade mark ‘NAFTA’ for shoes and belts.

 

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

 

In the present case the evidence only shows genuine use of the trade mark for the following goods:

 

Class 25:        Clothing.

 

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

 

 

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 on which the opposition is based and for which genuine use has been proven, are the following:

 

Class 25:        Clothing.

 

The contested goods and services are the following:

 

Class 25:        Clothing, footwear, headgear.

 

Class 28:        Games and playthings; gymnastic and sporting articles not included in other classes.

 

Class 35:        Wholesaling and retailing in shops and via global telematic networks (the Internet) of all kinds of clothing, footwear, headgear, games and playthings, retailing of gymnastic and sporting articles.

 

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 25

 

Clothing is identically contained in both lists of goods.

 

The contested footwear serves the same purpose as the opponent’s clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar.

 

The contested headgear and the opponent’s clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, headgear and clothing are considered similar.

 

Contested goods in Class 28

 

The opponent’s clothing includes sports clothing which are items of apparel designed specifically to be worn when doing sport. The purpose and nature of these goods are different from those of gymnastic and sporting articles not included in other classes which are articles and apparatus for all types of sports and gymnastics, such as weights, halters, tennis rackets, balls and fitness apparatus. However, undertakings that manufacture gymnastic and sporting articles may also manufacture sports clothing. In this case the relevant public coincides and the distribution channels can be the same. Therefore, there is a low degree of similarity between clothing and gymnastic and sporting articles.

 

The contested games and playthings are toys and other equipment for playing games, such as board games. These goods do not bear any relevant points of contact with the earlier clothing. They will not be produced by the same companies, have different purposes, will not be distributed through the same channels and are not in competition with one another or complementary. Therefore, these goods are dissimilar.

 

Contested services in Class 35

 

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

 

Therefore, the contested wholesaling and retailing in shops and via global telematic networks (the Internet) of all kinds of clothing are similar to a low degree to the opponent’s clothing in Class 25.

 

The contested wholesaling and retailing in shops and via global telematic networks (the Internet) of all kinds of footwear, headgear, games and playthings, retailing of gymnastic and sporting articles and the opponent’s clothing in Class 25 are not similar. 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 products, 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 complementary.

 

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not 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 and services found to be identical or similar (to varying degrees) are directed at the public at large and partly at a professional public (i.e. wholesaling services). The degree of attention is considered to be average.

 

 

3. The signs

 

NAFTA
Earlier trade mark	Contested sign

 

The relevant territory is Portugal.

 

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 contested sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

 

The earlier trade mark ‘NAFTA’ may be perceived by the relevant public as the specific chemistry word ‘naphtha’ which means ‘a distillation product from petroleum boiling in the approximate range 100–200°C and containing aliphatic hydrocarbons: used as a solvent and in petrol’ (information extracted from Collins Dictionary on 17/05/2017 at https://www.collinsdictionary.com/dictionary/english/naphtha). The same can be said of the verbal component in the contested sign. Neither of the verbal elements has any bearing on the relevant goods and services and therefore they are distinctive.

 

The contested sign has no elements that could be considered clearly more dominant than other elements.

 

As to the figurative device in the contested sign it is rather abstract and 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).

 

Visually, the signs coincide in the letters ‘Naf(*)ta’. However, they differ in the letter ‘-f’-‘, the typeface and the figurative element of the contested sign. In view of the above and bearing in mind also the impact attributed to the figurative element of the contested sign, as explained above, the signs are visually highly similar.

 

Aurally, the letters ‘ff’ in the contested sign will be pronounced by the Portuguese public as an ‘f’. Therefore, the signs are aurally identical.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘naphtha’, the signs are conceptually identical.

 

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

 

As concluded above, the contested goods and services are partly identical or similar (to varying degrees) and partly dissimilar to the opponent’s goods.

 

The signs in conflict are visually highly similar and aurally and conceptually identical, as explained in detail above in section c) of this decision. The differences between the signs are not sufficient to counteract their similarities, since the differences are confined to one letter and a graphic element of the contested sign, which has a limited impact on the perception of the signs, as explained above.

 

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. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow a trade mark with a new, fashionable image.

 

In the present case, although the relevant public might detect certain visual differences between the conflicting signs, the likelihood that the public might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand or a word variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

 

A global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (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). Taking into account this principle into account when assessing the likelihood of confusion, the Opposition Division considers that the similarity between the signs compensates the low degree of similarity between some goods and services.

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration No 280 674.

 

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to varying degrees) to those of the earlier trade mark.

 

The rest of the contested goods and 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 goods and services 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 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

 

 

Vanessa PAGE

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

 

 

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.